I very recently published a post entitled Stolen Invention! The post discusses the USPTO Derivation Proceedings. Derivation Proceedings are the mechanism for invention ownership dispute resolution between conflicting parties are resolved. My post urged two things: First, I recommended patience if you are unfortunate and have to initiate such an action and second, that this morass could be avoided by prompt and robust filing of a provisional application for patent.
Please consider the following real life case:
Pending before the Patent Trial and Appeals Board (PTAB) is the Derivation Proceeding entitled Solar Junction Corporation (Petitioner) v. IQE, PLC (Respondent) DER2018-00019. Solar Junction is the applicant in pending patent application 16/132,059 and IQE is the assignee of patent 9,768,339.
Note per a published PTAB Order dated July 30, 2019, the Board found that Solar Junction’s pending application, originally filed September 14, 2018, had been subject of a second “Final” rejection based upon examiner cited prior art unrelated to the issued IQE patent ‘339. The Board noted that the claims of the pending application and issued patent were identical.
Solar Junction was seeking the Board to take jurisdiction of the ownership dispute and decide the ownership dispute in view that the claims were identical. The Board declined on the basis that the Solar Junction claims had not yet been determined by the relevant examiner to be allowable. (Note the examiner for the Solar Junction application and the examiner that allowed the IQE patent claims are different individuals and operating in different art units.)
In other words, Solar Junction must continue patent prosecution of its own application even though the claimed invention has already been deemed allowable by the USPTO. Some could argue this imposed an unnecessary burden of time and money. Stated differently, the claimed invention, claimed by both parties, had been deemed allowable. It would seem the dispute was ready for resolution. The continuing rejection by the examiner of the Solar Junction application is an unrelated side show not relevant to the issue of ownership of the invention underlying the IQE ‘339 patent. “Oh well”, patience is required.
It is not possible at this juncture to understand the basis of the ownership dispute because Solar Junction obtained an order to seal its petition. This petition would describe in detail the basis of the claim that IQE derived the invention from Solar Junction. Never the less, I continue my recommendation to file a robust provisional application for patent before communicating the invention to third parties. Note the petition could be alleging that IQE breached a confidentiality obligation owed to Solar Junction or was a joint participant in the development of the innovations subject of the disputed patent claims. (Note I am not making any characterization of IQE conduct)
It is interesting that the IQE application data sheet (for the issued patent) claims priority to a provisional application filed June 22, 2015. The Solar Junction application is a continuation in part application of a previously filed application of May 14, 2013. The relevant Solar Junction application was filed September 14, 2018. A petition for initiating a Derivation Proceeding would have to include substantial proof that the Solar Junction invention was communicated to IQE. Again, the petition is under seal.
A Derivation Proceeding is the USPTO procedure for invention ownership dispute resolution. A Derivation Proceeding is not a quick fix. Patience is required in any attempt to resolve ownership of an invention. Note as an update, the USPTO docket for the Solar Junction application indicates an appeal of the examiner’s rejections of the claims has been filed (with the PTAB).
Again, promptly filed and robust provisional applications are significant evidence of who is the inventor. Remember the underlying principle of the USPTO system is First Inventor to File.
Copyright David McEwing 2020