Design Patent Inventorship and Derivation Proceedings: Determination, Timing, Scope, International Filings

A live 90-minute premium CLE video webinar with interactive Q&A

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Thursday, January 12, 2023

1:00pm-2:30pm EST, 10:00am-11:30am PST

Early Registration Discount Deadline, Friday, December 16, 2022

or call 1-800-926-7926

This CLE webinar will guide patent counsel on design patent inventorship and correcting inventorship, during prosecution, after grant, through reissue, litigation, or derivation. The panel will discuss determining inventorship, naming the applicant, and managing procedures related to inventorship, ownership and power of attorney. The panel will also examine derivation proceedings and the key considerations patent counsel should keep in mind. The panel will offer best practices for inventorship and derivation proceedings.

Description

Under 35 USC section 171, design patents may be obtained by whoever invents any new, original and ornamental design for an article of manufacture. When determining inventorship, it is important to know which individual or individuals conceived the claimed invention. Design patent counsel must determine which person(s) is an inventor and how each contributed. It is critical for design patent counsel to properly conduct an inventorship determination to avoid complications that result from incorrect or incomplete identification and determination.

Petitions for patent derivation may be filed for design patent applications to determine “whether (1) an inventor named in an earlier application derived the claimed invention from an inventor named in the petitioner’s application; and (2) the earlier application claiming such invention was filed without authorization.”

Patent counsel and applicants should carefully consider timing and scope when determining whether to file a derivation proceeding and when publication of a design patent takes place.

Listen as our authoritative panel of patent attorneys examines design patent inventorship and correcting inventorship, during prosecution, after grant, through reissue, litigation, or derivation. The panel will discuss determining inventorship, naming the applicant, and managing procedures related to inventorship, ownership and power of attorney. The panel will also examine derivation proceedings and the key considerations patent counsel should keep in mind. The panel will offer best practices for inventorship and derivation proceedings.

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Outline

  1. Design patent inventorship, applicant ownership and Power of Attorney
    1. Determining Inventorship
    2. Foreign Filing License
    3. Applicant Ownership
  2. Correcting Inventorship
    1. Patent Office
    2. Derivation
    3. Litigation
    4. Emerging Issues
  3. International Considerations
    1. Assignment of Rights
    2. Priority Documents
    3. Inventorship for Alternative Designs Created by Counsel
    4. Foreign Filing License
    5. Hague Publication

Benefits

The panel will review these and other key issues:

  • What information does counsel need to determine inventorship for a design patent?
  • What key considerations should counsel weigh when determining whether to file a derivation petition?
  • What risks are involved when publishing early with an international design patent filing?

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

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Early Discount (through 12/16/22)

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