Oblon

IAM Research

The Patent 1000 focuses exclusively on patent practice and has firmly established itself as the definitive 'go-to' resource for those seeking world-class legal patent expertise.

Bronze - Firms: litigation

Recommended - Firms: prosecution

Dispensing the full suite of services via a large and well-configured team of attorneys, Oblon aligns itself as a key strategic patent partner to innovators. The boutique delivers crisp results in prosecution, the bedrock of its wider practice, taking advantage of deep familiarity with the USPTO developed over the course of thousands upon thousands of filings, examiner interviews and registrations. Assignments are carried out efficiently and cost effectively, thanks to a smart prosecution programme designed to obtain high-quality patents with the fewest office actions; this has yielded superb results, with the firm securing over 6,000 patents each year. Many of these protect chemical sciences technology – the specialist subject of PhDs Daniel PereiraMarina MillerVincent Shier and Derek Mason, who form one of the best teams for the chemical industry in the entire country. Co-chair Pereira is an ace at litigation counselling and keeping clients out of trouble. Miller has litigated ANDA cases and applies contentious learnings in procuring lasting patents. Shier is highly active in Oblon’s post-grant practice, but also maintains his counselling and portfolio management skills at the highest level. Mason performs flawlessly in licensing negotiations and transactional IP scenarios. Managing partner Philippe Signore, meanwhile, anchors the electrical and mechanical prosecution group; he has lectured on US patent law around the world, gaining vital insight into international patent law and practice in the process. In litigation, Oblon continues to do good things at the ITC thanks to the diligence and quality of Eric Schweibenz: “Eric is a top expert in ITC litigation – he knows the ins and outs of Section 337 practice and has a strong enthusiasm for it. He’s super-responsive, mindful of budgets and is constantly thinking about clients’ broader objectives beyond the confines of a particular case – he understands litigation as a means to an end.” Joining him in the guide this year is litigation group co-chair Tia Fenton, who concentrates on pharmaceutical and chemical patent litigation. Together with Schweibenz, she has been representing Japan-based global food and chemical company Ajinomoto in a suit filed by Kyowa, which asserted patents relating to the process for manufacturing glutamic acid, used to make monosodium glutamate.

Recommended - Firms: prosecution

From its Tokyo office, Oblon provides patent prosecution solutions to Japanese companies seeking to protect their intellectual property in the United States. Drawing on an extensive team of almost 100 lawyers, patent agents and technical experts stationed in the Virginia headquarters, the IP boutique has developed a close relationship to local pharmaceutical corporations. Much of this success can be attributed to the co-head of the chemical practice group Yuki Onoe, who leads the team on the ground.

Firm Profile

Oblon is one of the largest US law firms that exclusively practise IP law. Emerging and established businesses worldwide depend on Oblon to protect, leverage and establish their IP assets.

Oblon’s team of nearly attorneys, registered patent agents and technical advisers includes some of the country’s most respected practitioners in IP law. Most professionals hold an advanced degree in engineering, physics, chemistry, biotechnology and many other fields.

Oblon is home to dedicated trial attorneys who have successfully handled high-stakes IP disputes. Litigation clients range from start-up companies to multinationals, and include many well-known household names such as Toyota, Roku, Ceva, Ricoh, Allergan and Valeo. IP disputes pose large risks as well as present great opportunities. We strive to be as innovative and cutting-edge in our representation as our clients are in their respective industries.

Due to our innovative and practical approach to litigation, we have been entrusted with many high-profile litigation matters, such as Festo Corp v Shoketsu Kinzoku Kogyo Kabushiki Company before the Supreme Court, which forever changed the landscape of patent law.

We litigate patent cases throughout the United States, including districts that receive the highest volume of patent disputes, such as the District of Delaware, the Northern and Central Districts of California, the Eastern District of Texas and the Southern District of New York. We also litigate Section 337 investigations before the International Trade Commission.

Oblon’s litigation expertise is integrated with our unparalleled PTAB experience. Oblon’s litigation and post-grant teams work collaboratively to identify and capitalise on the opportunities and challenges posed by the prospect of concurrent litigation and post-grant proceedings.

Our litigation and post-grant practitioners develop strategies that anticipate potential post-grant proceedings in our clients’ offensive actions and assess whether to proceed with post-grant proceedings in our clients’ defensive actions. In defensive actions, this often results in stayed litigation pending resolution of the PTAB proceedings and decreased damage exposure. Our experienced team knows when to refrain from attempting to initiate post-grant proceedings in defensive actions. In offensive litigations, our collaboration minimises the prospect of a stay due to PTAB proceedings and maximises defendants’ exposure to our clients’ infringement allegations.

Oblon’s post-grant patent practice group is a field leader in the United States. We routinely participate in PTAB proceedings affecting our clients’ businesses. Since the start of post-grant proceedings in 2012, the firm has been counsel in more than 300 PTAB proceedings for clients such as Google, Oracle, eBay, Cisco, Kodak, Blackberry, Sony Mobile, Nikon, Ericsson, Edwards Life Sciences, Donaldson, Covidien and Toyota. We are sought out for some of the most high-profile disputes the PTAB has seen, including some of the more noteworthy PTAB decisions. We are the prevailing counsel in the only inter partes review to ever have live testimony; we were counsel in the first covered business method ever filed; and we are counsel in seminal cases in the area of issue joinder.

Lastly, the post-grant group provided significant input to the USPTO in fashioning the rules of practice for the post-grant proceedings of the America Invents Act, as well as existing patent re-examination practices. Leaders of the group have also counselled the US Congress and USPTO on the technical corrections to the America Invents Act. Oblon is home to the foremost thought leaders in post-grant patent practice.

In the past couple of years alone, recognition of Oblon’s top status includes:

  • obtaining the most utility patents for the past 30+ years, according to the USPTO;
  • being ranked in Tier 1 of the regional ranking (Washington DC) and Tier 2 of the national ranking for Litigation – Intellectual Property and Litigation – Patent Law, by US News and World Report’s Best Law Firms 2021 (respectively);
  • being ranked in Tier 5 for Patents: Prosecution (including Re-examination and Post-Grant Proceedings) by IAM Patent 1000 2020; being recognised as one of the United States’ leading firms in the area of patent prosecution and post-grant proceedings by The Legal 500 2020;
  • having two of its attorneys recognised in Managing Intellectual property’s IP Stars 2020;
  • being ranked in sixth position among Vault’s Best IP Boutique Law Firms 2020 and recognised among the Top 150 under 150, Vault’s list of leading mid-size law firms; and
  • being ranked in Band 2 for Northern Virginia by Chambers & Partners 2019.

Get unlimited access to all IAM content