Design Patent Claims Amendment, Reissue, Validity Challenges: Recent Court Treatment and USPTO Guidance
Recording of a 90-minute premium CLE video webinar with Q&A
This CLE course will guide patent counsel on design patents and amending claims, reissue, and validity challenges. The panel will examine drawing identity, consistency, and written description for amended claims. The panel will also discuss the invalidating of claims and the associated challenges. The panel will review recent cases and the corresponding lessons as well as offer best practices.
Outline
- Amending design patent claims during prosecution
- Drawing
- Consistency
- Written description
- Design patent claim amendment through reissue
- Validity challenges to design patent claims
- Obviousness
- Showing anticipation of design patents
- Potential impact of LKQ Corp. v. GM Global Technology Operations, LLC petition for en banc review by Federal Circuit
Benefits
The panel will review these and other key issues:
- What do recent PTAB decisions in ex parte appeals mean for design patent amendments?
- How can reissue applications be used effectively to amend design patent claims after issuance?
- What guidance do PTAB decisions in post-grant validity challenges provide?
- What practical considerations should counsel keep in mind when using post-grant proceedings to challenge design patents?
Faculty
Elizabeth D. Ferrill
Partner
Finnegan Henderson Farabow Garrett & Dunner
Ms. Ferrill focuses her practice on all aspects of design patents, including prosecution, counseling, and litigation.... | Read More
Ms. Ferrill focuses her practice on all aspects of design patents, including prosecution, counseling, and litigation. She also has extensive experience in utility patent litigation in the areas of software- and hardware-related technologies. She counsels clients who hold design patents as well as those accused of infringement. She has experience with consumer and industrial products, graphical user interfaces and icons. She has prosecuted families of design patents before the USPTO, directed prosecution in foreign countries, and argued appeals before the PTAB.
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George Raynal
Principal
Saidman DesignLaw Group
Mr. Raynal is an experienced patent attorney and his practice covers all aspects of design law, with a particular focus... | Read More
Mr. Raynal is an experienced patent attorney and his practice covers all aspects of design law, with a particular focus on U.S. and international design patent procurement and enforcement. He manages significant design rights portfolios for major electronics, automobile and heavy equipment manufacturers, helping them obtain robust design protection and enforce their rights against knock-offs. He is also engaged in a variety of copyright, trademark and contract matters, including litigation and licensing. He is the vice-chair of the Industrial Design Committees of the AIPLA and the ABA-IPL, a member of the IPO Design Committee and a member of the INTA Brands and Innovation committee. He is also a Clinical Adjunct Professor in the Intellectual Property Law Clinic at the University of Maryland Francis King Carey School of Law.
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Richard S. Stockton
Attorney
Banner Witcoff
Mr. Stockton advises clients on all aspects of intellectual property law, including tactical and strategic counseling,... | Read More
Mr. Stockton advises clients on all aspects of intellectual property law, including tactical and strategic counseling, portfolio management, litigation and prosecution matters. His achievements include: prosecuting thousands of U.S. design patent applications before more than 100 USPTO examiners and managing thousands of foreign design applications in more than 100 jurisdictions and 140 countries; obtaining thousands of U.S. utility patents, trademark registrations, copyright registrations and foreign counterparts (through foreign counsel); serving as counsel of record in dozens of patent, trademark and copyright litigations, and assisting with many more IP litigations; litigating IPR petitions at the USPTO; prevailing in dozens of domain name arbitrations, and negotiating numerous no-decision settlements and acquisitions; and managing multiple IP portfolios with thousands of properties worldwide, coordinating the transfer of a >10,000 property portfolio and supervising buyer/seller IP due diligence in large acquisition and IPO contexts.
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