Federal Circuit affirmed a PTAB decision favoring the first-filer in Global Health Solutions LLC (Burnam) v. Selner while finding a harmless Board error for using first-to-invent language. Derivation proceedings remain narrow, rare exceptions to the first-to-file regime. Conception timing remains relevant to establishing derivation and rebuttal, but the AIA forecloses inquiry into which party conceived an invention first. The dispute involved competing applications for an emulsifier-free wound-treatment ointment. Marc Selner filed on August 4, 2017, four days before Global Health Solutions filed. A prima facie derivation was rebutted with evidence of prior conception resolved by a three-hour email time difference on February 14, 2014.
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.
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