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

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

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, NIST, and DOJ Withdraw Joint 2019 Policy Statement on Remedies for Standards-Essential Patents Subject to Voluntary F/RAND Commitments

  • June 9, 2022
  • Firm News

On June 8, 2022, the Department of Justice (DOJ), the National Institute of Standards and Technology (NIST), and the U.S. Patent and Trademark Office (USPTO), announced the withdrawal of the 2019 Policy Statement on Remedies for Standards-Essential Patents Subject to Voluntary F/RAND Commitments. The 2019 Policy Statement (available here), which replaced a similar 2013 Policy Statement, generally promoted the right of owners of standard essential patents (SEPs) to pursue injunctive relief in response to infringement of such patents.

The withdrawal of the 2019 Policy Statement comes as a result of a July 2021 Executive Order that encouraged the DOJ, NIST, and USPTO to review the 2019 Policy Statement to ensure that it adequately promoted competition.  In response to the Executive Order, the DOJ, NIST, and USPTO issued a Draft Policy Statement on Licensing Negotiations and Remedies for Standards-Essential Patents Subject to Voluntary F/RAND Commitments in December 2021 (available here), along with a request for public comments.  After considering public input and possible revisions, the DOJ, NIST, and USPTO chose to simply withdraw the 2019 Policy Statement as the best course of action “for promoting both competition and innovation in the standards ecosystem.”  Notably, the 2021 Draft Policy Statement has not been adopted.

Each of the 2013, 2019, and 2021 Policy Statements encouraged “widespread and efficient” licensing of SEPs subject to F/RAND commitments, but differed on the appropriate remedies for infringement of such patents.  The 2019 Policy Statement, now withdrawn, was issued to address concerns that the 2013 Policy Statement advocated a unique set of legal rules for SEPs subject to a F/RAND commitment and that injunctive relief should not be available.  The 2019 Policy Statement clarified that a SEP owner’s F/RAND commitment “is a relevant factor in determining appropriate remedies, but need not act as a bar to any particular remedy.”  Further, the 2021 Draft Policy Statement observed that, under the factors set forth in eBay Inc. v. MercExchange, L.L.C., 547 U.S. 388 (2006), a SEP holder’s F/RAND commitments are certainly relevant factors to be considered by a court, but that, in practice, injunctive relief in such cases has rarely been granted since eBay.

Finally, comments on June 8th by leaders at the DOJ, NIST, and USPTO also indicate that, in their view, refusal by SEP owners to grant licenses on F/RAND terms can violate antitrust law, and the DOJ will scrutinize the actions of SEP holders in this regard on a case-by-case basis.

A copy of the DOJ, NIST, and USPTO press release of June 8th is available here.  A copy of the DOJ, NIST, and USPTO withdrawal is available here.