Design Patent Claims Amendment, Reissue, Validity Challenges: Recent Court Treatment and USPTO Guidance

Course Details
- smart_display Format
On-Demand
- signal_cellular_alt Difficulty Level
Intermediate
- work Practice Area
Patent
- event Date
Wednesday, July 26, 2023
- schedule Time
1:00 p.m. ET./10:00 a.m. PT
- timer Program Length
90 minutes
-
This 90-minute webinar is eligible in most states for 1.5 CLE credits.
This CLE course will guide patent counsel on design patents and amending claims, reissue, and validity challenges. The panel will examine drawing identity, consistency, and written description for amended claims. The panel will also discuss the invalidating of claims and the associated challenges. The panel will review recent cases and the corresponding lessons as well as offer best practices.
Faculty

Ms. Ferrill focuses her practice on all aspects of design patents, including prosecution, counseling, and litigation. She also has extensive experience in utility patent litigation in the areas of software- and hardware-related technologies. She counsels clients who hold design patents as well as those accused of infringement. She has experience with consumer and industrial products, graphical user interfaces and icons. She has prosecuted families of design patents before the USPTO, directed prosecution in foreign countries, and argued appeals before the PTAB.Â

Mr. Raynal is an experienced patent attorney and his practice covers all aspects of design law, with a particular focus on U.S. and international design patent procurement and enforcement. He manages significant design rights portfolios for major electronics, automobile and heavy equipment manufacturers, helping them obtain robust design protection and enforce their rights against knock-offs.  He is also engaged in a variety of copyright, trademark and contract matters, including litigation and licensing. He is the vice-chair of the Industrial Design Committees of the AIPLA and the ABA-IPL, a member of the IPO Design Committee and a member of the INTA Brands and Innovation committee. He is also a Clinical Adjunct Professor in the Intellectual Property Law Clinic at the University of Maryland Francis King Carey School of Law.

Mr. Stockton advises clients on all aspects of intellectual property law, including tactical and strategic counseling, portfolio management, litigation and prosecution matters. His achievements include: prosecuting thousands of U.S. design patent applications before more than 100 USPTO examiners and managing thousands of foreign design applications in more than 100 jurisdictions and 140 countries; obtaining thousands of U.S. utility patents, trademark registrations, copyright registrations and foreign counterparts (through foreign counsel); serving as counsel of record in dozens of patent, trademark and copyright litigations, and assisting with many more IP litigations; litigating IPR petitions at the USPTO; prevailing in dozens of domain name arbitrations, and negotiating numerous no-decision settlements and acquisitions; and managing multiple IP portfolios with thousands of properties worldwide, coordinating the transfer of a >10,000 property portfolio and supervising buyer/seller IP due diligence in large acquisition and IPO contexts.
Description
Recent PTAB decisions have addressed drawing amendments in design patent applications, examining the line between permissible and impermissible drawing amendments during prosecution. The decisions provide important guidance on preparing design patent applications.
The written description requirement limits an applicant's ability to broaden design patent claims after filing by changing solid lines to broken lines. In Ex parte Bologna, the PTAB did not allow an amendment where it felt the conversion of solid lines to broken lines also created a new claim boundary. However, the PTAB came to a different result in Ex parte Giza, determining that converting a solid line edge to a broken line was acceptable. Additional decisions help find the balance between permissible and impermissible drawing amendments, including for cases directed to graphical user interfaces and icons.
Similar to utility patents, patent counsel use post-grant proceedings to challenge design patents. While design patents have been more difficult to invalidate, it is not impossible. For example, successful challenges have been made when prior art designs are similar enough for anticipation and obviousness challenges.
Listen as our authoritative panel of patent attorneys examines design patents and amending claims, reissue, and validity challenges. The panel will discuss drawing identity, consistency, and written description for amended claims. The panel will also discuss the invalidating of claims and the associated challenges. The panel will review recent cases and the corresponding lessons as well as offer best practices.
Outline
- Amending design patent claims during prosecution
- Drawing
- Consistency
- Written description
- Design patent claim amendment through reissue
- Validity challenges to design patent claims
- Obviousness
- Showing anticipation of design patents
- Potential impact of LKQ Corp. v. GM Global Technology Operations, LLC petition for en banc review by Federal Circuit
Benefits
The panel will review these and other key issues:
- What do recent PTAB decisions in ex parte appeals mean for design patent amendments?
- How can reissue applications be used effectively to amend design patent claims after issuance?
- What guidance do PTAB decisions in post-grant validity challenges provide?
- What practical considerations should counsel keep in mind when using post-grant proceedings to challenge design patents?
Unlimited access to premium CLE courses:
- Annual access
- Available live and on-demand
- Best for attorneys and legal professionals
Unlimited access to premium CPE courses.:
- Annual access
- Available live and on-demand
- Best for CPAs and tax professionals
Unlimited access to premium CLE, CPE, Professional Skills and Practice-Ready courses.:
- Annual access
- Available live and on-demand
- Best for legal, accounting, and tax professionals
Related Courses

Patent Design Arounds for Both Utility and Design Patents: Minimizing Risk of Infringement, Reducing Likelihood of Competitor Design Arounds, and Maximizing the Chances of Covering Competitors’ Attempted Design Arounds When Preparing a Patent Application
Wednesday, May 28, 2025
1:00 p.m. ET./10:00 a.m. PT

Patent Infringement: Structuring Opinions of Counsel
Friday, May 23, 2025
1:00 p.m. ET./10:00 a.m. PT

Means-Plus-Function Patent Claims Following Xencor: Preamble, Written Description, and More
Thursday, May 15, 2025
1:00 p.m. ET./10:00 a.m. PT