Design Patent Claim Construction: Navigating Written Description, Ornamentality, Functionality and More

Strafford Live CLE Webinar

11/17/2016 01:00 p.m. - 02:30 p.m.

Patent Counseling + Prosecution, Intellectual Property Litigation, and Patent Litigation

Nathan B. Sabri

Nathan B. Sabri

Speaking Engagement

By definition, design patents protect ornamental designs. The standard for determining whether a design or design feature is ornamental—and what effect that determination has—remains unsettled. Unlike utility patents, design patent applications are not published when the applicant files directly with the USPTO. Further, the application’s prosecution history is not publicly available until the application issues unless it is a divisional or continuation application. Consequently, less information is available about design patent applications until the applications issue.

Counsel must find the proper balance when claiming designs. Applicants will often use portion claiming techniques, which helps protect the innovative portions of a design while making it more difficult to "design around" the patent. However, it may also make it harder to get the patent because it is more susceptible to the prior art.

In light of recent design patent decisions, including the Federal Circuit’s decision in Sport Dimension (2016), counsel should consider filing applications with multiple embodiments or filing multiple applications for a design concept with different degrees of scope.

Listen as our authoritative panel of patent attorneys examines key considerations when defining and drafting design patent claims and discusses how the courts are treating claim construction issues for design patents.

Outline

  1. Key considerations
    1. Portion claiming
    2. Divisional filings
    3. Ornamentality and functionality
    4. Written description
  2. Court treatment
    1. Sport Dimension Inc. v. The Coleman Co. Inc. (Fed. Cir. 2016)
    2. Ethicon Endo-Surgery Inc. v. Covidien Inc. (Fed. Cir. 2015)
    3. Samsung Electronics Co. Ltd. v. Apple Inc.

Speakers

Christopher V. Carani, Shareholder
McAndrews Held & Malloy, Chicago

Robert S. Katz, Esq.
Banner & Witcoff, Washington, D.C.

Nathan B. Sabri
Morrison & Foerster, San Francisco

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