A derivation proceeding is a patent office proceeding that allows a party to challenge that that first-to-file party was not the first true inventor, but that the invention was “derived” from the true inventor. Derivation proceedings were enacted under the American Invents Act and became effective March 16, 2013.

A derivation proceeding requires that an applicant for patent file a petition to institute the proceeding.  The petition must set forth with particularity the basis for finding that an inventor named in an earlier application derived the claimed invention from the petitioner.  The petition must be made under oath and supported by substantial evidence.  The petition must be filed within 1 year of the date of the first publication of a claim to an invention that is the same or substantially the same as the earlier application’s claim to the invention.