Design Patents and IPR: Challenging and Defending Validity at the PTAB
Navigating Prior Art and Obviousness Analyses, Leveraging IPR for Design Patents
Recording of a 90-minute premium CLE video webinar with Q&A
This CLE course will provide guidance to patent counsel on navigating the inter partes review (IPR) process for challenging design patents. The panel will provide insight into the issues the PTAB considers essential when determining whether to institute IPRs of design patents. The panel will also discuss the prior art and obviousness analyses.
Outline
- Advantages and limitations of IPR for design patents
- Issues the PTAB considers critical when determining whether to institute IPRs of design patents
- Prior art analysis
- Obviousness analysis
- Guidance for navigating the IPR process
Benefits
The panel will review these and other key issues:
- What are the advantages of IPR for design patents? What are the limitations?
- What challenges arise in AIA proceedings as a result of the unique characteristics of design patents? What steps can counsel take to overcome these challenges?
- What is the test to determine obviousness for design patents in AIA proceedings?
Faculty
Tracy-Gene Durkin
Director
Sterne Kessler Goldstein & Fox
Ms. Durkin heads the firm’s Mechanical and Design Patent Group. With nearly 30 years of experience obtaining... | Read More
Ms. Durkin heads the firm’s Mechanical and Design Patent Group. With nearly 30 years of experience obtaining and enforcing IP rights, she has a deep understanding of utility and design patents, trademarks, and copyrights. Ms. Durkin has been an Adjunct Professor at George Mason University Law School and has spoken internationally on topics such as the interplay between design patents and trade dress, and protection of user interface and the user experience. She is currently a Vice Chair of the Industrial Designs Committee of IP Section of the ABA.
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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
Ms. Ferrill focuses her practice on all aspects of design patents, including prosecution, counseling, and litigation. She also has extensive experience in utility patent litigation in the areas of software- and hardware-related technologies. She counsels clients who hold design patents as well as those accused of infringement. She has experience with consumer and industrial products, graphical user interfaces and icons. She has prosecuted families of design patents before the USPTO, directed prosecution in foreign countries, and argued appeals before the PTAB.
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Kelly S. Horn
Attorney
Finnegan Henderson Farabow Garrett & Dunner
Ms. Horn combines her extensive knowledge of Patent Office practice with her experience as a patent litigator to help... | Read More
Ms. Horn combines her extensive knowledge of Patent Office practice with her experience as a patent litigator to help clients build, assert, and defend strategic portfolios of utility and design patents. She helps clients with patent prosecution, non-infringement and invalidity analyses, written opinions, and pre-litigation diligence as a patent agent upon registration before the U.S. Patent and Trademark Office (USPTO). She maintains an active patent prosecution and counseling practice, assisting clients with building strategic portfolios of utility and design patents worldwide. She helps clients assert and defend patent infringement claims before the U.S. International Trade Commission (ITC) and in U.S. district courts. Her technical experience spans a broad range of technologies.
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