Do the new Derivation Rules published by the Patent Office include a Catch-22?

The Patent Office has published the new rules for instituting a claim of derivation.  Derivation proceedings were part of the shift to First to File, which allows someone who can prove that the first filer stole their idea to obtain the patent, even though they were not first to file.  It effectively replaces interferences, but requires not just first invention, but actual demonstration of theft.

The basics are that the petition must state with peculiarity the basis for the charge of derivation, must be filed under oath, and must be supported by substantial evidence.  However, the new rules appear to have a built-in Catch-22 with respect to publication.

The petition must be “filed within one year of the first publication by the earlier applicant of a claim to the same or substantially the same invention.” However, “derivation is unlikely to be declared even where the Director thinks the standard for instituting a derivation proceeding is met if the petitioner’s claim is not otherwise in condition for allowance.”

The requirement that inventors monitor the Patent Office publications closely is difficult, especially when the published claims may not reflect the (derived) later claims.  But more importantly, the timing can be impossible.

The senior applicant (e.g. the one accused of derivation) may request an early publication.  Currently accelerated publication ensures that a patent application is published as early as possible, and generally 14 weeks after receipt of the request.

This could mean that a junior applicant’s case may not even be filed, much less examined, even under the 18 month first action standard, before the petition to initiate the derivation proceeding has its deadline.  Even if the junior applicant files shortly after the senior applicant, with accelerated publication it’s unlikely that the junior applicant’s case would be in condition for allowance by the time the one year deadline rolls around.

Am I missing something?