Design Patent Enforcement: Best Practices, Due Diligence Considerations, Strategies During Prosecution, 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
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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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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