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

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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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Our Blogs

USPTO Proposes Changes to Terminal Disclaimer Practice

  • May 13, 2024
  • Firm News

Associated People


On May 10, 2024, the US Patent and Trademark Office (USPTO) introduced a proposed rule that could have significant implications for patent procedures, particularly concerning terminal disclaimers used to address rejections based on non-statutory double patenting. According to the proposal, a terminal disclaimer must now include a provision stipulating that the patent will be unenforceable if it is linked directly or indirectly to another patent whose claims have been invalidated due to prior art. This new condition, if enacted, would supplement existing requirements aligning the expiration dates of disclaimed patents with referenced ones and restricting enforcement to periods of common ownership.

This proposed rule marks a substantial departure from current practice, which typically assesses claims individually, even within a single patent. It shifts the balance of influence towards challengers of patents and undermines the presumption of validity granted by statute.

For patent applicants and owners, these proposed changes present challenging decisions. Adhering to the new requirements in terminal disclaimers means accepting the risk that the enforceability of an entire patent could depend on the validity of a single claim in another patent. Consequently, applicants may be more inclined to contest double patenting rejections or seek other claim amendments instead of merely filing a disclaimer.

The proposed rule could also influence broader patent filing strategies. Applicants might become more cautious about submitting continuation applications with minor variations, opting instead for more distinct inventions. There may also be a tendency to include claims of varying scope in initial applications to avoid the need for follow-on patents or to provoke a restriction requirement that sidesteps the issue of obviousness-type double patenting.