the firm's post-grant practitioners are some of the most experienced in the country.

Tao  Feng, Ph.D.
Tia D. Fenton
Kevin M. McKinley
Arthur I. Neustadt
John S. Kern
Christopher  Ricciuti
Craig R. Feinberg
Nicholas  Rosa, Ph.D.
Edwin D. Garlepp
Derek  Lightner, Ph.D.
Philippe J.C. Signore, Ph.D.
Alec M. Royka
John F. Presper
Marina I. Miller, Ph.D.
Kevin Ross  Davis
Jenchieh (Joseph) Yuan
Sameer  Gokhale
James R. Love
Eckhard H. Kuesters
Robert  Tarcu
Charles L. Gholz
Brian B. Darville
Andrew M. Ollis
David M. Longo, Ph.D.
Bogdan A. Zinchenko
Kasumi  Kanetaka
J. Derek  Mason, Ph.D., CLP
Alexander B. Englehart
Jay E. Rowe, Jr., Ph.D.
Frank J. West
Stephen G. Baxter, Ph.D.
Grace E. Kim
Yuki  Onoe
Christopher I. Donahue
Chika (Teranishi) Iitoyo
Eric W. Schweibenz
Daniel J. Pereira, Ph.D.
John  Sipos
Steven B. Chang
Norman F. Oblon
Ryan W. Smith
Aldo  Martinez
Dale M. Shaw
Elissa L. Sanford
Robert W. Downs
Yorikatsu  Hohokabe, Ph.D.
Teddy S. Gron
Kurt M. Berger, Ph.D.
Robert T. Pous
Diane  Jones
Yuanyi (Alex) Zhang, Ph.D.
Carl E. Schlier
Stefan Uwe  Koschmieder, Ph.D.
Thomas M. Cunningham, Ph.D.
Richard D. Kelly
Long  Phan, Ph.D.
Colin B. Harris
Jianping (James)  Wu
Akihiro  Yamazaki
Kevin L. Hartman, Ph.D.
Jeffrey B. McIntyre


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Fast Facts

About Our

Law Firm

About Our Law Firm

Headquartered within steps of the USPTO with an affiliate office in Tokyo, Oblon is one of the largest law firms in the United States focused exclusively on intellectual property law.

Get to know our


Get to know our History

Norman Oblon with Stanley Fisher and Marvin Spivak launched what was to become Oblon, McClelland, Maier & Neustadt, LLP, one of the nation's leading full-service intellectual property law firms.

Our Local and

Global Reach

Our Local and Global Reach

Outside the US, we service companies based in Japan, France, Germany, Italy, Saudi Arabia, and farther corners of the world. Our culturally aware attorneys speak many languages, including Japanese, French, German, Mandarin, Korean, Russian, Arabic, Farsi, Chinese.

A few of our


A few of our ACCOLADES

Oblon's professionals provide industry-leading IP legal services to many of the world's most admired innovators and brands.




From the minute you walk through our doors, you'll become a valuable part of a team that fosters a culture of innovation, client service and collegiality.

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GET In Touch

A few ways to GET In Touch
US Office

Telephone: 703-413-3000
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Tokyo Office

Telephone: +81-3-6212-0550
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Patent Forms

Downloadable Patent Forms

The United States Patent and Trademark Office (USPTO) issued final rules implementing the inventor's oath or declaration provisions of the America Invents Act (AIA) on August 14, 2012.

Indefiniteness: Bad Translation/Lack of Definition Redux

  • April 15, 2021
  • Article

Associated People

Associated Technologies

            I previously wrote about a Federal Circuit Opinion that affirmed a lower court ruling that the term “half-liquid” was indefinite despite the apparent mis-translation of the original Italian term “semiliquido” On March 1, 2021, the losing party (IBSA Institut Biochimique, S.A., Altergon, S.A., IBSA Pharma Inc.) filed a petition for writ of certiorari in the U.S. Supreme Court and so I thought it would be interesting to take another look at this case. Indeed, the petitioner presented a novel question for review of the lower courts’ decision of indefiniteness of the term at issue. The question presented in the petition is:

Whether, pursuant to the United States’ obligations under the TRIPS Agreement, codified at 19 U.S.C. § 3511, a court construing the claims of a U.S. patent may give no weight to a foreign priority patent application, despite its submission to the U.S. Patent & Trademark Office during prosecution of the patent-in-question, because it is written in a foreign language and exhibits minor differences from the U.S. patent resulting from a translator’s judgment.

            In essence the argument presented in the petition is that the Federal Circuit decision improperly treated a foreign applicant/inventor differently because of the translation error (semiliquido apparently is correctly translated to semi-liquid not half liquid) because the lower courts allegedly excluded the understanding of the inventors’ in their native Italian. This statement from page 5 is illustrative:

If the lower courts’ view holds, precedent will be set to give foreign applications no weight in claim construction proceedings, as the types of differences the courts found dispositive here are common with translations, no matter the foreign language. That rule would flatly contravene the requirement that a foreign application be treated equally as a domestic one. And the rule would have profound implications for foreign applicants’ right to claim priority to their domestic applications.

            On April 5, 2021, the U.S. Supreme Court denied, without explanation, the petition. My commentary on the case remains: humans make errors so pay careful attention to translations, particularly to important features of the invention. Despite the petitioner’s arguments here, as most patent practitioners should be aware there are various times during the life cycle of a patent application/patent when corrections can be made to the specification and/or claims, e.g., after filing, during prosecution, before issuance, and post-issuance via certificates of correction (for relatively minor errors) and reissues. I am not aware of any instances where foreign applicants have any disadvantages in these types of correction procedures at the USPTO.