The Federal Circuit Issues Its First Opinion in an AIA Derivation Case
Before the America Invents Act (AIA) took effect in 2013, US patent law was a first-to-invent system, where priority for inventions was based on (broadly-speaking) whoever had first conceived an invention. This necessitated a system where litigation-like actions called interferences could be initiated at the USPTO to resolve priority when similar inventions were on file at the USPTO at the same time. See pre-AIA 35 USC 135.
The US’s pre-AIA was a contrast with the first-to-file system followed by most of the rest of the world. In a first-to-file system when similar inventions are on file at the same time, the earlier-filed application is considered prior art against the later-filed application. See, e.g., EPC Art. 54(2)-(3). This encourages early filing, and provides for (relatively) easy resolution between competing applications with similar inventions. Whoever files first has priority.
With the passage of the AIA the US moved off the first-to-invent system, but did not fully adopt the first-to-file system. Instead the US implemented a hybrid system, dubbed the first-inventor-to-file system. In such a system when two applications on the same invention are on file at the same time in the USPTO, the second-filing inventor can establish priority by showing either 1) that the first-filing inventor derived the invention from the second-filing inventor, or 2) that the second-filing inventor had made the invention public before the patent application filing by the first-filing inventor. (But of course if that second-filing inventor has made the invention public more than a year before his filing date, the earlier publication of the invention would itself act as prior art against the second-filing inventor.)
In place of the pre-AIA interference a new proceeding arose under the AIA, a derivation proceeding, provided for in revised 35 USC 135. Finally, twelve years after the AIA went into effect, the Federal Circuit issued its first opinion concerning a derivation proceeding, a precedential opinion in Global Health Solutions v. Selner, No. 2023-2009 (Fed. Cir. Aug. 26, 2025). Global Health involved the invention of a wound-treatment ointment that was claimed to be invented both by Selner, and by Burnham, a founder of Global Health Solutions (“GHS”). Selner and Burnham had both been working together on the problem along with a third person, Rosenthal.
Selner and Burnham both claimed to have been the one to conceive the step that led to the invention, that of heating ingredients of the ointment to different temperatures before mixing, and to having told the other about the discovery by email message on February 14, 2014. Selner and GHS filed separate patent applications on the invention in August, 2017, with GHS filing four days after Selner, and petitioning for institution of derivation proceedings a few days later.[1]
After lengthy proceedings, the Board concluded that GHS proved that Burnham had conceived the invention, and had communicated it to Selner in an email sent at 4:04 pm on February 14, 2014. But Selner had proved that he had conceived the invention earlier that same day, and had communicated it to Burnham in an email sent at 12:55 pm. Finding that Selner had proved earlier conception, the Board concluded that Selner could not have derived the invention from Burnham. Since Selner had filed first, and had not derived the invention from Burnham, the Board awarded him priority.
The Federal Circuit noted an error made by the Board. The Board had looked to see if the second filer (here GHS) had proven both 1) prior conception of the invention; and 2) communication of the invention to the first filer (here Selner). That standard was proper for a pre-AIA first-to-invent interference, and the court observed that many aspects of interferences should also be applied to derivation proceedings. But what needed to be proved was slightly different in a first-inventor-to-file system – the second filer would need to prove 1) conception of the invention; and 2) communication of the invention prior to the filing application by the first filer. The first filer could rebut the petitioner’s showing by proving independent conception of the invention.
But in this case the error was harmless, since Selner also won under the proper standard. Selner’s proving of prior conception showed more than was necessary, but still established conception of the invention independent of Burnham’s conception.
As an alternative, GHS sought to have the case remanded to the Board for determination of whether Burnham should be named as a co-inventor on Selner’s application. This was disallowed by the court, as GHS had not filed the proper motion for consideration of this issue while the case was before the Board.
The Board’s decision in favor of Selner having been affirmed, the applications now return to their respective examiners, presumably for Selner’s application to be allowed, and GHS’s to be rejected in view of Selner’s application. Thus, over three years after the issuance of the derivation proceeding in 2022, the issue before the USPTO is presumably resolved.[2]
[1] Three and half years between conception of the invention and the filing of separate patent applications mere days apart? There has to a story behind all this, and indeed the thousands of pages that are part of the record before the Board indicate that there is a whale of a tale.
[2] Selner is due to receive a patent term extension to compensate for the time his application was bottled up in the derivation proceeding. See 35 USC 154(b)(1)(C)(i) (providing for a one-day extension for each day patent issuance is delayed due to “a [derivation] proceeding under section 135(a)”); 37 CFR 1.703(c)(1).