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


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


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.

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 +


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.

Stay informed with

Our Blogs

The U.S. Supreme Court is Not Above Delivering a Good Pun

  • June 25, 2019
  • Article

Associated People

A good pun is always welcome when reading a legal opinion. Recently, in Return Mail v. U.S. Postal Service, neither snow nor rain nor heat nor gloom of night stopped U.S. Supreme Court Justice Sotomayor from dropping a well-placed pun in her majority opinion. Deep in the opinion at Section II(B), Sotomayor outlined the U.S. Postal Service's three arguments in three sentences. Of these arguments, her pithy conclusion is that "None delivers." Brilliant.

Many of us are familiar with some flavor of the "neither snow nor rain..." slogan of the U.S. Postal Service, which I shamelessly used in the paragraph above. However, going back to at least 1990, the U.S. Postal Service ran a series of commercials promoting their Express Mail service with the slogan "We deliver." Here is an example: Later slogans include "We deliver for you." and "Fly like an eagle."

Despite such promising slogans, and to the surprise of few, there remains a problem of handling undelivered mail. Return Mail claimed a method for solving this problem in their U.S. patent.  Perhaps induced by the pressure of their "We deliver." slogan, the U.S. Postal Service was interested in using Return Mail's method. But they did not reach an agreement. A few years later, however, the U.S. Postal Service improved its handling of undelivered mail. You know what happened. After conclusion of a reexamination proceeding, Return Mail ... wait for it ... stamped the U.S. Postal Service with an infringement suit. The U.S. Postal Service then deposited a post-grant CBM petition with the U.S. Patent and Trademark Office (USPTO). The Patent Trial and Appeal Board at the USPTO held that Return Mail's patent claims were ineligible for patenting, and on appeal the Federal Circuit ultimately agreed. Not wanting to get licked, Return Mail petitioned the U.S. Supreme Court to address this case.  

The U.S. Supreme Court picked up the package and addressed the question of whether the Government (e.g., a federal agency) is a "person" who may file a petition for a post-grant review (IPR, PGR, CBM) under the America Invents Act. The Court held that it is not.  

Justice Sotomayor noted that "[t]he patent statutes do not define the term "person."" And, even though "federal officers have been able to apply for patents in the name of the United states since 1883," Justice Sotomayor explained that "the Government's ability to obtain a patent ... does not speak to whether Congress meant for the Government to participate as a third-party challenger in AIA review proceedings." Justice Sotomayor reasoned that "excluding federal agencies from the AIA review proceedings avoids the awkward situation that might result from forcing a civilian patent owner (such as Return Mail) to defend the patentability of her invention in an adversarial, adjudicatory proceeding initiated by one federal agency (such as the Postal Service) and overseen by a different federal agency (the Patent Office)."

In the end, and over a dissent by Justices Breyer, Ginsburg, and Kagan, Justice Sotomayor's majority opinion held "that a federal agency is not a "person" who may petition for post-issuance review under the AIA." The U.S. Supreme court thus reversed the Federal Circuit and "remanded for further proceedings consistent with this opinion." This effectively clipped the wings of the U.S. Postal Service (and other government agencies)--it can no longer fly like an eagle to the USPTO whenever it wishes to challenge a U.S. patent. We will wait to see what the Federal Circuit pens in reply on the remand.

How many puns? :)