by Dennis Crouch
The Federal Circuit recently decided its first AIA derivation proceeding appeal. In Global Health Solutions LLC (Burnam) v. Selner, No. 23-2009 (Fed. Cir. Aug. 26, 2025), the court affirmed a PTAB decision favoring the first-filer -- but found a harmless error with the Board's analysis (the Board erred by framing its analysis in first-to-invent terms rather than first-to-file). Ultimately, the case outcome keeps derivation proceedings in their corner as narrow and rare exceptions to the general first-to-file rule. The decision also serves as a reminder that, while conception timing remains relevant for establishing derivation and rebuttal, the AIA system fundamentally abandons any inquiry into which party conceived the invention first.
The case involved competing patent applications for an emulsifier-free wound treatment ointment filed by former collaborators. Marc Selner filed his application on August 4, 2017, four days before Bradley Burnam's company Global Health Solutions LLC (GHS) filed its application. GHS petitioned for a derivation proceeding, arguing that Selner derived the invention from Burnam's earlier conception and communication. Although Burnham established a prima facie case of derivation, Selner was able to rebut that presumption with evidence of prior conception.
The dispute was resolved based upon a 3 hour time difference between emails from the competing inventors on Valentine's Day 2014.
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