Design Patents: Modernizing an Old Property Interest

November 22, 2013

OSuffolk University Law Schooln Friday, November 22, 2013, Susan Glovsky, Principal, presented "Design Patents:  Modernizing an Old Property Interest" at Suffolk University Law School.

Design is seen by some as the nexus for all other types of IP.  According to David Kappos, “The discipline of design—the ‘form’ that makes ‘function’ accessible—has never been more in demand. Design is driving new business strategies and success as never before and reshaping markets”.  Design Is the New Frontier of Intellectual Property, National L. J. , May 8, 2013.  Adding to the general importance of design to all IP lawyers, is the recent litigation that has yielded major verdicts.  It is likely that more litigation will develop and IP litigators should take note.

"Design Patents: Modernizing an Old Property Interest" features not only two USPTO officials who will apprise you of the USPTO process and procedure, but also national experts who have litigated major cases, including the recent case between Apple and Samsung.  They will share their insights and strategies for success.  Don’t miss this opportunity to learn from these leaders in the IP design world.

Attend and Learn

  • The PTO’s perspective on prosecution of design patents
  • How the recently enacted Hague Treaty will affect design patent practice
  • How to interpret and apply design patent law
  • How to handle design patent litigation including damages and functionality
  • The overlapping protections under design patent, trade dress and other IP law
     

Presenters

  • Professor Andrew Beckerman-Rodau, Chair 
    Co-Director of IP Law Concentration, Suffolk University Law School
  • Christopher V. Carani, Esq., Shareholder  
    McAndrews Held & Malloy, Ltd., Chicago, IL
  • Jong K. Choi, Esq.  
    Samsung Electronics, Menlo Park, CA
  • Gary Dewar, Esq., Senior IP Counsel  
    New Balance Athletic Shoes, Inc.
  • David R. Gerk, Esq.  
    United States Patents and Trademark Office, Alexandria, VA
  • Susan G. L. Glovsky, Esq.
    Hamilton Brook Smith Reynolds, Boston, MA
  • Philip Green, CPA, ABV, ASA  
    Hoffman Alvary & Company LLC, Newton, MA
  • Brian Hanlon, Esq.  
    Director, Office of Patent Legal Administration
    U.S. Patent and Trademark Office 
  • Perry J. Saidman, Esq., Principal  
    Saidman DesignLaw Group, LLC, Silver Spring, MD
  • Michael T. Zeller, Esq., Partner  
    Quinn Emanuel Urquhart & Sullivan, LLP, Los Angeles, CA
     

Agenda

 

9:00 - 9:10am
Welcome and Introductions - Professor Andrew Beckerman-Rodau

9:10 - 9:25am
Background - Professor Andrew Beckerman-Rodau

  • History of Design Patents
  • When First U.S. Design Patent Statute Was Enacted
  • Purpose of Design Patents
  • Comparison of Utility Patents to Design Patents
  • Brief Overview of Requirements for a Design Patent
  • Protection of Designs outside the U.S. – Industrial Design Protection

9:25 - 10:25am
Design Patents at the PTO and Hague Treaty Rulemaking - David R. Gerk and Brian E. Hanlon, USPTO - Gary Deward, Commentary

  • PTO Prosecution Statistics for Design Applications
  • Rocket Docket for Design Applications
  • Application Requirements
  • Scope of Examination at PTO
  • Hague Treaty Notice of Proposed Rulemaking

10:25 - 10:40am
Q & A

10:40 - 10:55am
Networking Break

10:55 - 11:40am
Scope of Design Patents - Christopher V. Carani

  • Statutory requirements for design patents
  • Judicial/USPTO interpretation of novelty, non-obviousness, ornamentality and "article of manufacture" requirements for design patents
  • Matter of concern doctrine
  • 35 U.S.C. 112 and its application to design patents
     

11:40 - 11:50am
Q & A

11:50am - 12:35pm
Design Patent Overlap with Other Bodies of IP Law - Moderator: Professor Andrew Beckerman-Rodau - Panel: Christopher V. Carani, Esq. and Perry Saidman, Esq.

  • Concurrent and consecutive rights via design patent, trademark, trade dress and copyright law
  • Comparison of rights under design patent law and overlapping bodies of law
  • Should overlapping bodies of law be allowed?

12:35 - 12:45pm
Q & A

12:45 - 2:00pm
Lunch and Presentation
“Use of Design Patents to Protect Products in the Athletic Footwear and Apparel Industry” - Gary Dewar, Senior IP Counsel, New Balance Athletic Shoes, Inc.

2:00 - 3:00pm
Litigating Design Patent Infringement - Moderator: Susan Glovsky, Esq. - Panelists: Perry Saidman, Esq. and Michael Zeller, Esq.

  • 1871 Design Patent Infringement Test of Gorham v. White as Modified by 2008 Federal Circuit en banc Decision of Egyptian Goddess
  • Court Decisions Since Egyptian Goddess - Where Are We Now?
  • Litigating design patent damages when complex devices are involved
  • Functionality in infringement analysis, especially with today’s technology products
     

3:00 - 4:00pm
Ornamental v. Functional Issues - Moderator: Jong Choi, Esq. - Panelists: Christopher Carani, Esq., Susan Glovsky, Esq. and Perry Saidman, Esq.

  • Functionality doctrine in design patent validity and infringement contexts
  • Functional features vs. functional overall designs (Richardson v. Stanley Works)
  • What does “functional” mean in design patent law, and how should it be evaluated
  • Analogous doctrines in trade dress and copyright law
     

4:00 - 4:30pm
Design Patent Damages - Susan Glovsky, Esq. and Philip Green

  • History of Design Patent Damages
  • Lost Profits, Reasonable Royalties and Unjust Enrichment Damages --Which Applies When
  • Types of Documents and Other Information to Support Damages
  • Apportionment of Damages to Patented Design versus Other Factors
  • Contrast of Design Patent Damages with Damages for Infringement of Other Intellectual Property
  • Limitations on Recovery of Damages -- no Double Dipping
     

4:30 - 5:00pm
Q & A and Conclude

About

November 22, 2013

OSuffolk University Law Schooln Friday, November 22, 2013, Susan Glovsky, Principal, presented "Design Patents:  Modernizing an Old Property Interest" at Suffolk University Law School.

Design is seen by some as the nexus for all other types of IP.  According to David Kappos, “The discipline of design—the ‘form’ that makes ‘function’ accessible—has never been more in demand. Design is driving new business strategies and success as never before and reshaping markets”.  Design Is the New Frontier of Intellectual Property, National L. J. , May 8, 2013.  Adding to the general importance of design to all IP lawyers, is the recent litigation that has yielded major verdicts.  It is likely that more litigation will develop and IP litigators should take note.

"Design Patents: Modernizing an Old Property Interest" features not only two USPTO officials who will apprise you of the USPTO process and procedure, but also national experts who have litigated major cases, including the recent case between Apple and Samsung.  They will share their insights and strategies for success.  Don’t miss this opportunity to learn from these leaders in the IP design world.

Attend and Learn

  • The PTO’s perspective on prosecution of design patents
  • How the recently enacted Hague Treaty will affect design patent practice
  • How to interpret and apply design patent law
  • How to handle design patent litigation including damages and functionality
  • The overlapping protections under design patent, trade dress and other IP law
     

Presenters

  • Professor Andrew Beckerman-Rodau, Chair 
    Co-Director of IP Law Concentration, Suffolk University Law School
  • Christopher V. Carani, Esq., Shareholder  
    McAndrews Held & Malloy, Ltd., Chicago, IL
  • Jong K. Choi, Esq.  
    Samsung Electronics, Menlo Park, CA
  • Gary Dewar, Esq., Senior IP Counsel  
    New Balance Athletic Shoes, Inc.
  • David R. Gerk, Esq.  
    United States Patents and Trademark Office, Alexandria, VA
  • Susan G. L. Glovsky, Esq.
    Hamilton Brook Smith Reynolds, Boston, MA
  • Philip Green, CPA, ABV, ASA  
    Hoffman Alvary & Company LLC, Newton, MA
  • Brian Hanlon, Esq.  
    Director, Office of Patent Legal Administration
    U.S. Patent and Trademark Office 
  • Perry J. Saidman, Esq., Principal  
    Saidman DesignLaw Group, LLC, Silver Spring, MD
  • Michael T. Zeller, Esq., Partner  
    Quinn Emanuel Urquhart & Sullivan, LLP, Los Angeles, CA
     

Agenda

 

9:00 - 9:10am
Welcome and Introductions - Professor Andrew Beckerman-Rodau

9:10 - 9:25am
Background - Professor Andrew Beckerman-Rodau

  • History of Design Patents
  • When First U.S. Design Patent Statute Was Enacted
  • Purpose of Design Patents
  • Comparison of Utility Patents to Design Patents
  • Brief Overview of Requirements for a Design Patent
  • Protection of Designs outside the U.S. – Industrial Design Protection

9:25 - 10:25am
Design Patents at the PTO and Hague Treaty Rulemaking - David R. Gerk and Brian E. Hanlon, USPTO - Gary Deward, Commentary

  • PTO Prosecution Statistics for Design Applications
  • Rocket Docket for Design Applications
  • Application Requirements
  • Scope of Examination at PTO
  • Hague Treaty Notice of Proposed Rulemaking

10:25 - 10:40am
Q & A

10:40 - 10:55am
Networking Break

10:55 - 11:40am
Scope of Design Patents - Christopher V. Carani

  • Statutory requirements for design patents
  • Judicial/USPTO interpretation of novelty, non-obviousness, ornamentality and "article of manufacture" requirements for design patents
  • Matter of concern doctrine
  • 35 U.S.C. 112 and its application to design patents
     

11:40 - 11:50am
Q & A

11:50am - 12:35pm
Design Patent Overlap with Other Bodies of IP Law - Moderator: Professor Andrew Beckerman-Rodau - Panel: Christopher V. Carani, Esq. and Perry Saidman, Esq.

  • Concurrent and consecutive rights via design patent, trademark, trade dress and copyright law
  • Comparison of rights under design patent law and overlapping bodies of law
  • Should overlapping bodies of law be allowed?

12:35 - 12:45pm
Q & A

12:45 - 2:00pm
Lunch and Presentation
“Use of Design Patents to Protect Products in the Athletic Footwear and Apparel Industry” - Gary Dewar, Senior IP Counsel, New Balance Athletic Shoes, Inc.

2:00 - 3:00pm
Litigating Design Patent Infringement - Moderator: Susan Glovsky, Esq. - Panelists: Perry Saidman, Esq. and Michael Zeller, Esq.

  • 1871 Design Patent Infringement Test of Gorham v. White as Modified by 2008 Federal Circuit en banc Decision of Egyptian Goddess
  • Court Decisions Since Egyptian Goddess - Where Are We Now?
  • Litigating design patent damages when complex devices are involved
  • Functionality in infringement analysis, especially with today’s technology products
     

3:00 - 4:00pm
Ornamental v. Functional Issues - Moderator: Jong Choi, Esq. - Panelists: Christopher Carani, Esq., Susan Glovsky, Esq. and Perry Saidman, Esq.

  • Functionality doctrine in design patent validity and infringement contexts
  • Functional features vs. functional overall designs (Richardson v. Stanley Works)
  • What does “functional” mean in design patent law, and how should it be evaluated
  • Analogous doctrines in trade dress and copyright law
     

4:00 - 4:30pm
Design Patent Damages - Susan Glovsky, Esq. and Philip Green

  • History of Design Patent Damages
  • Lost Profits, Reasonable Royalties and Unjust Enrichment Damages --Which Applies When
  • Types of Documents and Other Information to Support Damages
  • Apportionment of Damages to Patented Design versus Other Factors
  • Contrast of Design Patent Damages with Damages for Infringement of Other Intellectual Property
  • Limitations on Recovery of Damages -- no Double Dipping
     

4:30 - 5:00pm
Q & A and Conclude

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