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Course Details

Course Information
  • smart_display Format

    On-Demand

  • signal_cellular_alt Difficulty Level

  • work Practice Area

    Patent

Date & Time
  • event Date

    Tuesday, December 20, 2022

  • schedule Time

    1:00 p.m. ET./10:00 a.m. PT

  • timer Program Length

    90 minutes

Credit Information

  • This 90-minute webinar is eligible in most states for 1.5 CLE credits.

$347.00
CLE
ALL

This CLE course will guide patent counsel on protecting design patents in the global marketplace. The panel will discuss the critical differences between the patent laws in the U.S. and other jurisdictions. It will offer best practices for U.S. companies and counsel to develop a global intellectual property strategy.

Faculty

Tracy-Gene Durkin
Director
Sterne Kessler Goldstein & Fox Pllc

Ms. Durkin heads the firm’s Mechanical and Design Patent Group. With nearly 30 years of experience obtaining and enforcing IP rights, she has a deep understanding of utility and design patents, trademarks, and copyrights. Ms. Durkin has been an Adjunct Professor at George Mason University Law School and has spoken internationally on topics such as the interplay between design patents and trade dress, and protection of user interface and the user experience. She is currently a Vice Chair of the Industrial Designs Committee of IP Section of the ABA.

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David R. Gerk
Senior Patent Attorney, Office of Policy and International Affairs
U.S. Patent and Trademark Office

Mr. Gerk advises the Under Secretary of Commerce for Intellectual Property and Director of the U.S. Patent and Trademark Office on domestic and international IP issues as well as on United States treaty obligations and helps to formulate U.S. domestic and international policy regarding protection and enforcement of intellectual property rights. Prior to joining the USPTO, he was a shareholder in Banner & Witcoff's Washington, D.C., office where he practiced IP law. He oversaw the efforts of the USPTO regarding design protection and the accession to the Hague Agreement.

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Description

U.S. companies increasingly recognize the need to protect their intellectual property across the globe. Companies must carefully consider where to seek protection and what type of protection to seek, factoring in considerations like where products are manufactured, where they are sold, where competitors are, and the availability of the desired rights in the potential jurisdictions.

Design rights are becoming an essential piece of the global IP strategy for many U.S. companies. Therefore, counsel must understand the nuances between patent laws and requirements of the U.S. and other countries to protect the client's designs.

While there have been attempts to harmonize design protection globally, including the Hague system, for now, each jurisdiction has unique requirements that must be factored into a priority U.S. filing. For example, timing is critical because many countries, including China, generally require "absolute novelty" such that patent applications must be filed before disclosing a design anywhere in the world. Similarly, other jurisdictions, like Europe, require a specified number of design views. Some countries allow the protection of partial designs, while others still do not.

Listen as our authoritative panel of patent attorneys provides guidance on protecting design rights in the global marketplace. The panel will discuss the critical differences between the patent laws in the U.S. and other countries that must be understood when developing a robust global IP strategy. The panel will offer best practices for U.S. companies in developing a global strategy.

Outline

  1. Protecting designs in the global marketplace
    1. Determining whether and when to seek protection
    2. Determining where a design can and should be protected
    3. Timing for filing for protection
    4. Limitations on design rights
  2. Compare/contrast U.S. design patent law with other jurisdictions and efforts to harmonize processes and procedures
    1. China
    2. EU
    3. Japan
    4. Hague Agreement
    5. Others
  3. Global enforcement of design rights
  4. Practical guidance for establishing a global design strategy

Benefits

The panel will review these and other high priority issues:

  • What are the considerations for patent counsel drafting U.S. design patent applications when global patent protection is anticipated or desired?
  • What are the significant differences between the U.S. and other jurisdictions' approaches to design patent applications?
  • What steps should counsel take when drafting U.S. design patent applications to maximize protection worldwide?