Question:

Can the Board defer action on a petition for a derivation proceeding?

Answer:

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.

Chapter Details:

The answer to this question can be found in the PTO supplement known as, “Derivation Proceeding Final Rules”. This supplement covers derivation proceedings. This is a special supplement that at the time of this recording is currently being tested on the Patent Bar exam.

Section Summary:

This question and answer comes from 35 U.S.C. 135(c).  The following is a brief summary of 35 U.S.C. 135(c).

35 U.S.C. 135(c): Deferral of decision

The Board may defer action on a petition for derivation proceeding for up to three months after a patent is issued from the earlier application that includes a claim that is the subject of the petition.