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 for 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
In his practice, Mr. Katz has helped procure over 6,000 design patents in the U.S. and over 18,000 design... | Read More
In his practice, Mr. Katz has helped procure over 6,000 design patents in the U.S. and over 18,000 design patents/registrations outside the U.S., and has helped to successfully enforce over 100 design patents. Mr. Katz has also provided advice and prepared opinions regarding the patentability of inventions, patent infringement, patent validity, and trade secret protection to help clients properly assess the advantages and disadvantages of certain intellectual property and business decisions. He is a frequent speaker on industrial design-related topics and is a professor at George Washington University Law School teaching Design Law and at Georgetown University Law School teaching IP Pretrial Litigation Skills. Mr. Katz currently serves as Treasurer of FICPI's U.S. Section and as Vice Chair of INTA's Design Rights Committee.
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Nathan B. Sabri
Partner
Morrison & Foerster
Mr. Sabri practices in the firm’s Intellectual Property Group. He focuses his practice on litigation, and has... | Read More
Mr. Sabri practices in the firm’s Intellectual Property Group. He focuses his practice on litigation, and has experience litigating in federal court and state court as well as managing global strategy in cases spanning multiple jurisdictions. His matters have included advice and patent litigation involving subject matters such as antibody development, noninvasive prenatal diagnostics, surgical robotics, smartphones, email software, and graphical user interfaces. Mr. Sabri was a member of the in-court trial team in high-profile smartphone cases leading to three jury verdicts totaling over $1 billion, among other matters.
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