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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 program is included with the Strafford CLE Pass. Click for more information.
This program is included with the Strafford All-Access Pass. Click for more information.

Conducted on Tuesday, March 19, 2024

Recorded event now available

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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.


There are certain best practices for the enforcement of design patents to aid in successful enforcement and minimize pitfalls. Some of these issues include due diligence strategies, policing rights, venue considerations, effective use of design experts, seeking the appropriate level of engagement, and recognizing the realistic and appropriate scope of design patents. If a lawsuit is necessary, knowing who, where, and how to bring a lawsuit may be critical. Knowing the risks and costs of initiating a lawsuit should also be considered.

Successful enforcement also requires strategic framing of a design during prosecution of an application, including understanding and appreciation of recent case law decisions relating to a design patent claim's scope and recent trends in the law of obviousness.

Additionally, strategies for litigation also affect remedies and damages. Best practices also impact whether meaningful monetary recovery is possible, and whether and when to file a motion for summary judgment. This can be particularly difficult given the state of flux of the tests being applied for infringer's profits.

Listen as our authoritative panel of patent attorneys discusses the issues above and other key considerations. The panel will offer tips for enforcement strategies and outline guidance on avoiding common mistakes when enforcing design patent rights.



  1. Deciding to sue
    1. Whether, when, and where should a suit be filed
    2. Key due diligence considerations
  2. Establishing enforcement goals
  3. Retention of experts
  4. Venue selection
  5. Complaint drafting considerations
  6. Best practices for enforcing design patent rights
    1. Tips for avoiding common errors
    2. Maximizing the recovery of total profit damages
    3. Strategies for effective enforcement


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?


Hong, Patricia
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

Katz, Robert
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

Saidman, Perry
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

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