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In Glob. Health Sols. LLC v. Selner, the U.S. Court of Appeals for the Federal Circuit (Federal Circuit) addressed the first-ever derivation proceeding under the Leahy-Smith America Invents Act of 2011 (AIA). Prior to passage of the AIA, priority to a patent was based on a first-to-invent system. With the passage of the AIA, priority to a patent switched to a first-to-file system. A later filer, however, can still be entitled to a patent if they can show that the first filer derived the invention from the later filer.

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Marc Selner filed U.S. Patent Application No. 15/549,111, which lists Selner as the sole inventor, on August 4, 2017. Global Health Solutions LLC (GHS) filed U.S. Patent Application No. 15/672,197, which lists Bradley Burnam as the sole inventor, on Aug. 8, 2017, four days after Selner’s filing. Both applications are said to claim a method for preparing a wound treatment ointment, comprising nanodroplets of an aqueous biocide (polyhexamethylene biguanide) permanently suspended in petrolatum jelly. Glob. Health Sols. LLC v. Selner, No. 2023-2009, 2025 WL 2446374, at *2 (Fed. Cir. Aug. 26, 2025). GHS filed a petition to institute a derivation proceeding and alleged that Selner derived the claims of his application from Burnam.

The Patent Trial and Appeal Board (Board) found that Selner proved earlier conception (based on an email from Selner to Burnam that was sent a little over three hours prior to an email sent from Burnam to Selner) and concluded that GHS failed to prove its derivation claim. (Id. at *3). GHS appealed and asserted that the Board committed multiple errors in reaching its conclusion. The Federal Circuit found that the Board committed harmless errors and affirmed.

The Federal Circuit explained the differences and similarities between pre-AIA interference proceedings and AIA derivation proceedings, noting that “to meet its prima facie burden in an AIA derivation proceeding, the petitioner must produce evidence sufficient to show (i) conception of the claimed invention, and (ii) communication of the conceived invention to the respondent prior to respondent’s filing of that patent application.” (Id. at *5). But the Federal Circuit confirmed that actual reduction to practice is not required for complete conception of the invention. (Id. at *8). Rather, the Federal Circuit noted, “[t]o prevail in [an AIA derivation proceeding], a first-to-file respondent [] need only prove that his conception was independent.” (Id. at *5). And although the Board erred in basing its conclusions on Selner being the first to conceive, the Federal Circuit concluded that “this error does not affect the Board’s decision: in finding Selner was the first-to-invent, the Board also indirectly determined that he independently conceived and, thus, did not derive his invention from Burnam.” (Id.)

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