Navigating 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 webinar with Q&A
This CLE course will provide guidance to counsel on functionality in design patent litigation and in the USPTO prosecution. The panel will examine recent court treatment and how to navigate the issue of functionality given the lack of certainty in both the prosecution and litigation contexts.
- Functionality in design patent law
- The ornamentality requirement
- In design patent applications
- In litigation
- Recent court treatment
- Best practices
The panel will review these and other key issues:
- What are the lessons from recent decisions regarding functionality in design patent applications?
- How can counsel use functional aspects of a design to overcome an obviousness challenge?
- What steps should counsel to patent owners take to factor out functional aspects during claim construction?
Tracy-Gene G. Durkin
Sterne Kessler Goldstein & Fox
Ms. Durkin leads the firm’s Mechanical Patent and Trademark Group. With over 20 years of experience... | Read More
Ms. Durkin leads the firm’s Mechanical Patent and Trademark Group. With over 20 years of experience obtaining and enforcing intellectual property rights, she is sought out by leading consumer product companies for her expertise with utility and design patents, trademarks, and copyrights to create a unique IP protection strategy to meet their individual needs. Ms. Durkin’s experience includes helping clear new products and trademarks for use in the marketplace, selecting appropriate IP protection, and enforcing such protection through mediation, litigation and licensing.Close
Daniel A. Gajewski
Sterne Kessler Goldstein & Fox
Mr. Gajewski focuses on utility and design patent application prosecution, and challenges to issued patents of both... | Read More
Mr. Gajewski focuses on utility and design patent application prosecution, and challenges to issued patents of both types. He specializes in developing a full product-based patent protection strategy. This means working with inventors to home 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
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