美國專利改革法案下的DERIVATION PROCEEDING
因應美國專利改革法案的施行（09/16/2012），美國專利商標局提出新的專利程序-申請人調查程序（DERIVATION PROCEEDING），目的是要確認第一個提出專利申請的人就是真實的發明人，相關衍生出的程序將於03/16/2013施行，也就是美國專利改革法案施行後8個月後開始。
這個新個程序會讓非發明人提出的專利申請案不得獲准一個專利，如果真的發明人並非第一個提出專利申請的人，此發明人可以透過證明專利申請案中所主張的發明為自己開發的技術而挑戰該專利權，或甚至奪回專利權。相關的程序將由專利審判與上訴委員會（Patent Trial and Appeal Board, PTAB）審理。
欲提出Derivation Proceeding以撤回非發明人授權而提出的專利申請案，有以下注意事項：
(1) March 16, 2013實施
(2) 向PTAB提出請願（petition）
(3) 提出足夠可以開始Derivation Proceeding的證明，至少證明一項範圍符合提出請願的資格
(4) Derivation Proceeding應於申請案公開（或是較早實質相等的申請案）後一年內提出
(5) PTAB主管判斷是否受理上訴
(6) 經PTAB審理可決定申請案發明人是否為真，或是申請人是否被授權
(7) PTAB可以因為專利權是否獲准的決定而延遲決定
(8) 若PTAB決定有發明人不實的事實，會導致專利被撤銷
(9) 在PTAB作出決定之前，相關當事人可以發出協議（agreement）修改發明人而終結程序
(10) 前述協議應與PTAB取得的證據一致，否則協議可能不准
(11) 若雙方有協調，應通知PTAB的主管
35 U.S.C. 135(a)原本規範的干擾程序（Interferences）已經重寫：
Derivation proceedings
(a) INSTITUTION OF PROCEEDING.--An applicant for patent may file a petition to institute a derivation proceeding in the Office. The petition shall set forth with particularity the basis for finding that an inventor named in an earlier application derived the claimed invention from an inventor named in the petitioner's application and, without authorization, the earlier application claiming such invention was filed. Any such petition may be filed only within the 1–year period beginning on 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, shall be made under oath, and shall be supported by substantial evidence. Whenever the Director determines that a petition filed under this subsection demonstrates that the standards for instituting a derivation proceeding are met, the Director may institute a derivation proceeding. The determination by the Director whether to institute a derivation proceeding shall be final and nonappealable.
(b) DETERMINATION BY PATENT TRIAL AND APPEAL BOARD.--In a derivation proceeding instituted under subsection (a), the Patent Trial and Appeal Board shall determine whether an inventor named in the earlier application derived the claimed invention from an inventor named in the petitioner's application and, without authorization, the earlier application claiming such invention was filed. In appropriate circumstances, the Patent Trial and Appeal Board may correct the naming of the inventor in any application or patent at issue. The Director shall prescribe regulations setting forth standards for the conduct of derivation proceedings, including requiring parties to provide sufficient evidence to prove and rebut a claim of derivation.
(c) DEFERRAL OF DECISION.--The Patent Trial and Appeal Board may defer action on a petition for a derivation proceeding until the expiration of the 3–month period beginning on the date on which the Director issues a patent that includes the claimed invention that is the subject of the petition. The Patent Trial and Appeal Board also may defer action on a petition for a derivation proceeding, or stay the proceeding after it has been instituted, until the termination of a proceeding under chapter 30, 31, or 32 involving the patent of the earlier applicant.
(d) EFFECT OF FINAL DECISION.--The final decision of the Patent Trial and Appeal Board, if adverse to claims in an application for patent, shall constitute the final refusal by the Office on those claims. The final decision of the Patent Trial and Appeal Board, if adverse to claims in a patent, shall, if no appeal or other review of the decision has been or can be taken or had, constitute cancellation of those claims, and notice of such cancellation shall be endorsed on copies of the patent distributed after such cancellation.
(e) SETTLEMENT.--Parties to a proceeding instituted under subsection (a) may terminate the proceeding by filing a written statement reflecting the agreement of the parties as to the correct inventors of the claimed invention in dispute. Unless the Patent Trial and Appeal Board finds the agreement to be inconsistent with the evidence of record, if any, it shall take action consistent with the agreement. Any written settlement or understanding of the parties shall be filed with the Director. At the request of a party to the proceeding, the agreement or understanding shall be treated as business confidential information, shall be kept separate from the file of the involved patents or applications, and shall be made available only to Government agencies on written request, or to any person on a showing of good cause.
(f) ARBITRATION.--Parties to a proceeding instituted under subsection (a) may, within such time as may be specified by the Director by regulation, determine such contest or any aspect thereof by arbitration. Such arbitration shall be governed by the provisions of title 9, to the extent such title is not inconsistent with this section. The parties shall give notice of any arbitration award to the Director, and such award shall, as between the parties to the arbitration, be dispositive of the issues to which it relates. The arbitration award shall be unenforceable until such notice is given. Nothing in this subsection shall preclude the Director from determining the patentability of the claimed inventions involved in the proceeding.
Ron
相關連結有：
http://enpan.blogspot.tw/2011/09/ii.html
http://enpan.blogspot.tw/2011/09/iii.html
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