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IP Chat Channel – Design Patents

Webinars are listed in chronological order with the most recent at the top of the page.
In order to view past webinars click on the register button below.  Then click on “View Event Recordings” in the upper right hand corner.  All recordings are in chronological order, and can be searched by title using the find feature in your browser.

Please contact meetings@ipo.org if you have difficulty finding a recording.

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Design Patents in China

Webinar Date: 10/25/2018

This webinar will provide a thorough grounding in the law and practice of obtaining and enforcing design patents in China.  Experts say design patents are underutilized in China by foreign companies, to their detriment.  Chinese companies certainly act as if Chinese design patents can give them an edge.  More than one-third of all patent applications filed in China by domestic entities are for design patents, compared to just 10 percent of all patent applications filed in China by foreign applicants.

As many a foreign company has discovered, if it doesn’t register its designs in China, there’s a good chance a Chinese company will — and the foreign company may be forced to pay a license for use of its own design.  U.S., Japanese, and Korean automakers have repeatedly accused Chinese companies of stealing their designs, only to find the accused patented the designs first in China.  Last year, Apple faced a widely reported ban on sales of its iPhone 6 in China after an administrative agency found that the iPhone 6 and iPhone 6 Plus infringed on the design patent rights of a Chinese manufacturer, Shenzhen Baili.  The Beijing Intellectual Property Court later revoked the ban and Apple’s sales continue unimpeded.

Our panel – a leader of the USPTO’s “China team” who was previously a law-firm patent litigator, a Beijing-based lawyer who specializes in design patents, and an in-house patent counsel at a major multinational – will discuss the role of different Chinese government entities and regulators in infringement disputes.  Other issues they will discuss include:

  • The ramifications of China’s refusal to recognize partial designs.
  • Differences between U.S. law and Chinese law with respect to protection against unauthorized use of a product protected by a design patent.
  • Special concerns in patenting GUIs (graphical user interfaces).
  • The interaction of utility patents and design patents in China, differences in the jurisprudence applicable to each, and whether it is possible to obtain both types of protection on one product.

Speakers:

  • Bart Fisher, Caterpillar Inc. 
  • Biqing Huang, CCPIT Patent and Trademark Law Office
  • Elaine Wu, U.S. Patent & Trademark Office



What's Next for Design Patent Damages? DOJ Test on Trial

Webinar Date: 07/26/2018

For all its eye-popping size, the $533 million award that Apple won against Samsung in a design patent infringement case was seen by few as legally significant.  Now that the case has settled, it is an interesting time for our expert panel — an attorney who specializes in design patents, a damages expert, and in-house counsel at an automaker — to assess the current state of damages law for design patents.

The Supreme Court in 2016 held that the relevant “article of manufacture” could be either all or part of the infringing product.  One possible standard for determining the relevant “article of manufacture” for Section 289 purposes was proposed by the United States Department of Justice in an amicus brief it submitted to the Supreme Court.  And that test is taking on a vigorous life of its own.

This summer, Seirus will file a brief in its appeal at the Federal Circuit after it was required by a jury last year to pay $3 million in design patent damages to Columbia.  Columbia v. Seirus was the first case after Samsung v. Apple to charge a jury to use the DOJ’s test.  The outcome of this case is thus eagerly anticipated.

Our panelists will discuss the Federal Circuit’s options in addressing the DOJ standard.  They will also discuss:

  • Other legal uncertainties left by the Supreme court, including who bears the burden of proof in the DOJ test, and whether the identity of the article of manufacture is a matter of fact to be decided by the jury
  • Strategies for patent prosecution and litigation in light of uncertainty
  • Certain areas, such as graphical user interfaces, where both innovators and implementers must take special care

Speakers:

  • Rick Bero, The Bero Group
  • James Dottavio, Ford Global Technologies LLC
  • Elizabeth Ferrill, Finnegan, Henderson, Farabow, Garrett & Dunner, LLP



Design Protection After Star Athletica: Way Beyond Fashion

Webinar Date: 04/13/2017

Don’t be distracted by the sports metaphors and the fashion industry commentary. Last month’s decision by the U.S. Supreme Court in Star Athletica v. Varsity Brands found that decorative elements of cheerleader uniforms were potentially protected by copyright law. That decision opens a new avenue for protection of industrial designs as well, an area which itself has earned a higher profile within IP law recently because of the ongoing fight in Apple v. Samsung. That smartphone case involves design patents, of course, but experts say that the Star Athletica should spur new consideration of how copyright and design patents, as well as trade dress and utility patents, can or can’t work together. Increased use of copyrights to protect industrial design makes new litigation on this issue more likely.

Our panel includes an in-house counsel at a technology company and two law firm lawyers, one specializing in design patents and the other in copyright. They will discuss such questions as:

  • How does Star Athletica change the scope of copyright protection for designs? When is copyright protection for useful objects now appropriate?
  • What are the differences among the different modes of protection, including “novelty and non-obviousness” for design patents, “originality” for copyrights, and “acquired distinctiveness” for trade dress?
  • What are the open questions left by Star Athletica that are likely to be litigated in the future?

Speakers:

  • Terry Carroll, IBM Corp.
  • Robert Katz, Banner & Witcoff, Ltd.
  • Katherine Spelman, Lane Powell PC



Design Patents: Future of Damages After Apple v. Samsung

Webinar Date: 01/12/2017

In its recent opinion, the U.S. Supreme Court answered this question posed by Samsung: “Where a design patent is applied to only a component of a product, should an award of infringer’s profits be limited to those profits attributable to the component?” The reply of the unanimous court, in an opinion written by Judge Sotomayor: “The term ‘article of manufacture’ is broad enough to embrace both a product sold to a consumer and a component of that product, whether sold separately or not.” That answer rejects the Federal Circuit’s longstanding interpretation of Section 289.

However, experts say the Supreme Court’s opinion raises many more questions. The Federal Circuit must now create a test that will allow a jury to determine whether the “article of manufacture” covered by a design patent is the entire product or a component, and what that component is. For now, it is not clear whether the patent owner or the defendant bears the burden of proof. Then, it will be up to a judge to apportion to the component some part of the infringer’s entire profits on the product. Our panel — a design patent litigator, a damages expert, and a law professor specializing in patent damages — will discuss how the law of design patent damages might evolve, and see what the options might mean applied to cases currently being litigated, such as Apple v. Samsung and Nordock v. Systems.

Speakers:

  • Prof. Thomas Cotter, University of Minnesota Law School
  • Dawn Hall, FTI Consulting
  • Richard Stockton, Banner & Witcoff, Ltd.



Design Patents: International Filing Strategies

Webinar Date: 11/15/2016

More companies these days feel the need for design patent protection in several countries outside the U.S. But complications are plentiful, pitfalls are many, and international harmonization efforts may offer false security. Our panel includes an in-house counsel with experience managing design patent prosecution in more than 15 countries plus the European Community, and two international design patent prosecution veterans. They will examine a number of issues that should be addressed in preparing an effective international filing strategy, including:

  • The significance of the “absolute novelty” standard in nations including China. No grace period means that any disclosure by the inventor or designer anywhere in the world, including in consumer testing and trade shows, is considered prior art before filing;
  • Differences in rules regarding partial designs, where only a particular feature is claimed;
  • Limits in enforceability, such as the “must fit, must match” and “hidden in use” exclusions;
  • Balancing cost and coverage.

Speakers:

  • John Cheek, Caterpillar, Inc.
  • Elizabeth Ferrill, Finnegan, Henderson, Farabow, Garrett & Dunner, LLP
  • Robert Katz, Banner & Witcoff, Ltd.



After Brexit: European Patents and Design Rights

Webinar Date: 07/14/2016

Last month’s vote by the United Kingdom to leave the European Union raises many uncertainties for owners of intellectual property in Europe. These two webinars will help owners of patents and trademarks to understand these uncertainties, to recognize their options, and to take needed steps. Patent owners, for instance, need to be clear on the independence of the European Patent Office from the EU and will want to understand the dynamics that will determine whether the long-gestating United Patent Court ever comes to life. Trademark owners doing business in the U.K. will want to start thinking about how to protect assets after European Community Designs (ECDs) and European Union Trademarks (EUTMs) no longer are valid there. Each of our panels includes an in-house attorney at a U.S. multinational and two law firm attorneys, one based in Munich and one in London.

Speakers:

Paul Coletti, Johnson & Johnson
John Conroy, Fish & Richardson
Rowan Freeland, Simmons & Simmons




European Trademarks, Designs and IP Transactions

Webinar Date: 07/13/2016

Last month’s vote by the United Kingdom to leave the European Union raises many uncertainties for owners of intellectual property in Europe. This webinar will help owners of trademarks to understand these uncertainties, to recognize their options, and to take needed steps. Trademark owners doing business in the U.K. will want to start thinking about how to protect assets after European Community Designs (ECDs) and European Union Trademarks (EUTMs) no longer are valid there. They also will want to review IP agreements for clauses defining territorial scope and draft future agreements with an eye to new possibilities, such as other countries leaving the EU. The panel includes an in-house attorney at a U.S. multinational and two law firm attorneys, one based in Munich and one in London.

Speakers:

Jonathan Day, Carpmaels & Ransford
Jake Feldman, Johnson & Johnson
Jan Zecher, Fish & Richardson




Design Patent Damages: The Law As It Is Today

Webinar Date: 01/28/2016

When the Federal Circuit last summer rejected a request for a rehearing en banc from Samsung on the damages awarded to Apple for infringement of three of its design patents, it reaffirmed what experts in design patents already knew: With design patents, the infringer’s damages are its entire profits from the article of manufacture. That formula stemmed from design patents’ has historically been used as a weapon in the fight against counterfeits and knock-offs. But the ruling in Apple v. Samsung, based on a straightforward reading of Section 289 of the Patent Act, was an eye opener even for many patent law veterans outside the design space. The Federal Circuit reiterated its stance again in September in Nordock v. Systems, when it remanded a patent design case because the lower court’s damages calculation shortchanged the plaintiff.

Our panel brings together two design-patent veterans with a damages expert to discuss the implications on design patent prosecution and litigation of the increased consciousness regarding design patent damages. Is this just a blip or will it lead to an increase in design patent litigation and prosecution, as some experts predict? How will courts define “the article of manufacture”? What are the limitations of design patent enforcement despite the possibility of 289 damages? The panelists will also consider Samsung’s certiorari petition to the U.S. Supreme Court.

Speakers:

Alan Cox, NERA Economic Consulting
Robert Katz, Banner & Witcoff
Damian Porcari, Ford Global Technologies LLC