Design Patent Enforcement: Best Practices, Due Diligence Considerations, Strategies During Prosecution, and Maximizing Damages
Recording of a 90-minute premium CLE video webinar with Q&A
This CLE course will guide patent counsel on the enforcement of design patent rights. The panel will examine the key considerations involved in determining whether to sue when there is an alleged infringement. The panel will also offer strategic guidance for enforcement, things to consider during prosecution of a design application, and how to avoid common mistakes when enforcing design patent rights.
Outline
- Deciding to sue
- Whether, when, and where should a suit be filed
- Key due diligence considerations
- Establishing enforcement goals
- Retention of experts
- Venue selection
- Complaint drafting considerations
- Best practices for enforcing design patent rights
- Tips for avoiding common errors
- Maximizing the recovery of total profit damages
- Strategies for effective enforcement
Benefits
The panel will review these and other high profile issues:
- What factors should counsel consider when determining whether, where, and when to file suit?
- What steps should counsel take to avoid common mistakes when prosecuting design applications and enforcing design patent rights?
- What strategies can counsel use for effective enforcement of design patent rights, including maximizing damages recovery?
Faculty
Patricia E. Hong
Founding Member
Plumsea Law Group
Ms. Hong has extensive patent prosecution, litigation and counseling experience. Prior to becoming an attorney, she was... | Read More
Ms. Hong has extensive patent prosecution, litigation and counseling experience. Prior to becoming an attorney, she was a patent examiner with the U.S. Patent and Trademark Office. She is well versed in a variety of technologies and manages a highly-regarded and high volume international industrial design practice. She has served as Chair of the Industrial Design Committee in the IP Section of the ABA in the past and helped facilitate dialog between the U.S. Patent & Trademark Office design examining group and practitioners.
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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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Perry Saidman
Of Counsel
Saidman Design Law Group
Mr. Saidman is a pioneer in the field of design law, successfully representing clients in groundbreaking cases that... | Read More
Mr. Saidman is a pioneer in the field of design law, successfully representing clients in groundbreaking cases that have established the enforceability of design patents in court, cases such as Avia Group Int’l. v. LA Gear where the U.S. Court of Appeals for the Federal Circuit affirmed a summary judgment holding that two design patents on tennis shoes were valid and willfully infringed, entitling the design patent owner to increased damages and attorney fees. During his career Mr. Saidman has prepared, prosecuted and supervised thousands of U.S. design patents. He also has substantial experience in enforcement, having been involved in numerous design patent litigations both as counsel and as an expert witness. He has also penned many amicus curiae briefs in major cases before the Federal Circuit and Supreme Court.
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