Patent Design Arounds for Utility and Design Patents
Minimizing Infringement Risk, Reducing Likelihood of Competitor Design Arounds, Maximizing Chances of Covering Competitors’ Attempted Design Arounds When Drafting an Application
A live 90-minute premium CLE video webinar with interactive Q&A
This CLE course will guide patent counsel on leveraging design arounds to reduce the risk of patent infringement. The panel will also discuss what counsel can do when drafting patent applications to minimize competitors' likelihood of designing around the patent, as well as maximizing chances to cover competitors' design arounds.
Outline
- Using design arounds to minimize infringement risk
- Specifications
- Prior art
- What can be altered/tweaked?
- Are there elements that can be eliminated?
- Continuation applications pending?
- Costs to license?
- Drafting patents to reduce the likelihood of another party designing around the patent
- Drafting patents to maximize the possibility of covering competitors' attempted design arounds
Benefits
The panel will review these and other key issues:
- What factors should patent counsel consider when seeking a design around of a valid patent?
- What steps can patent counsel take when preparing a patent application to reduce the likelihood of design arounds and increase the possibility of covering competitors' attempted design arounds?
Faculty
Jason A. Houdek
Partner
Taft Stettinius & Hollister
Mr. Houdek focuses his practice on patent and other intellectual property matters. He has litigated patent and... | Read More
Mr. Houdek focuses his practice on patent and other intellectual property matters. He has litigated patent and trade secret disputes in federal court and challenged and defended patent assets in administrative proceedings before the U.S. Patent and Trademark Office and foreign patent offices. His practice has spanned a range of technologies, including wireless communication protocols and equipment, cryptographic security methods and systems, industrial automation and control systems, self-driving vehicles, power distribution systems, motor/generator and drive systems, clean diesel technologies, gas turbine engine technologies, vehicle control systems, ophthalmic sensor systems, medical devices, tissue engineering and satellite television systems, among others. Mr. Houdek helps clients avoid and mitigate the risk of patent assertions by leading FTO investigations, guiding design-around efforts, and building non-infringement and invalidity positions against competitive patent portfolios. He assists clients in obtaining patents with an eye toward creating strategic intellectual property assets and enhancing his clients’ offensive patent capabilities. Mr. Houdek is experienced in advising clients on patent and other IP issues in the context of M&As and project financing. He also has experience in obtaining trademarks and copyrights and in agreement drafting and licensing negotiation.
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Perry Saidman
Of Counsel
Saidman Design Law Group
Mr. Saidman is a pioneer in the field of design law, successfully representing clients in groundbreaking cases that... | Read More
Mr. Saidman is a pioneer in the field of design law, successfully representing clients in groundbreaking cases that have established the enforceability of design patents in court, cases such as Avia Group Int’l. v. LA Gear where the U.S. Court of Appeals for the Federal Circuit affirmed a summary judgment holding that two design patents on tennis shoes were valid and willfully infringed, entitling the design patent owner to increased damages and attorney fees. During his career Mr. Saidman has prepared, prosecuted and supervised thousands of U.S. design patents. He also has substantial experience in enforcement, having been involved in numerous design patent litigations both as counsel and as an expert witness. He has also penned many amicus curiae briefs in major cases before the Federal Circuit and Supreme Court.
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Gary B. Solomon
Partner
Foley & Lardner
Mr. Solomon is a member of the firm’s Electronics Practice who focuses on patent preparation, prosecution, and... | Read More
Mr. Solomon is a member of the firm’s Electronics Practice who focuses on patent preparation, prosecution, and the monetization and protection of these intellectual property assets. He has years of experience developing large and strategic patent portfolios for his clients, as well as conducting IP due diligence; drafting legal opinions relating to utility and design patents, including patentability, non-infringement, freedom-to-operate, invalidity and design-around opinions; and participating in a number of IP transactions, including acquisition, funding, and company sales. He has created and implemented cost-effective brand enforcement programs for enforcing trademarks, copyrights, and patents. Mr. Solomon has experience in the areas of communications systems, automatic control systems, power systems, robotics, microelectronics, industrial equipment, imaging systems, medical devices, semiconductor devices, telecommunications, software, mechanical devices, and many other technologies.
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