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  • videocam On-Demand Webinar
  • card_travel Patent
  • schedule 90 minutes

International Design Patent Protection: Developing a Global IP Strategy

$347.00

This course is $0 with these passes:

CLE
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About the Course

Introduction

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.

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.

Presented By

Tracy-Gene G. Durkin
Director
Sterne Kessler Goldstein & Fox Pllc

Ms. Durkin is the practice leader of the firm’s Mechanical & Design Practice Group. With more than 35 years of experience obtaining and enforcing IP rights, she is sought out by leading consumer product companies and by colleagues around the world for her deep understanding of utility and design patents, trademarks, and copyrights. Ms. Durkin is the Vice Chair of the USPTO’s Patent Public Advisory Committee (PPAC), which advises the Under Secretary of Commerce for Intellectual Property on the policies, goals, performance, budget, and user fees of patent operations at the Office. She is also the chair of the Designs Committee for the INTA. Ms. Durkin is past chair of the Industrial Designs Committee of the IP Section of the ABA and of the Industrial Designs Committee of the American Intellectual Property Law Association. In addition, she is past vice chair of the Industrial Designs Committee of the Intellectual Property Owners Association. Ms. Durkin has been an Adjunct Professor of Law at George Mason University Law School in Virginia and has spoken internationally on topics such as the interplay between design patents and trade dress, protection of graphical user interface designs and the user experience, The Hague Agreement, trademark co-branding and licensing, IP audits and mediation. Additionally, she co-hosts the biennial Design Law Conference, which aims to foster debate on cutting-edge design-related topics.

 

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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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Credit Information

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


  • Live Online


    On Demand

Date + Time

  • event

    Tuesday, December 20, 2022

  • schedule

    1:00 PM ET/10:00 AM PT

  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

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?