Design Patents: Meeting Obviousness and Novelty Requirements
Recording of a 90-minute premium CLE video webinar with Q&A
This CLE course will guide patent counsel in prosecuting and litigating design patent claims. The panel will examine recent USPTO and court treatment of novelty and obviousness issues and offer best practices for prosecuting and defending against obviousness and novelty attacks in litigation.
Outline
- The novelty standard for designs and how it has evolved based on recent rulings from the Federal Circuit
- The obviousness standard for designs and how it has evolved based on recent rulings from the Federal Circuit
- Recent USPTO and district court treatment of novelty and obviousness
- Challenging novelty and obviousness rejections at the USPTO
- Best practices for defending against obviousness and novelty attacks in post-grant proceedings and litigation
Benefits
The panel will review these and other key issues:
- How do the novelty and obviousness requirements for design patents differ from utility patents and each other?
- How has the Federal Circuit and PTAB treated the issue of novelty and obviousness for design patents?
- What are the steps that patent applicants can take to stand up to novelty and obviousness rejections before the USPTO?
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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Tracy-Gene Durkin
Director
Sterne Kessler Goldstein & Fox
Ms. Durkin heads the firm’s Mechanical and Design Patent Group. With nearly 30 years of experience obtaining... | Read More
Ms. Durkin heads the firm’s Mechanical and Design Patent Group. With nearly 30 years of experience obtaining and enforcing IP rights, she has a deep understanding of utility and design patents, trademarks, and copyrights. Ms. Durkin has been an Adjunct Professor at George Mason University Law School and has spoken internationally on topics such as the interplay between design patents and trade dress, and protection of user interface and the user experience. She is currently a Vice Chair of the Industrial Designs Committee of IP Section of the ABA.
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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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