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U.S. Patent Procurement (Application Drafting & Prosecution)Fast Facts
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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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Prosecution History Estoppel And Amendments Tangential To Patentability
The doctrine of equivalents is an equitable exception to the basic concept that the patent claims define the limit of claim protection. It is intended to prevent one from making an insubstantial change to a claimed invention to avoid infringement which is defined by the function-way-result test. The doctrine is limited by the prior art, dedication to the public, and prosecution history estoppel.
I burn, burn like a wicker chair; chalk white and oh-so frail…
The title above refers to a lyric from a 1998 song by Eve 6, although they used the word "cabinet" instead of "chair." While this simple substitution of a word on my part is designed to evoke an image, the choice of words and the image evoked* can mean so much more in the world of design patents.
Specification Must Adequately Disclose the Claimed Invention to Avoid Invalidation for Lack of Written Description
Drs. Stephen Quake and Christina Fan ("Quake") appealed a decision of the U.S. Patent and Trademark Office Patent Trial and Appeal Board ("the Board") finding the four claims of Quake's U.S. Patent 8,008,018 and Claim 25 of their U.S. Application No. 12/393,833 unpatentable for lack of written description.
Patently Obvious?
Teddy Gron wrote an article entitled "Patently Obvious?" featured in the September issue of the Illinois State Bar Journal.
Illinois Bar Journal
Thinking Outside the (Utility Patent) Box – Don't Overlook Design Patent Protection in the Life Sciences
Design patents are very different from utility patents in that design patents only protect the ornamental features of an invention. In contrast to utility patents, the design is defined in scope by the content of the drawings rather than the words of a set of claims. Further, design patents have a 15 year term, as opposed to 20 years from filing for utility patents.
Non-Limiting Clauses and Written Description Based on Substantially Equivalent Disclosure
Nalpropion Pharmaceuticals, Inc. v Actavis Laboratories FL, Inc (Fed. Cir. Aug. 15, 2019) is a precedential opinion written by Judge Lourie with Judge Wallach and a dissent from Judge Prost in a case centered on an ANDA litigation in which Actavis sought approval for their generic version to Nalpropion's patents for the Contrave® product. Footnote 1 in the opinion outlines the rather complex history of the ownership/license interests as they changed over time.
"Tips for Safeguarding Your Products from Fakes"
Derek Mason was interviewed by Michael Keating for a blog post entitled "Tips for Safeguarding Your Products from Fakes," featured in Industrial Equipment News (IEN).
Industrial Equipment News
An Approach to Pharma Life Cycle Management
Every innovative pharma company faces the same challenge, how to delay the patent cliff. The existence of the "skinny viii" (21 U.S.C. § 355(j)(2)(A)(viii)) makes developing additional FDA approved indications unattractive from an LCM viewpoint.
Invalidity of Broad Claims for Lack of Enablement in the Absence of Sufficient Disclosure of the Structure/Function Correlation and Unpredictability in the Art
Enzo Life Sciences, Inc. ("Enzo") appealed the decision of the U.S. District Court for the District of Delaware granting summary judgment against Enzo and holding that the asserted claims were invalid for lack of enablement. The Federal Circuit affirmed.
