From his kitchen table in a small Arlington, Virginia, apartment, Norman Oblon launched what was to become Oblon, Spivak, McClelland, Maier & Neustadt, one of the nation’s leading full-service intellectual property law firms. It was 1968, and he was just 26 years old.
Working his way through law school at night while toiling away by day at the United States Patent and Trademark Office (USPTO) and later at the U.S. Naval Laboratory, proved to be a critical career decision for Mr. Oblon. He met his future partners, Marvin Spivak, Irvin McClelland and Gregory Maier at the U.S. Naval Laboratory, where they were all working as civilian patent advisors for the U.S. Navy. At the USPTO he developed solid relationships with many USPTO heavyweights who later became critical members of the Oblon, Spivak team.
Together the founders quickly landed a string of impressive clients. However, the firm’s real turning point came in the early 1970s when the founders saw opportunity in the still-undiscovered Japanese market. The country had yet to emerge as the economic powerhouse it is today, and it was ripe with business opportunities.
Changing the Nature of Patent Prosecution for Foreign Companies
In the 1970s foreign companies filing patents with the USPTO prosecuted their cases from outside the country by sending detailed, often adversarial, instructions to the U.S. local associate who merely transmitted those instructions to the USPTO. This frequently led to miscommunication and confusion, and ultimately a breakdown in the relationship between the Patent Examiner and the foreign company. The firm persuaded the foreign companies to change the nature of the prosecution to allow firm attorneys to discuss the official actions from the USPTO with the Patent Examiners first, before the foreign company issued their instructions to local associates. It was a small, albeit completely logical, change to the then-established procedure. But for the foreign companies, it was a radical departure from the way business had been conducted with their U.S. associate law firms for more than 150 years. At first, the foreign companies were persuaded to follow the firm’s advice on an experimental basis but quickly became converts to this philosophy.
The founders also co-authored a book designed to guide Japanese companies through the U.S. patent prosecution system. It was one of the first, if not the first, book of its kind to be published in Japanese. Nearly 40 years later, the firm boasts a significant Japanese client base and has been ranked first in the number of patents obtained for each of the last 19 years, securing more than 4,000 patents in 2009 alone. No other firm has come close to reaching these milestones.
Expansion Into a Full-Service Intellectual Property Law Firm
As the firm’s patent prosecution work took off, in 1976 Art Neustadt was brought on to lead the litigation practice. The firm continued to expand its focus to include the areas of ITC litigation, patent interferences, patent reexamination/reissue, copyright, trademark, industrial designs and opinions and counseling. The firm also now offers a group focused exclusively on the needs of pharmaceutical and medical devices clients.
Helping Clients Learn the U.S. IP System
The firm remained steadfast in its commitment to helping foreign companies learn the U.S. intellectual property system so that they could more effectively protect their IP assets. The firm created a robust client training program that it uses to this day to train overseas clients in U.S. patent law. In 1969 the first Japanese trainees were brought to the firm’s Virginia office where they completed a rigorous course load that was supplemented with enrollment in the prestigious Patent Office Academy (an intense three-month training program originally designed for USPTO Patent Examiners). This program continues to provide firm clients with an in-depth understanding of relevant issues as well as the various options available when important decisions need to be made. Soon the firm was hosting trainees from Japan, France, Germany, Italy, Switzerland and other European countries. The experience was not just about patent law – it was also an opportunity for the trainees to be immersed in U.S. culture. The investment paid off. Nearly all the training program graduates went on to hold prominent positions within their respective companies, and they still remain clients and friends today.
Innovative Recruiting Model
As the firm grew, it developed a recruiting method that was mostly unheard of in the 1970s and 1980s. Instead of only hiring attorneys fresh from law school, it groomed talented academics for a successful law career by identifying promising Ph.D.s and paying their law school tuitions. Thus Oblon, Spivak became one of the first firms to develop a cadre of credentialed attorneys who knew the USPTO Patent Examiners and understood science and technology. This move made it much easier to handle the technically oriented casework and became a powerful hiring model that has been replicated by many other firms today. And as a result, many of the firm’s attorneys hold doctorates and other advanced degrees in biotechnology, computer and software engineering, physics, chemistry, and many other fields.
Oblon, Spivak Today
Today, Oblon, Spivak is headquartered in an expansive building located adjacent to the USPTO in Alexandria, Virginia, and operates an affiliate office in Japan to serve its large international client base. The firm’s approximately 500 professionals, including 100-plus attorneys, provide clients across the world a full range of intellectual property law services.