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

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

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
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.

USPTO Announces Pilot Program for Deferring Subject Matter Eligibility (SME) Responses

  • January 7, 2022
  • Firm News

On January 6, 2022, the U.S. Patent and Trademark Office (USPTO) announced the implementation of an invitation-only pilot program that would permit an applicant to defer responding to subject matter eligibility (SME) rejections under 35 U.S.C. § 101 in applications accepted into the pilot program and under certain conditions. The USPTO calls this the Deferred Subject Matter Eligibility Response (DSMER) Pilot Program. The DSMER Pilot Program is designed to help the USPTO evaluate whether permitting deferring responses to SME rejections would improve examination efficiency and quality, particularly if Applicants’ responses to non-SME rejections would also overcome SME rejections.

According to the USPTO, invitations to the DSMER Pilot Program will be issued from February 1 – July 30, 2022 in a first Office Action on the merits in applications identified as prospective pilot applications. Applicants may not request the USPTO to participate in the DSMER Pilot Program.

The first Office Action in prospective pilot applications must include rejections for both lack of SME and other patentability criteria (e.g., anticipation, and/or obviousness, and/or indefiniteness, etc.). If the Applicant accepts the invitation to participate in the DSMER Pilot Program, the Applicant may “defer presenting arguments, evidence, or amendments in response to the SME rejection(s) until the earlier of final disposition of the participating application or the withdrawal or obviation of all other outstanding rejections.”

The USPTO provides a hypothetical example of an application accepted into the DSMER Pilot Program, in which the first Office Action includes one anticipation rejection and two SME rejections. In this example, the USPTO notes that any of the following options would constitute a valid response to the Office Action: (a) providing arguments and/or amendments in response to the anticipation rejection but remaining silent as to the two SME rejections; (b) providing arguments and/or amendments in response to the anticipation rejection and to one of the SME rejections but remaining silent as to the other SME rejection; and (c) providing arguments and/or amendments in response to all three rejections. However, if the next action is a Final Office Action, the Applicant cannot continue to remain silent as to any remaining SME rejection(s). 

There are many details, criteria, caveats, and nuances pertinent to the DSMER Pilot Program, as explained in the Federal Register notice detailing the announcement, available here: https://www.govinfo.gov/content/pkg/FR-2022-01-06/pdf/2021-28473.pdf  

The USPTO provides additional information on the DSMER Pilot Program on its website here: https://www.uspto.gov/patents/initiatives/patent-application-initiatives/deferred-subject-matter-eligibility-response

We will monitor our clients’ applications for invitations to participate in the DSMER Pilot Program and, if necessary, provide application-specific recommendations at the appropriate time.