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Federal Circuit Unable to Agree on Subject Matter Eligibility Test for Computer-Related Inventions

On Friday May 10, 2013, the Federal Circuit issued an en banc decision in the CLS Bank v. Alice Corp. case. In this case, the Federal Circuit considered the scope of patentable subject matter (35 U.S.C. § 101) for computer-related inventions. Unfortunately, the Federal Circuit was unable to reach a majority consensus on the proper test to use for making such determinations. As a result, it is likely that the Supreme Court will take this case and provide guidance on this topic. In the meantime, claiming strategies should continue to include computer-tying limitations where possible, but dramatic changes to prosecution strategies should be avoided until such time as the Supreme Court speaks on the issue or we receive clear guidance from the Federal Circuit. Also, given the confusion surrounding § 101, it seems wise to raise § 101 as a defense in patent litigation or as a challenge in post-grant proceedings where appropriate.

Oblon Spivak Ranked As the Top Firm for Obtaining Patents for the 23rd Consecutive Year

Oblon Spivak Ranked As the Top Firm for Obtaining Patents for the 23rd Consecutive Year Alexandria, Va. -- The intellectual property law firm Oblon, Spivak, McClelland, Maier & Neustadt, L.L.P., has obtained 5,767, U.S. utility patents issued in 2012, according to numbers provided in the March issue of IP Today magazine. Oblon Spivak obtained 1,724 more patents than the second place firm and 2,426 more than the firm which came in third place. Oblon Spivak has achieved the ranking as the top patent firm for 23 consecutive years.

IP Today, Vol. 20, No. 3

Third Party Submissions in U.S. Applications

U. S. Patent and Trademark Office Sets or Adjusts Patent Fees as Authorized by the Leahy-Smith America Invents Act

Further to a notice of proposed rulemaking published on September 6, 2012, the final rule regarding U.S. Patent Fees was published on January 18, 2013 (please visit http://www.gpo.gov/fdsys/pkg/FR-2013-01-18/pdf/2013-00819.pdf to view this new rule in its entirety). This rule is effective on March 19, 2013, except for certain sections which will be effective on January 1, 2014.

Oblon Spivak Names New Senior Associates and One New Senior Attorney

For Immediate Release January 14, 2013 Alexandria, Va. – Oblon, Spivak, McClelland, Maier & Neustadt, L.L.P. is pleased to announce that Aldo Martinez, Ryan Smith, Alexander Englehart, and Steven Chang, have been elevated to senior patent associates and James Love has been elevated to senior patent attorney.

Oblon Spivak Is By All Measures the Leading Post Grant Practice Group in 2012

For Immediate Release January 10, 2013 Alexandria, Va. – The intellectual property law firm Oblon Spivak, which is located across the street from the United States Patent and Trademark Office (USPTO) and which is home to many former USPTO directors and judges, has taken a decisive lead in the area of post grant proceedings under the America Invents Act (AIA). There are now over one hundred AIA post grant proceedings pending before the USPTO, most of which are inter partes review proceedings. Oblon Spivak has solidified its position as the leader in this space by outpacing other law firms in terms of the number, diversity and commercial importance of post grant proceeding representations.

Oblon Spivak Named a 2013 "Go-To" Law Firm

For Immediate Release December 20, 2012 Alexandria, Va. – Oblon, Spivak, McClelland, Maier & Neustadt, L.L.P. is pleased to announce that the firm has been named one of the 2013 "Go-To" Law firms at the Top 500 companies in the U.S. The list will appear in the tenth annual edition of In-House Law Departments at the Top 500 Companies guide.

Federal Circuit Rules in Favor of SMC Corporation By Affirming ITC's Decision To Invalidate Competitor's Patent

Federal Circuit Rules in Favor of SMC Corporation By Affirming ITC's Decision To Invalidate Competitor's Patent For Immediate Release November 16, 2012 Alexandria, Va. – The U.S. Court of Appeals for the Federal Circuit issued a precedential opinion affirming a decision by the International Trade Commission (ITC) which ruled against Norgren, Inc., a Colorado-based company in its claims that SMC Corporation and SMC Corporation of America violated 19 U.S.C. Section 1337 with unfair practices in import trade.

Oblon Spivak's Arthur Neustadt Quoted in Law360 Regarding the Federal Circuit's Decision in Medtronic IP Case

Oblon Spivak's Arthur Neustadt is quoted in the recent Law360 article regarding the Federal Circuit's decision in the Medtronic IP case.

Law360, New York (September 18, 2012)

Post-Grant Proceedings Before the Patent Trial and Appeal Board

The America Invents Act created the Patent Trial and Appeal Board which is akin to the Board of Patent Appeals and Interferences and which will preside over various new proceedings designed to provide parties with a more effective venue in which to litigate patent validity. The most commonly used procedure will be inter partes review, which effectively replaces inter partes reexamination as of September 16, 2012. Other post-grant proceeding include Post-Grant Review and the Transitional Program for Covered Business Method Patents.