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Course Details

Course Information
  • smart_display Format

    Live Online with Live Q&A

  • signal_cellular_alt Difficulty Level

    Intermediate

  • work Practice Area

    Patent

Date & Time
  • event Date

    Tuesday, June 24, 2025

  • 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 leveraging design arounds to reduce the risk of patent infringement. The panel will also discuss what counsel can do when drafting patent applications to minimize competitors' likelihood of designing around the patent, as well as maximizing chances to cover competitors' design arounds.

Faculty

Perry Saidman
Of Counsel
Saidman Design Law Group

Mr. Saidman is a pioneer in the field of design law, successfully representing clients in groundbreaking cases that have established the enforceability of design patents in court, cases such as Avia Group Int’l. v. LA Gear where the U.S. Court of Appeals for the Federal Circuit affirmed a summary judgment holding that two design patents on tennis shoes were valid and willfully infringed, entitling the design patent owner to increased damages and attorney fees. During his career Mr. Saidman has prepared, prosecuted and supervised thousands of U.S. design patents.  He also has substantial experience in enforcement, having been involved in numerous design patent litigations both as counsel and as an expert witness. He has also penned many amicus curiae briefs in major cases before the Federal Circuit and Supreme Court.

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Gary B. Solomon
Partner
Foley & Lardner Llp - Dallas

Mr. Solomon is a member of the firm’s Electronics Practice who focuses on patent preparation, prosecution, and the monetization and protection of these intellectual property assets. He has years of experience developing large and strategic patent portfolios for his clients, as well as conducting IP due diligence; drafting legal opinions relating to utility and design patents, including patentability, non-infringement, freedom-to-operate, invalidity and design-around opinions; and participating in a number of IP transactions, including acquisition, funding, and company sales. He has created and implemented cost-effective brand enforcement programs for enforcing trademarks, copyrights, and patents. Mr. Solomon has experience in the areas of communications systems, automatic control systems, power systems, robotics, microelectronics, industrial equipment, imaging systems, medical devices, semiconductor devices, telecommunications, software, mechanical devices, and many other technologies.

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Description

When a patent owner is preparing to launch a product and discovers an existing similar patent, patent counsel should weigh several considerations. Counsel must consider whether there are elements they can do without that do not include all the same details, what can be altered or tweaked, and whether the owner of the potentially infringed patent by the client's product has pendency.

Likewise, when patent counsel is preparing a patent application, they should consider the possibility of design arounds and take steps to minimize the likelihood that a competitor can design around the patent. Additionally, during preparation of the patent application patent counsel can take steps to maximize the chances of covering a competitor's attempted design around.

The cost of executing a design around will vary. They will probably be less costly than damages for infringement or paying for a license. Further, design arounds demonstrate an intent to avoid infringement.

Listen as our authoritative panel of patent attorneys examines critical considerations when seeking to design around a patent and when patenting an innovation to minimize the likelihood of design arounds and maximize opportunities to cover competitors' attempted design arounds.

Outline

I. Using design arounds to minimize infringement risk

A. Specifications

B. Prior art

C. What can be altered/tweaked?

D. Are there elements that can be eliminated?

E. Continuation applications pending?

F. Costs to license?

II. Drafting patents to reduce the likelihood of another party designing around the patent

III. Drafting patents to maximize the possibility of covering competitors' attempted design arounds


Benefits

The panel will review these and other key issues:

  • What factors should patent counsel consider when seeking a design around of a valid patent?
  • What steps can patent counsel take when preparing a patent application to reduce the likelihood of design arounds and increase the possibility of covering competitors' attempted design arounds?