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

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

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Artificial Intelligence (AI)
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Digital Health
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Energy & Renewables
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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

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.

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

ACCOLADES

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.

OPPORTUNITIES FOR YOUR

Career

OPPORTUNITIES FOR YOUR Career

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.

A few ways to

GET In Touch

A few ways to GET In Touch
US Office

Telephone: 703-413-3000
Learn More +


Tokyo Office

Telephone: +81-3-6212-0550
Learn More +

Downloadable

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.

Patent Assignments: Difficult Decisions in a Difficult Time

  • July 6, 2020
  • Article

Associated People


Assignments are important and necessary because they protect the ownership interests in inventions and provide the right to prosecute patent applications and enforce patent rights. But many issues can arise with the assignment of inventions and patent rights and even more issues arise in the era of COVID-19 social distancing. 

The issues that can arise are numerous and may vary from country to country, or even state to state:
  • The requirements for an assignment may vary from country to country;
  • The majority of countries require the assignment to be in writing, but the form could vary, e.g., a separate assignment agreement, a clause in an employment agreement, a separate provision assigning priority rights, etc.;
  • Determining inventorship at the time of an assignment is important to make sure that all rights are properly transferred;
  • Whether payment beyond the inventor’s continued employment is required for the assignment and the form and acknowledgment of that payment may vary;
  • Determining who should be the assignee is important (e.g. the determination of what company within a company group should receive the patent rights may affect the type of damages that are available for infringement);
  • The requisite wording of the contract to effect an assignment may vary from country to country;
  • Whose signatures are required on a patent assignment may vary from country to country;
  • In the age of COVID-19, whether it is possible or advisable to have an inventor sign an assignment electronically may vary from country to country;
  • The requirements for an electronic signature may vary from jurisdiction to jurisdiction;
  • Whether notarization of assignments is required may vary from country to country;
  • Timing of the execution of an assignment can affect the ability to claim priority to an earlier filed application;
  • Whether a separate assignment is needed for provisional and non-provisional applications;
  • The requirements for registration/recordation may vary from country to country;
  • Whether legal effect of the assignment may be contingent upon its registration/recordation may depend upon the country;
  • Whether government approval is required to assign rights; and
  • Whether a process exists to correct mistakes on an assignment (this happens more frequently than realized).
These are but a few of the issues that may arise when contemplating assignment of employee-inventions.  There are many others.  Oblon is well versed in the assignment of patent rights and can assist if you have any question or concerns.