Design Patents: Meeting Obviousness and Novelty Requirements

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

Thursday, October 5, 2017 (in 13 days)
1:00pm-2:30pm EDT, 10:00am-11:30am PDT

This CLE webinar will provide guidance to patent counsel prosecuting and litigating design patent claims. The panel will examine recent USPTO and court treatment of novelty and obviousness issues and offer best practices for prosecuting and defending against obviousness and novelty attacks in litigation.


While many of the same requirements govern patentability of utility inventions and designs, the application of those requirements in these two contexts can be quite different. Like utility inventions, designs must be novel and not obvious, but recent ambiguous rulings from the USPTO and courts have blurred the distinction between the two. As a result, it can be seemingly easier to prove lack of novelty based on a single reference that is not identical to the claimed design than it can be to prove that a design is obvious.

Listen as our authoritative panel of patent attorneys examines the current novelty and obviousness standards for design patents, and how the case law in these areas has developed. The panel will discuss steps that companies and counsel can take to challenge novelty and obviousness rejections in prosecution, and offer best practices for defending against such attacks in post grant proceedings at the USPTO and in court.


  1. The novelty standard for designs and how it has evolved based on recent rulings from the Federal Circuit
  2. The obviousness standard for designs and how it has evolved based on recent rulings from the Federal Circuit
  3. Recent USPTO and district court treatment of novelty and obviousness
  4. Challenging novelty and obviousness rejections at the USPTO
  5. Best practices for defending against obviousness and novelty attacks in post grant proceedings and in litigation


The panel will review these and other key issues:

  • How do the novelty and obviousness requirements for design patents differ from utility patents and from each other?
  • How has the Federal Circuit and PTAB treated the issue of novelty and obviousness for design patents?
  • What are the steps that patent applicants can take to stand up to novelty and obviousness rejections before the USPTO?


Christopher V. Carani, Shareholder
McAndrews Held & Malloy, Chicago

Mr. Carani is nationally recognized in the field of design law, regarding the protection and enforcement of aesthetic design through the use of design patents, copyrights and trade dress. A registered attorney before the USPTO, Mr. Carani secures and enforces design rights for some of the world’s most design-centric companies and designers. He has litigated design right cases in subject matter areas ranging from footwear and apparel to medical devices and furniture. In 2016, IAM Magazine included Mr. Carani in its IAM 1000 referring to him as one of the U.S.’s “pre-eminent design law experts.” He is currently the Chair of the AIPPI Design Rights Committee and former Chair of both the ABA’s Design Rights Committee and AIPLA Committee on Industrial Designs. Mr. Carani is the Editor-in-Chief of the forthcoming book entitled “Design Rights: Functionality and Scope of Protection.” The book will be published in October of 2017 by publisher Walters Klowers N.V. 

Tracy-Gene Durkin, Director
Sterne Kessler Goldstein & Fox, Washington, D.C.

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.

Robert S. Katz, Esq.
Banner & Witcoff, Washington, D.C.

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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Patent Law Advisory Board

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David S. Bloch


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Feinberg Day Alberti & Thompson

Anthony J. Fitzpatrick


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