35 U.S.C. 291: Derived Patents

Taken from the Ninth Edition of the MPEP, Revision 07.2015, Last Revised in November 2015

Current Pre-AIA AIA Redline

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35 U.S.C. 291   Derived Patents.

[Editor Note: Applicable to any patent application subject to the first inventor to file provisions of the AIA (see 35 U.S.C. 100 (note) )*. See 35 U.S.C. 291 (pre‑AIA) for the law otherwise applicable.]

  • (a) IN GENERAL.—The owner of a patent may have relief by civil action against the owner of another patent that claims the same invention and has an earlier effective filing date, if the invention claimed in such other patent was derived from the inventor of the invention claimed in the patent owned by the person seeking relief under this section.
  • (b) FILING LIMITATION.—An action under this section may be filed only before the end of the 1-year period beginning on the date of the issuance of the first patent containing a claim to the allegedly derived invention and naming an individual alleged to have derived such invention as the inventor or joint inventor.

(Amended Sept. 16, 2011, Public Law 112-29, secs. 20(j) (effective Sept. 16, 2012)and 3(h) (effective March 16, 2013)*, 125 Stat. 284.)

*NOTE: The provisions of 35 U.S.C. 291 (pre‑AIA), as in effect on March 15, 2013, shall also apply to each claim of an application for patent, and any patent issued thereon, for which the first inventor to file provisions of the AIA apply (see 35 U.S.C. 100 (note) ), if such application or patent contains or contained at any time—

(A) a claim to an invention having an effective filing date as defined in 35 U.S.C. 100(i), that occurs before March 16, 2013; or

(B) a specific reference under 35 U.S.C. 120 , 121, or 365(c), to any patent or application that contains or contained at any time such a claim.