37 CFR 42.405: Content of petition

Taken from the Ninth Edition of the MPEP, Revision 08.2017, Last Revised in January 2018

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42.405    Content of petition.

  • (a) Grounds for standing. The petition must:
    • (1) Demonstrate compliance with §§ 42.402 and 42.403; and
    • (2) Show that the petitioner has at least one claim that is:
      • (i) The same or substantially the same as the respondent’s claimed invention; and
      • (ii) The same or substantially the same as the invention disclosed to the respondent.
  • (b) In addition to the requirements of §§ 42.8 and 42.22, the petition must:
    • (1) Provide sufficient information to identify the application or patent for which the petitioner seeks a derivation proceeding;
    • (2) Demonstrate that a claimed invention was derived from an inventor named in the petitioner’s application, and that the inventor from whom the invention was derived did not authorize the filing of the earliest application claiming such invention; and
    • (3) For each of the respondent’s claims to the derived invention,
      • (i) Show why the claimed invention is the same or substantially the same as the invention disclosed to the respondent, and
      • (ii) Identify how the claim is to be construed. Where the claim to be construed contains a means-plus-function or step-plus-function limitation as permitted under 35 U.S.C. 112(f), the construction of the claim must identify the specific portions of the specification that describe the structure, material, or acts corresponding to each claimed function.
  • (c) Sufficiency of showing. A derivation showing is not sufficient unless it is supported by substantial evidence, including at least one affidavit addressing communication of the derived invention and lack of authorization that, if unrebutted, would support a determination of derivation. The showing of communication must be corroborated.
[Added 77 FR 56068, Sept. 11, 2012, effective Mar. 16, 2013]