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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.
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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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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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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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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by Sana Tahir, Law Clerk and Andrew Ollis, Partner
by Andrew Ollis, Partner and Sana Tahir, Law Clerk
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Article
MCRO's Pyrrhic Victory
On May 20 the Federal Circuit for the second time found McRO's patent for automatically generating animations to be patentable, this time reversing the district court's finding of invalidity for lack of enablement. In its previous decision, McRO, Inc. v. Bandai Namco Games America Inc., 837 F.3d 1299 (Fed. Cir. 2016) (McRO I), the Federal Circuit reversed the district court's holding that the claims were directed to a judicial exception, an abstract idea. In McRo I the Court had reversed based on its determination that the claims were to a genus limited to rules with certain common characteristics, a genus. Id. at 1313. In particular, the "rules are limiting in that they define morph weight sets as a function of the timing of phoneme sub-sequences." Id.
Biogen v. Banner Life Sciences -- The Limited Scope Of U.S. Patent Term Extensions (Hint: Metabolites Not Included)
Under 35 U.S.C. §156, a patentee can extend a patent's term to restore part of the term consumed during the Food and Drug Administration's (FDA) New Drug Application (NDA) approval process for a compound covered by the patent.
USPTO Decides an "Inventor" as a "Natural Person"
The USPTO has published an apparently January 2020 Commissioner Decision effectively precluding the filing of patent applications where the invention was made solely by artificial Intelligence (AI). This decision has implications in the pharmaceutical industry where the use of AI to identify new compounds or uses for old compounds is utilizing AI. It also provides some guidance as to how the problem may be avoided.
Obviousness of Compounds Having "Significant Structural and Functional Similarities" With Known Compounds
Mylan Pharmaceuticals Inc. and others ("Mylan") appealed from the District Court's grant of summary judgment that claim 8 of U.S. Patent 8,552,025 owned by Valeant Pharm. Int'l, Inc.was not invalid. Valeant Pharm. Int'l, Inc. v. Mylan Pharm., Inc., No. 2:15-cv-08180 (SRC), 2018 WL 2023537 (D.N.J. May 1, 2018). The Court of Appeals for the Federal Circuit ("the Court") reversed the decision of the district court.
