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
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.
- The ornamentality requirement
- The functionality doctrine’s effect on a design’s eligibility for patent protection
- The functionality doctrine’s effect on claim construction in litigation
- The USPTO’s application of the functionality doctrine during prosecution
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?
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.Close
Daniel A. Gajewski
Sterne Kessler Goldstein & Fox
Mr. Gajewski is a director in the firm's Mechanical & Design Practice Group. His work centers on utility... | Read More
Mr. Gajewski is a director in the firm's Mechanical & Design Practice Group. His work centers on utility and design patent preparation and prosecution, as well as challenges to issued patents of both types. The look--or industrial design--of a new product can be just as valuable as its utility, particularly in keeping knock-off products off the market. He specializes in developing a full product-based patent protection strategy. This means working with inventors to hone in on a new product’s innovative features, whether they be structural or aesthetic. Based on this, he prepares design and utility patent application strategies that intermesh, working to ensure that neither application is drafted or prosecuted in a way that could limit the scope of the other.Close
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
Mr. Rake both practices and teaches industrial design. Prior to serving as he taught full-time at Auburn University and UNITEC (formerly Carrington Technical Institute) in Auckland, New Zealand. He has also taught in Stockholm and England. He has designed commercial products, consumer products, interiors, graphics, packaging, and exhibits. He serves as an expert witness in design patent infringement and product liability cases.Close