International Design Patent Protection: Developing a Global IP Strategy

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


Conducted on Tuesday, September 10, 2019

Recorded event now available

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Program Materials

This CLE webinar will guide patent counsel on protecting design patents in the global marketplace. The panel will discuss the critical differences between the patent laws in the U.S. and other jurisdictions and will offer best practices for U.S. companies and counsel to develop a global intellectual property (IP) strategy.

Description

U.S. companies are increasingly recognizing the need to protect their intellectual property (IP) across the globe. Companies must carefully consider not only where to seek protection, but also what type of protection to seek; factoring in considerations like where products are manufactured, where they are sold, where competitors are, and the availability of the desired rights in the potential jurisdictions.

Design rights are becoming an essential piece of the global IP strategy for many U.S. companies. Therefore, it is critical for counsel to understand the nuances between patent laws and requirements of the US and of other countries in order to best protect their client’s designs.

While attempts are being made to harmonize design protection globally, for now, each jurisdiction has its own unique requirements that must be factored into a priority US filing. For example, timing is critical as many countries, including China generally require “absolute novelty” such that patent applications must be filed prior to disclosing a design anywhere in the world. Similarly, other countries, like Japan for example, require a specified number of views of the design. Some countries allow the protection of partial designs, others do not.

Listen as our authoritative panel of patent attorneys provides guidance on protecting design rights in the global marketplace. The panel will discuss the key differences between the patent laws in the U.S. and other countries that must be understood when developing a strong global IP strategy. The panel will offer best practices for U.S. companies on developing a global strategy.

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Outline

  1. Protecting designs in the global marketplace
    1. Determining whether and when to seek protection
    2. Determining where a design can and should be protected
    3. Timing for filing for protection
    4. Limitations on design rights
  2. Compare/contrast U.S. design patent law with other jurisdictions and efforts being made to harmonize processes and procedures
    1. China
    2. EU
    3. Japan
    4. Hague Agreement
    5. Others
  3. Global enforcement of design rights
  4. Practical guidance for establishing a global design strategy

Benefits

The panel will review these and other high priority issues:

  • What are the considerations for patent counsel drafting U.S. applications when global patent protection is anticipated or desired?
  • What are the significant differences between the U.S. and other jurisdictions' approaches to design patent applications?
  • What steps should counsel take when drafting U.S. design patent applications to maximize protection around the world?

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

David R. Gerk
David R. Gerk
Patent Attorney, Office of Policy and International Affairs
U.S. Patent and Trademark Office

Mr. Gerk advises the Under Secretary of Commerce for Intellectual Property and Director of the U.S. Patent and...  |  Read More

Nowak, Sandra
Sandra K. Nowak
Assistant Chief Intellectual Property Counsel
3M Innovative Properties Company

Ms. Nowak counsels 3M’s Consumer Business Group which makes and sells iconic consumer products sold under some of...  |  Read More

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