By Charles L. Gholz

Partner, Oblon, Spivak, McClelland, Maier & Neustadt LLP

It has been generally assumed that the "derivation proceedings" that would be created by both the House and Senate versions of the Patent Reform Act of 20094 would simply be derivation interferences by another name. However, a close reading of the relevant portions of those bills reveals that there would be a few significant differences - some clearly intended and some probably not intended.

In this article I will comment on what I see as the important differences between the two proceedings and between the two bills. I solicit comments from readers - both comments disagreeing with my analysis and comments asserting that there are additional significant differences between the two proceedings and/or between the two bills.

• Is an applicant winner of a derivation proceeding automatically entitled to obtain a patent?
• Will the PTAB be reviewing settlement agreements?
• Is it going to be harder to get access to settlement agreements?
• What about derivation proceedings where the target is a patent for which the application was never published?
• What about derivation proceedings where the alleged deriver filed after the alleged derivee?
• Can the parties amend their claims during a derivation proceeding or move for a judgment that their opponent’s claims are unpatentable on any ground other than derivation?
• Will 35 USC 146 actions continue to be available?
• What if the director refuses to declare a derivation proceeding?

For answers and commentary on these questions, download the full text article.