Design Patent Claim Construction: Written Description, Ornamentality, Functionality, and More
Drafting Claims to Withstand Scrutiny and Avoiding Claim Limitation Attack
Recording of a 90-minute premium CLE video webinar with Q&A
This CLE course will guide counsel in defining design patent claims. The panel will examine recent court treatment of claim construction issues and offer approaches for design patent claim construction and drafting.
Outline
- Principal considerations
- Portion claiming
- Divisional filings
- Ornamentality and functionality
- Written description
- Court treatment
Benefits
The panel will review these and other key issues:
- Critical considerations for counsel in drafting design patents
- Steps counsel to patent owners should take to factor out functional aspects during claim construction
- Guidance from recent court decisions for design patent claim construction
Faculty
Christopher V. Carani
Shareholder
McAndrews Held & Malloy
Mr. Carani is nationally recognized in the field of design law, regarding the protection and enforcement of aesthetic... | Read More
Mr. Carani is nationally recognized in the field of design law, regarding the protection and enforcement of aesthetic design through the use of design patents, copyrights and trade dress. A registered attorney before the USPTO, Mr. Carani secures and enforces design rights for some of the world’s most design-centric companies and designers. He has litigated design right cases in subject matter areas ranging from footwear and apparel to medical devices and furniture. In 2016, IAM Magazine included Mr. Carani in its IAM 1000 referring to him as one of the U.S.’s “pre-eminent design law experts.” He is currently the Chair of the AIPPI Design Rights Committee and former Chair of both the ABA’s Design Rights Committee and AIPLA Committee on Industrial Designs. Mr. Carani is the Editor-in-Chief of the forthcoming book entitled “Design Rights: Functionality and Scope of Protection.” The book will be published in October of 2017 by publisher Walters Klowers N.V.
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Robert S. Katz
Principal Shareholder
Banner Witcoff
Both nationally and internationally, Mr. Katz is considered one of the premier practitioners in the field of industrial... | Read More
Both nationally and internationally, Mr. Katz is considered one of the premier practitioners in the field of industrial designs, leading the way in the procurement and enforcement of design patents. On behalf of the firm’s clients, he has helped procure more than 10,000 design patents in the U.S. and more than 30,000 design patents/registrations outside the U.S. and has helped to successfully enforce over 100 design patents. Leaders from foreign design patent offices have consulted with him regarding industrial design policies, and he has served as an expert in design patent litigations. Mr. Katz holds leadership positions in several professional organizations, including ABA, AIPLA, FICPI and INTA. He is the past Chair of INTA’s Designs Committee and Vice President of FICPI’s U.S. Section. For the ABA Section of Intellectual Property Law, he currently serves as Liaison to FICPI. He also serves as a member of the Industrial Designs working group of the AIPLA Special Committee on Legislation. Mr. Katz is a former Chair of the Industrial Design Section for both FICPI and AIPLA, and also a member of IDSA and IPO.
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Nathan B. Sabri
Partner
Perkins Coie
Mr. Sabri has litigated patent, copyright, trademark, and trade secret issues on behalf of both plaintiffs and... | Read More
Mr. Sabri has litigated patent, copyright, trademark, and trade secret issues on behalf of both plaintiffs and defendants in federal and state courts at the trial court and appellate levels. In his representation of plaintiffs, his successes include a judgment in excess of $500 million. As counsel for defendants, he has achieved complete defense victories through summary judgment and at trial. Mr. Sabri represents clients in the technology, life sciences, and consumer products industries. He has advised on and litigated matters involving blockchain, touch technology software and hardware, network security, semiconductors, surgical robotics, antibody development, and noninvasive prenatal diagnostics.
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