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Course Details

Course Information
  • smart_display Format

    On-Demand

  • signal_cellular_alt Difficulty Level

    Intermediate

  • work Practice Area

    Patent

Date & Time
  • event Date

    Tuesday, January 30, 2024

  • 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 webinar will guide patent counsel on design patent protection for replacement parts. The panel will examine the key considerations when defining and drafting design patent claims for replacement parts. The panel will also discuss the differences between U.S. and European treatment of design patents for replacement parts and will offer best practices for drafting design patent claims for replacement parts.

Faculty

Dunstan Barnes
Shareholder
Mcandrews, Held & Malloy Ltd

Mr. Barnes practices in all areas of intellectual property law with emphasis on protecting and analyzing design rights. His work in that area includes drafting and prosecuting design patent applications and conducting opinion work and due diligence investigations. In addition, Mr. Barnes has considerable experience drafting and prosecuting utility patent applications and trademark applications across a range of technological fields and industries. He is particularly skilled at communicating complex, abstract technical concepts clearly and compellingly. Mr. Barnes is a skilled intellectual property advocate and adviser who helps his clients protect their innovations, particularly new designs, in  U.S. and global marketplaces. He helps his clients acquire and protect their IP rights, as well as navigate the world of existing rights. Mr. Barnes is the current Chair of the ABA Design Rights Committee and Vice Chair of the AIPLA Industrial Designs Committee. He has been an invited speaker at conferences including AIPPI World Congress, AIPLA Annual Meeting, ABA-IPL Spring Meeting, and USPTO Design Day.

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Krystyna Colantoni
Partner, Head of Patent Prosecution
Mei & Mark, LLP

A former Patent Examiner, Ms. Colantoni focuses her practice on drafting and prosecuting patent applications, providing legal opinions on patentability, validity, and infringement, and counseling clients on strategic management of patent portfolios. She has experience in a variety of electrical and mechanical technologies. Ms. Colantoni’s areas of particular expertise include automotive systems and components, combustion processes and devices, torque-transfer devices, internet-of-things (IOT), internet security, optics (EUV-IR spectrum), computer hardware and software, control systems, printer technology, and GFCI devices.

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Greg Sharp
Partner
Haseltine Lake Kempner, LLP

Mr. Sharp has extensive experience guiding clients through the entirety of a patent’s lifespan: from drafting and prosecution of patent applications to advising on infringement, validity and entitlement issues. He has also handled a number of international assignment programs and clearance exercises, and has attended oral proceedings at the European Patent Office during patent examination, opposition, and appeal. Mr. Sharp’s mechanical engineering background enables him handle cases from a broad range of engineering subject matter. His experience covers aerospace and automotive technology through to personal safety equipment and consumer devices, along with FMCGs, manufacturing equipment and processes, industrial hydraulics, fossil fuel exploration and extraction, fuel cells, and medical devices.

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Description

Most products from personal care items to appliances to printers to automobiles require replacement parts at some point. These replacement parts provide companies with an ongoing source of revenue. While utility patents provide protection for the function and structure of replacement parts, companies can and should look to design patents for protecting the appearance of their replacement parts, thereby excluding others from creating and selling a replacement part that looks substantially the same as the company's patented part.

The U.S. and Europe have wholly different treatment of design protection for replacement parts. There are certain circumstances under which design protection is prohibited for replacement parts in Europe. This is in contrast to the U.S. where there are currently very few such restrictions, although some entities have been making efforts for years to tighten those restrictions, as reflected in legislation recently introduced into Congress and ongoing litigation including an important en banc case currently before the Federal Circuit.

Other issues may arise in the U.S. around claiming replacement parts--partial designs, the title of the patent, and defining the article of manufacture for total profit damages.

Listen as our authoritative panel of patent attorneys examines the key policy and practical considerations when defining and drafting design patent claims for replacement parts. The panel will discuss the court treatment of these patents as well as the differences between U.S. and European treatment of design patents and registrations for replacement parts. The panel will offer best practices for drafting design patent claims for replacement parts and discuss recent legislation introduced in the U.S. House of Representatives.

Outline

  1. Key considerations
  2. Drafting issues
    1. Claiming replacement parts, including partial designs
    2. Title of the patent application, including consideration of the article of manufacture
    3. Recent legislation
  3. Differences between U.S. and European treatment of design protection for replacement parts
  4. Best practices for drafting design applications

Benefits

The panel will review these and other key issues:

  • Key considerations and best practices for counsel in drafting design patents for replacement parts, including partial designs, choosing the title of the application, and consideration of the article of manufacture
  • Differences between the U.S. and European treatment of design patents/registrations for replacement parts
  • How recent U.S. legislation will affect design patents for replacement parts.
  • Best practices for drafting design patents for replacement parts