Design Patent Claims Amendment, Reissue, Validity Challenges: Recent Court Treatment and USPTO Guidance

Recording of a 90-minute premium CLE video webinar with Q&A


Conducted on Tuesday, June 22, 2021

Recorded event now available

or call 1-800-926-7926
Course Materials

This CLE course will guide patent counsel on design patents and amending claims, reissue, and validity challenges. The panel will examine drawing identity, consistency, and written description for amended claims. The panel will also discuss the invalidating of claims and the associated challenges. The panel will review recent cases and the corresponding lessons as well as offer best practices.

Description

Recent PTAB decisions have addressed drawing amendments in design patent applications, examining the line between permissible and impermissible drawing amendments during prosecution. The decisions provide important guidance on preparing design patent applications.

The written description requirement limits an applicant's ability to broaden design patent claims after filing by changing solid lines to broken lines. In Ex parte Bologna, the PTAB did not allow an amendment where it felt the conversion of solid lines to broken lines also created a new claim boundary. However, the PTAB came to a different result in Ex parte Giza, determining that converting a solid line edge to a broken line was acceptable. Additional decisions help find the balance between permissible and impermissible drawing amendments, including for cases directed to Graphical User Interfaces and Icons.

Similar to utility patents, patent counsel use post-grant proceedings to challenge design patents. While design patents have been more difficult to invalidate, it is not impossible. For example, successful challenges have been made when prior art designs are similar enough for anticipation and obviousness challenges.

Listen as our authoritative panel of patent attorneys examines design patents and amending claims, reissue, and validity challenges. The panel will discuss drawing identity, consistency, and written description for amended claims. The panel will also discuss the invalidating of claims and the associated challenges. The panel will review recent cases and the corresponding lessons as well as offer best practices.

READ MORE

Outline

  1. Amending design patent claims during prosecution
    1. Drawing
    2. Consistency
    3. Written description
  2. Design patent claim amendment through reissue
  3. Validity challenges to design patent claims
    1. Obviousness
    2. Showing anticipation of design patents

Benefits

The panel will review these and other key issues:

  • What do recent PTAB decisions in ex parte appeals mean for design patent amendments?
  • How can reissue applications be used effectively to amend design patent claims after issuance?
  • What guidance do PTAB decisions in post-grant validity challenges provide?
  • What practical considerations should counsel keep in mind when using post-grant proceedings to challenge design patents?

Faculty

Ferrill. Elizabeth
Elizabeth D. Ferrill

Partner
Finnegan Henderson Farabow Garrett & Dunner

Ms. Ferrill focuses her practice on all aspects of design patents, including prosecution, counseling, and litigation....  |  Read More

Raynal, George
George Raynal

Principal
Saidman DesignLaw Group

Mr. Raynal is an experienced patent attorney and his practice covers all aspects of design law, with a particular focus...  |  Read More

Stockton, Richard
Richard S. Stockton

Attorney
Banner Witcoff

Mr. Stockton advises clients on all aspects of intellectual property law, including tactical and strategic counseling,...  |  Read More

Access Anytime, Anywhere

Strafford will process CLE credit for one person on each recording. All formats include course handouts.

To find out which recorded format will provide the best CLE option, select your state:

CLE On-Demand Video

Download