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

Technologies

Artificial Intelligence (AI)
Artificial Intelligence (AI)
Digital Health
Digital Health
Energy & Renewables
Energy & Renewables

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
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Tokyo Office

Telephone: +81-3-6212-0550
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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.

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Supreme Court Holds that the AIA did not Change Long-Standing Precedent Governing the On-Sale Bar

  • January 22, 2019
  • Article

Associated People


As reported here previously, the U.S. Court of Appeals for the Federal Circuit (CACF) interpreted for the first time the new prior art provision (35 USC 102(a)(1)) of the American Invents Act (AIA). The CAFC held that an invention could be "on sale," and thus barred from patentability, even if the details of the claimed invention were not made available to the public via the sale or offer for sale. This holding came as a surprise to many commentators who believed that the new language in Article 102(a)(1) “or otherwise available to the public” modified the preceding phrase “on sale.” Thus, when companies offer for sale their technology (even under a confidential agreement) anywhere in the World, they should be aware that such offers could trigger a bar against the patentability of the technology even when the offers do not make the claimed invention available to the public.

On January 22, 2019, the U.S. Supreme Court affirmed the CAFC’s interpretation:

A commercial sale to a third party who is required to keep the invention confidential may place the invention “on sale” under §102(a). The patent statute in force immediately before the AIA in¬cluded an on-sale bar. This Court’s precedent interpreting that pro¬vision supports the view that a sale or offer of sale need not make an invention available to the public to constitute invalidating prior art. See, e.g., Pfaff v. Wells Electronics, Inc., 525 U. S. 55, 67. The Feder¬al Circuit had made explicit what was implicit in this Court’s pre-AIA precedent, holding that “secret sales” could invalidate a patent. Special Devices, Inc. v. OEA, Inc., 270 F. 3d 1353, 1357. Given this set¬tled pre-AIA precedent, the Court applies the presumption that when Congress reenacted the same “on sale” language in the AIA, it adopt¬ed the earlier judicial construction of that phrase. The addition of the catchall phrase “or otherwise available to the public” is not enough of a change for the Court to conclude that Congress intended to alter the meaning of “on sale.”

So much for harmonization of international patent law that the AIA was supposed to bring!