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

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

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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.

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History

Get to know our History

1968
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.

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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.

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ACCOLADES

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

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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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Telephone: 703-413-3000
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Telephone: +81-3-6212-0550
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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

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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” https://www.lifesciencesipblog.com/indefiniteness-bad-translation-lack-of-definition-or-both. 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.