Anderson Corp., the window manufacturer, could not produce the records needed to sustain a derivation action against a patent help by GED Integrated Solutions. Inc. A derivation proceeding is a trial proceeding conducted at the Patent Trial and Appeal Board to determine whether (i) an inventor named in an earlier application derived the claimed invention from an inventor named in the petitioner’s application, and (ii) the earlier application claiming such invention was filed without authorization. In short, it’s a proceeding to take a patent away from someone who steals the idea from another. It’s a fairly unusual procedure, but very powerful, a it can invalidate the earlier patent and free one of infringement issues.

The America Invents Act of 2011 changed the U.S. from a first-to-invent system to give patent rights to the first person to file an application. Derivation proceedings were created as a safeguard against a “rush to the patent office” by a first filer who takes the invention from a true inventor but then beats them to the patent office.

While Anderson could not prove that it had communicated the same idea that had been patented by GED, GED showed an engineer’s notebook records that supported their own original invention.

THE BUSINESS TAKE AWAY: Everything about an invention’s creation must be in clear and legible writing, including, when possible, sketches and photographs. This record keeping by your inventors is absolutely critical in all areas of patent defense, such as against infringement and derivation charges. If it is not an absolute job requirement that employee-inventors spend a documented amount of time each week on their records, and that this record-keeping is examined by their superiors it needs to be.

PTAB Case  DER2017-00007