By Julius Melnitzer | October 16, 2025
The Board focused on who had been first-to-invent as opposed to who was first-to-conceive – Joshua Spicer
The United States Court of Appeals for the Federal Circuit has issued its first decision relating to derivation proceedings under the America Invents Act (AIA). These proceedings, litigated at the Patent Trial and Appeal Board (PTAB), determine ownership when two applications are filed by different inventors for the same invention.
“The decision clarifies the legal burdens of proof in derivation proceedings,” says Joshua Spicer, a principal at the Toronto office of Smart & Biggar, a member of the IPH network.
The ruling in Global Health Solutions LLC v Selner affirmed the PTAB’s decision, but did not adopt the Board’s analysis.
“The Board focused on who had been first-to-invent as opposed to who was first-to-conceive,” Spicer says. “But the court ruled that the error was harmless because the Board’s decision actually turned on who was first-to-conceive.”
In interference proceedings that preceded the AIA’s enactment, priority depended on who was first-to-invent. But, under the AIA’s derivation proceedings, the emphasis is on who filed first and whether the first filer’s conception of the invention was independent. The upshot is that second-filers’ challenges can succeed only by proving that the first-filer derived the invention from them.
“From an evidentiary standpoint, then, the guidance in Global Health requires the second filer to prove that they conceived the invention and communicated it to the first filer,” Spicer explains. “The burden then shifts to the earlier filer to show that they conceived the invention independently, but not necessarily that they conceived it first.”
The decision does not mean, however, that pre-AIA interference cases are now irrelevant. Judge Philip Stark, who wrote the decision for the Federal Circuit panel, stated:
In general, under the AIA, unlike before, the inventor who files first will retain patent rights as long as he did not derive his claimed invention from another. For this reason, while our derivation cases arising in the context of pre-AIA interferences may provide helpful guidance, they must be carefully considered before being applied in AIA derivation proceedings. Judges must take care not to allow interference proceedings to be inadvertently revived through AIA derivation proceedings.
Global Health originated from the collaborations of podiatrist Dr. Marc Selner and Bradley Burnam on various projects while working at different companies. Burnam subsequently founded Global Health Services (GHS).
In August 2017, Selner and GHS each filed patent applications for an emulsifier-free wound ointment containing ananoscale droplets of the biocide Polyhexamethylene Biuanide. Selner was first-to-file, doing so four days before GHS.
GHS initiated a derivation proceeding a few days after filing. The company claimed that Burnam conceived the invention before Selner and communicated it to Selner.
The hearing took place in April 2022. On August 26, 2025, the PTAB concluded that although Burnam emailed Selner to inform him of the invention at 4:04 PM on February 14, 2014, Selner had independently conceived the same invention by 12:55 PM on the same day. Selner’s earlier conception meant that he had not derived the invention from Burnam.
As the court saw it, Selner had no obligation to show reduction to practice (that the invention had been built or tested) to prove conception.
“To the contrary, Selner’s conception was complete at the point at which he was ‘able to define [the Invention] by its method of preparation’ or when he had formed ‘a definite and permanent idea of the complete and operative invention’,” Stark stated.
Still, evidence of conception required sufficient corroboration of an inventor’s testimony. Here, Selner had corroborated his claim by producing the February 14 emails that he sent, and Burnam received, which explained the Invention in detail.
Interestingly, the GHS application included an alternative request to correct inventorship by naming Burnam as a co-inventor. The PTAB’s failure to consider that request, GHS argued, constituted reversible error.
The Federal Circuit disagreed: GHS’ application did not comply with the Board’s practice guidelines mandating that contested requests for inventorship correction take the form of a separate motion that included a processing fee, an application data sheet identifying each inventor, a statement of the precise relief requested, and a full statement of the reasons justifying granting that relief.
Indeed, GHS made its request before the Board only by way of a single sentence in its petition that, the court stated, was “not the required separate motion” nor a “detailed explanation of the reasoning supporting joint inventorship”.
Additionally, GHS did not refer to its request for co-inventorship at the hearing.
“Under these circumstances, any error the Board may have committed in not expressly addressing an undeveloped request for alternative relief, buried in a petition and never referenced again, is attributable to GHS’ own failings and is harmless,” the court stated.
Joshua Spicer is a qualified lawyer and IP litigation expert based in Toronto, Canada. Access his contact information here.
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