Jonathan P. Osha
- Global Chair | U.S. Patent Attorney and Attorney at Law
- German
- Spanish
- French
- Japanese
- English
John leverages his more than 30 years of IP experience to provide effective strategic counseling to his clients and to mentor younger attorneys and agents in the firm. His practice covers the full scope of IP with special emphasis on management of complex international IP portfolios. John leads the firm’s electronics, optics, and physics group.
International harmonization of IP laws is a major focus of John’s work outside the office. He was a member of the Bureau (board) of the International Association for the Protection of Intellectual Property (AIPPI, based in Zurich) for 10 years and was the first American ever to serve as Reporter General of that organization. He is also a member of the American Intellectual Property Law Association’s Harmonization Committee through which he has actively participated in substantive and procedural harmonization discussions in the Industry Trilateral and IP5 Industry groups.
The impact of artificial intelligence on IP law is another major area of focus. Having coordinated work on three AI-related resolutions during his time on the AIPPI Bureau, John now chairs AIPLA’s AI task force, IPO’s AI policy subcommittee, and is AIPLA’s representative on the IP5 industry AI task force.
Admissions
- State Bar of Texas
- United States Patent and Trademark Office
- United States Court of Appeals for the Federal Circuit
- United States District Court for the Eastern District of Texas
- United States District Court for the Northern District of Texas
- United States District Court for the Western District of Texas
- United States District Court for the Southern District of Texas
- United States District Court for the Eastern District of Michigan
PROFESSIONAL HONORS
- IAM Patent 1000, Recommended in Prosecution, Texas (2019-2024)
- “Best Lawyers in America© – Patent Law,” U.S. News & World Report (2014 - present)
- Recognized in “Best Lawyers in America,” Best Lawyers®,
- Litigation: Patent (2019-2023)
- Patent Law (2014-2023)
- “IP STAR – Patent Star and Trademark Star,” Managing IP (2016-present)
- “Texas Super Lawyer,” Thomson Reuters (2004, 2006-present)
- LES “Certified Licensing Professional”
- Martindale-Hubbell® AV® rated
- “Top Lawyer,” H Texas magazine (2006-present)
- “America’s Top Patent Prosecutors of 2011,” Patent Buddy (2011)
- “Top 100 Professionals of Houston,” H Texas magazine (2010)
PROFESSIONAL ACTIVITIES AND MEMBERSHIPS
LEGAL
- Association Internationale pour la Protection de la Propriété Intellectuelle (AIPPI)
- Member of the Bureau (2010-2020)
- Reporter General (2018-2020)
- AIPPI-US Steering Committee (2015-present)
- American Intellectual Property Association (AIPLA)
- Board of Directors (2018-2021)
- Chair, AI task force
- Harmonization committee member / board liaison / Trilateral Industry & IP5 Industry participant (2017 – present)
- Intellectual Property Owners Association (IPO)
- Vice-chair, AI & other emerging technologies committee
- Chair, AI policy subcommittee
- Member, e-signature task force
- U.S. Bar-JPO Liaison Council
- President (2015-2016)
- Houston Intellectual Property Law Association
TECHNICAL
- American Institute of Aeronautics and Astronautics
- Institute of Electrical and Electronics Engineers
- SAE International
COMMUNITY INVOLVEMENT
John founded Comp-U-Dopt® in 2007. As founder, president and member of Comp-U-Dopt's current board of directors, he remains actively involved in the direction and philanthropic activities of the organization. Firm in the belief that every child deserves equal access to education and opportunity, John's vision and passion are a driving force in Comp-U-Dopt's mission of bridging the digital divide and supporting the future of youth in communities across the U.S. and globally. To date, Comp-U-Dopt has distributed over 60,000 computers to underserved youth in over a dozen cities in the U.S.
- George Mason University School of Law, J.D., 1993
- Cornell University, B.S., Electrical Engineering, 1989
RELATED ARTICLES
- WIPO Member States Approve New Treaty on Genetic Resources and Traditional Knowledge
- USPTO Requests Input on the Impact of AI on Prior Art and Level of Knowledge of the Skilled Person in the Art
- Can Inventions Made Using Artificial Intelligence Be Patented?
- USPTO Issues Report by Chief Economist on Statutory Subject Matter Rejections and Impact of the Revised Guidance of January, 2019
- American Axle: The Latest Twist on Patent Eligibility
- Report on January meetings of the Global Dossier Task Force and the Industry Consultation Group
- Joined Parties to an Inter-Partes Review Have Right to Appeal
- Supreme Court Turns Back the Clock on Prior Art in the U.S.
- Japanese Grace Period Will Be Extended to 12 Months
- The Written Description Requirement in the United States
- Thoughts on Printed Matter
- New guidance from the USPTO on patent-eligible subject matter
- Practice Pointer: When is "When"?
- Functional Claim Language: The Indefiniteness Trap
- Cambodia joins the the Hague System
- Errors in Citation of Prior Art by USPTO Examiners
- Trademarks: Madrid Update
- AIPPI 2016 World Congress takes place in Milan, Italy
- U.S. Supreme Court Weighs in on Claim Construction and on Appeals of USPTO Decisions to Institute Inter Partes Reviews
- Quick Look: The First Application of the New Defend Trade Secrets Act
- Quick Look: U.S. Supreme Court to Review Question of Extra-Territorial Infringement
- News Flash: New Federal Trade Secrets Act in the United States
SELECTED PUBLICATIONS
- Co-author, “The Quest for a Bulletproof Patent,” Lexis Nexis (2015)
- “AIPPI: Patent Harmonisation,” World Intellectual Property Review (2015)
- “MedImmune, Inc. v. GenenTech, Inc.: ‘The World Turned Upside Down,'” Corporate Counsel Review, Vol. XXVI, No. 2, (2007) (with Louis Bonham)
- “The Pros and Cons of Drafting Patent Applications in India,” Texas Lawyer, (2005)
- Contributor, “Strategic Drafting of Applications for U.S. Patents by Japanese Companies from an Enforcement Perspective.” IIP Bulletin (Japan) (2003)
- Co-author, “Is Your Opinion Privileged?: Ins and Outs of United States Rules of Privilege Regarding Patent Opinions,” Patent Times Volume 7 (Japan) (2002)
- Co-author, “Reexamination in the United States,” Patent Times Vol.5 (Japan) ( 2002)
- Author, “The Utility of Legal Opinions Regarding Infringement and Validity In The United States,” Patent Times Volume 4 (Japan) (2001)
- “U.S.A. Patent Situation,” Patent Times (Japan) (2001)
SELECTED PRESENTATIONS
- "Computer-implemented and AI-related Inventions" - Summit of The Global Network of National IP Practitioner Associations (2021)
- “Sufficient or not? Sufficiency of disclosure for patent applications involving AI-related inventions,” IPO Annual Meeting (2021)
- “IP policy considerations and strategies for protecting AI,” IPO Annual Meeting (2020) and INTA Annual Meeting (2020)
- “Comments on definitions of categories of AI-related inventions,” presented during the Third Session of the WIPO Conversation on IP and AI (2020)
- Moderator, “An update from USPTO Director Andrei Iancu,” AIPPI Congress, London (2019)
- “Data policy and AI: data protection and free flow of data for developing and utilizing AI technologies, and its implications on the IP system,” WIPO Conversation on IP and AI, Geneva (2019)
- “Patent portfolio challenges in international trade,” INTA Annual Meeting (2019)
- “Conflicting patent applications: efforts toward harmonization,” AIPLA Annual Meeting (2018)
- “Update on IP5 Cooperation,” AIPPI Congress, Cancun (2018)
- “Obtaining strong patents internationally: the U.S. perspective,” China Patent Annual Conference, Beijing (2018)
- “Erroneously-filed elements and parts,” Workshop during 10th session of PCT Working Group, WIPO, Geneva (2018)
- “Patent eligible subject matter: computer implemented inventions and life science inventions,” AIPPI China, Beijing (2017)
- “Patents on computer-implemented inventions: the U.S. perspective,” 6th China IP Symposium, Hangzhou (2017)
- “Grace period and on-sale bar in the United States,” ACPAA, Beijing (2017)
- “Current status of international harmonization,” AIPLA Spring Meeting (2017)
- Moderator, “Patents in a changing world: UPC and Brexit,” AIPPI Baltic Conference, Jurmala (2017)
- “Copyright protection for architectural works: the U.S. perspective,” AIPPI Polish, German, French seminar, Warsaw (2017)
- “Implications of 3D Printing on IP law,” AIPPI Turkey IP law Seminar, Istanbul (2016)
- “Inventorship of Multinational Inventions,” AIPPI Congress, Toronto (2015)
- “Apple v. Samsung,” (with Tammy Terry) AMPPI, Cancun (2014)
- “Software and GUIs: avenues for IP protection in the U.S.,” AIPPI Japan, Tokyo (2014)
- “Asia IP developments,” HIPLA, 29th Annual Institute on IP law, Houston (2013)
- “Enforcement of SEPs: comments on the FRAND issue from the U.S. perspective,” Asia IP Seminar, Beijing (2012)
- “Preliminary injunctions in the United States,” AIPPI Forum & ExCo, Hyderabad (2011)
- “U.S. patent prosecution for the European practitioner: trips, tricks, and pitfalls,” AIPPI Latvia, Riga (2011)
- "The Role of Experts in U.S. IP Litigation," AIPPI Turkey, Istanbul (2011)