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

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Conducted on Thursday, March 24, 2022

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Course Materials

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.


By definition, design patents protect ornamental designs. The standard remains unsettled for determining whether a design or design feature is merely decorative--and the impact of that determination. Unlike utility patents, design patent applications are not published when the applicant files directly with the USPTO.

Further, the application's prosecution history is not publicly available until the application issues unless it is a divisional or continuation application. Consequently, less information is available about design patent applications until the issue of the application.

Counsel must find the proper balance when claiming designs. Applicants will often use portion-claiming techniques, which helps protect the innovative portions of a design while making it more difficult to "design around" the patent. However, it may also make it harder to get the patent because it is more susceptible to the prior art.

In light of recent design patent decisions, counsel should consider filing applications with multiple embodiments or filing multiple applications for a design concept with different degrees of scope.

Listen as our authoritative panel of patent attorneys examines critical considerations when defining and drafting design patent claims and discusses how the courts treat claim construction issues for design patents.



  1. Principal considerations
    1. Portion claiming
    2. Divisional filings
    3. Ornamentality and functionality
    4. Written description
  2. Court treatment


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


Carani, Christopher
Christopher V. Carani

McAndrews Held & Malloy

Mr. Carani is nationally recognized in the field of design law, regarding the protection and enforcement of aesthetic...  |  Read More

Katz, Robert
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

Sabri, Nathan
Nathan B. Sabri

Morrison & Foerster

Mr. Sabri practices in the firm’s Intellectual Property Group. He focuses his practice on litigation, and has...  |  Read More

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