2315 Action After a Derivation Proceeding is Decided [R-08.2017]
Jurisdiction over an application returns to the examiner once the derivation proceeding has terminated. If there is a recommendation for further action in the application, the examiner must reopen prosecution to consider the recommendation. The examiner must enter any recommended rejection, and must maintain the rejection unless the applicant by amendment or submission of new evidence overcomes the rejection to the examiner’s satisfaction.
If there are claims that are not finally disposed of in the judgment, the examiner should update the search and may reopen prosecution for any claim not disposed of in the judgment, where appropriate.
Judgment against a claim in a derivation proceeding finally disposes of the claim. No further action is needed from the examiner on that claim. If no claim remains allowable to the applicant, a notice of abandonment should be issued.
It is possible that extraordinary remedies might be provided for by the Board in its judgment. For example, inventorship of an application might be changed, as well as ownership, and as a consequence the application or patent’s correspondence address and representatives may need to be updated. See 35 U.S.C. 135(b). Examiners should consult a Technology Center Practice Specialist if any questions arise regarding remedies provided for in a derivation proceeding.