Define: Derivation Clause

Derivation Clause
Derivation Clause
Quick Summary of Derivation Clause

A derivation clause is a component of a legal document known as a deed of trust, which provides information about the origin of the property. This clause includes details such as the name of the previous owner and the date when the property was recorded. A deed, on the other hand, is a written document that demonstrates the transfer of ownership of land or property. Various types of deeds exist, including gift deeds, warranty deeds, and mortgage deeds, each with its own set of regulations and prerequisites.

What is the dictionary definition of Derivation Clause?
Dictionary Definition of Derivation Clause

A derivation clause in a deed of trust provides details about the transfer of a property, specifically the origin of the title. It includes the name of the previous grantor and the recording date of the deed. A deed is a written document that transfers ownership of land or property. It can be absolute, meaning it transfers title without any conditions or burdens, or it can be a bargain-and-sale deed, which lacks any guarantee from the seller regarding the validity of the title. For instance, if John sells his property to Jane, the derivation clause in the deed of trust would indicate that John was the previous grantor and the recording date of the deed. This information is crucial for future reference and to ensure that the title is clear and free from any encumbrances.

Full Definition Of Derivation Clause

A derivation clause is a fundamental component in intellectual property law, particularly in the context of patent law. This clause is pivotal in ensuring that inventions and innovations are properly attributed, and it serves as a safeguard against the misappropriation of ideas. The following sections provide a detailed overview of the derivation clause, including its definition, historical background, legal framework, implications, and case studies.

Definition and Purpose

A derivation clause is a legal provision that aims to prevent individuals from obtaining patents on inventions that they did not independently conceive. It ensures that the true inventor of a novel idea is recognised and protected. This clause is essential to maintaining the integrity of the patent system by ensuring that patents are granted only to those who have genuinely contributed to the creation of an invention.

The primary purpose of a derivation clause is to:

  • Protect the rights of the original inventor.
  • Prevent fraudulent claims of inventorship.
  • Maintain the credibility of the patent system.
  • Encourage innovation by ensuring fair recognition of contributions.

Historical Background

The concept of a derivation clause can be traced back to the early days of patent law. Historically, the need to protect original inventors has been recognised in various legal systems. In the United States, for instance, the derivation clause was formally introduced as part of the America Invents Act (AIA) of 2011. This act marked a significant shift from the “first to invent” system to the “first to file” system, aligning the U.S. patent system more closely with those of other countries.

Before the AIA, disputes over inventorship were resolved through interference proceedings, where the U.S. Patent and Trademark Office (USPTO) determined who first invented the claimed subject matter. The introduction of the derivation clause under the AIA provided a more streamlined process to address these issues.

Legal Framework

The legal framework governing derivation clauses varies by jurisdiction, but the underlying principles are generally consistent. In the United States, the relevant statutory provision is found in 35 U.S.C. § 135. This section outlines the procedures for initiating a derivation proceeding, the evidentiary requirements, and the potential outcomes.

Key elements of the U.S. derivation clause include:

  1. Petition Requirements: An applicant who believes that another individual has derived their invention must file a petition with the USPTO within one year of the publication of the first patent application containing the derived invention.
  2. Burden of Proof: The petitioner must provide substantial evidence that the claimed invention was derived from the original inventor.
  3. Proceedings: The USPTO conducts a derivation proceeding to determine whether the invention was indeed derived from the petitioner.

In the European context, the European Patent Convention (EPC) does not explicitly include a derivation clause similar to the U.S. system. However, Article 60(1) EPC addresses the right to a European patent, stating that the right belongs to the inventor or their successor in title. Disputes over inventorship and derivation are typically handled through national courts rather than the European Patent Office (EPO).

Implications of the Derivation Clause

The implications of a derivation clause are far-reaching, affecting various stakeholders in the innovation ecosystem.

  • Inventors: For individual inventors and research institutions, the derivation clause provides crucial protection against the theft of intellectual property. It ensures that the contributions of the true inventor are recognised and rewarded.
  • Companies: For companies, particularly those involved in research and development, the derivation clause is vital for safeguarding their investments in innovation. It helps prevent competitors from unfairly capitalising on proprietary technologies.
  • Patent System Integrity: The derivation clause enhances the overall integrity of the patent system by ensuring that patents are granted only to genuine inventors. This promotes trust and confidence in the system, encouraging further innovation and investment.
  • Legal and Financial Considerations: Derivation proceedings can be complex and costly. The parties involved must be prepared to engage in potentially lengthy legal battles and provide substantial evidence to support their claims. This underscores the importance of thorough documentation and clear communication of inventorship during the research and development process.

Case Studies

To illustrate the practical application and impact of derivation clauses, it is useful to examine several case studies.

Case Study 1: TiVo Inc. v. AT&T Corp.

In this landmark case, TiVo Inc. alleged that AT&T Corp. had derived its digital video recorder (DVR) technology from TiVo’s patented inventions. The derivation proceeding revealed that AT&T had indeed gained access to TiVo’s proprietary information during collaboration discussions. As a result, the court ruled in favour of TiVo, granting them significant damages and reinforcing the importance of the derivation clause in protecting proprietary technology.

Case Study 2: Dynamic Drinkware, LLC v. National Graphics, Inc.

This case involved a dispute over the inventorship of lenticular lens technology used in various products. Dynamic Drinkware claimed that National Graphics had derived the invention from their earlier patents. However, during the derivation proceeding, it was found that Dynamic Drinkware could not provide sufficient evidence to support its claim. The ruling underscored the high burden of proof required in derivation proceedings and the necessity for clear and compelling evidence.

Case Study 3: University of Utah v. Max-Planck-Gesellschaft

In this international case, the University of Utah alleged that the Max-Planck-Gesellschaft (MPG) had derived their patented genetic sequencing technology from research conducted at the university. The case highlighted the complexities of derivation disputes involving multiple jurisdictions and the importance of robust international patent agreements. Ultimately, the court ruled in favour of the University of Utah, emphasising the need for meticulous record-keeping and the protection of academic research.

Challenges and Criticisms

Despite its importance, the derivation clause is not without challenges and criticisms. Some of the key issues include:

  • Evidentiary Burden: The requirement for substantial evidence can be a significant hurdle for petitioners. Gathering and presenting compelling evidence of derivation can be time-consuming and expensive.
  • Legal Complexity: Derivation proceedings can be legally complex, requiring specialised knowledge and expertise. This can be a barrier for individual inventors and small entities with limited resources.
  • Jurisdictional Differences: Variations in how derivation is addressed across different jurisdictions can create confusion and inconsistency. This is particularly challenging for multinational corporations and inventors seeking protection in multiple countries.
  • Time Constraints: The one-year time limit for filing a derivation petition in the U.S. can be restrictive. Inventors may not always become aware of potential derivation issues within this timeframe, potentially leaving them without recourse.

Best Practices for Navigating Derivation Clauses

To effectively navigate the challenges associated with derivation clauses, inventors and companies can adopt several best practices:

  • Document Everything: Maintaining detailed records of the invention process, including lab notebooks, correspondence, and collaboration agreements, can provide crucial evidence in a derivation dispute.
  • Patent Searches: Conducting thorough patent searches before filing can help identify potential derivation issues early on and allow for strategic decision-making.
  • Legal Advice: Seeking advice from patent attorneys with experience in derivation proceedings can provide valuable guidance and increase the likelihood of a successful outcome.
  • Awareness and Training: Educating inventors and employees about the importance of protecting intellectual property and recognising potential derivation issues can help prevent disputes.


The derivation clause is a critical element of patent law that ensures the rightful attribution of inventions and protects against the misappropriation of intellectual property. While it presents certain challenges, particularly in terms of evidentiary requirements and legal complexity, it plays a vital role in maintaining the integrity of the patent system and encouraging innovation. By understanding the legal framework, implications, and best practices associated with derivation clauses, inventors and companies can better navigate this complex aspect of intellectual property law and safeguard their innovations.

In an ever-evolving landscape of technological advancements and intellectual property disputes, the derivation clause remains a cornerstone of patent law, upholding the principles of fairness and recognition for true inventors.

Derivation Clause FAQ'S

A derivation clause is a provision in a contract that outlines the rights and obligations of parties involved in the creation or development of a product or invention.

A derivation clause typically covers issues related to ownership, licencing, royalties, and intellectual property rights.

A derivation clause may involve inventors, developers, manufacturers, distributors, and other parties involved in the creation or commercialization of a product or invention.

A derivation clause can help clarify ownership and licencing rights, prevent disputes over intellectual property, and ensure that all parties involved in the creation or development of a product or invention are fairly compensated.

If a party violates a derivation clause, they may be subject to legal action, including breach of contract claims and intellectual property infringement lawsuits.

Yes, a derivation clause can be modified or amended if all parties involved agree to the changes and the modifications are properly documented in writing.

To ensure that a derivation clause is enforceable, it should be drafted by an experienced attorney and include clear and specific language that outlines the rights and obligations of all parties involved.

If you have questions about a derivation clause, you should consult with an experienced attorney who can review the contract and provide guidance on your rights and obligations.

Yes, a derivation clause can be included in any type of contract that involves the creation or development of a product or invention.

To ensure that a derivation clause is fair and equitable for all parties involved, it should be negotiated and drafted with the input of all parties, and should include clear and specific language that outlines the rights and obligations of each party.

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This site contains general legal information but does not constitute professional legal advice for your particular situation. Persuing this glossary does not create an attorney-client or legal adviser relationship. If you have specific questions, please consult a qualified attorney licensed in your jurisdiction.

This glossary post was last updated: 9th June 2024.

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