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Functionality in Design Patent Prosecution and Litigation

Evaluating Ornamentality vs. Functionality, Overcoming Obviousness Challenges, Leveraging Recent Court Treatment

Recording of a 90-minute premium CLE video webinar with Q&A

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Conducted on Tuesday, February 22, 2022

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Course Materials

This CLE course will guide counsel on functionality in design patent litigation and USPTO prosecution. The panel will examine recent court treatment and how to navigate the issue of functionality in both prosecution and litigation contexts.

Description

By definition, design patents protect ornamental designs. Those designs are often applied to functional articles. But sometimes design protection is denied—or revoked—for designs that are too functional. Though it applies rarely, practitioners should be aware of the functionality doctrine, and how to protect against it or use it to their advantage.

The question of functionality can affect a design’s very eligibility for patent protection, and can influence how a design patent claim is construed in litigation. The Federal Circuit has set forth factors and standards to help evaluate a claimed design’s functionality, but still the “functionality” line remains fuzzy. The lack of clear guidance has left uncertainty surrounding some aspects of design patent prosecution and litigation.

Listen as our authoritative panel examines ornamentality and functionality in design patent law. The panel will discuss recent court treatment, including the use of expert witnesses, and how it has shaped or applied the doctrine of functionality and will suggest strategies to optimize design patent protection in both prosecution and litigation. The panel will also discuss functionality’s sister doctrine, affecting protection for designs that are “hidden in use,” and will contrast the functionality doctrine with the markedly different trademark doctrine of the same name.

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Outline

  1. The ornamentality requirement
  2. The functionality doctrine’s effect on a design’s eligibility for patent protection
  3. The functionality doctrine’s effect on claim construction in litigation
  4. The USPTO’s application of the functionality doctrine during prosecution

Benefits

The panel will review these and other key issues:

  • How are district courts applying the Federal Circuit’s guidance regarding functionality in design patents?
  • How can counsel best position themselves to overcome (or make) a challenge to validity or patentability based on the functionality doctrine?
  • How should functional features of a design influence claim construction?

Faculty

Durkin, Tracy-Gene
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

Gajewski, Daniel
Daniel A. Gajewski

Director
Sterne Kessler Goldstein & Fox

Mr. Gajewski is a director in the firm's Mechanical & Design Practice Group. His work centers on utility...  |  Read More

Rake, Lance
Lance Rake

Professor, School of Architecture & Design
The University of Kansas

Mr. Rake both practices and teaches industrial design. Prior to serving as he taught full-time at Auburn University and...  |  Read More

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