New Derivation Rule — 37 C.F.R. Part 42

The PTO recently announced final rules regarding the new derivation proceedings, 37 C.F.R. Part 42, pursuant to the Smith-Leahy America Invents Act. As practitioners are well aware, the AIA will transform the U.S. from a first-to-invent to a first-to-file patent system on March 16, 2013, aligning the U.S. with the European and Japanese systems. For all applications filed on or after March 16, 2013, under the first-to-file system, interference proceedings, which are used to determine “which [of two] part[ies] first invented [a] commonly claimed invention,” will become obsolete. Derivation proceedings will in part replace current interference practice, but will likely be applicable in a much narrower set of circumstances.