Design Patents and IPR: Challenging and Defending Validity at the PTAB

Director Tracy-Gene G. Durkin will speak on the webinar “Design Patents and IPR: Challenging and Defending Validity at the PTAB,” hosted by Strafford on Tuesday, May 24, 2022 at 1:00 p.m. EDT.

This CLE course will provide guidance to patent counsel on navigating the inter partes review (IPR) process for challenging design patents. The panel will provide insight into the issues the PTAB considers essential when determining whether to institute IPRs of design patents. The panel will also discuss the prior art and obviousness analyses.

Description

Companies are looking to design patents as a way to protect their IP. The nature of design patents make challenging them in IPR or post-grant review (PGR) desirable. However, challenging design patents in AIA proceedings is very different from challenging utility patents.

Unlike utility patents, design patent applications are rarely rejected during examination. As a result, a petition for IPR or PGR presents the first attempt by PTAB to apply prior art to a design patent. Similarly, the obviousness analysis for design patents is also unique.

IPR provides a less expensive avenue to challenge the validity of a design patent. In understanding the unique issues present with design patents, patent counsel can make a strong case to challenge a design patent that may infringe on the client’s preexisting patent or challenge the validity of a preexisting design patent.

Listen as our authoritative panel of patent attorneys discusses the unique characteristics of design patents and why challenging design patents in IPR is desirable. The panel will also provide insight into the issues the PTAB considers essential when determining whether to institute IPRs of design patents. The panel will discuss the prior art and obviousness analyses and offer guidance on navigating the IPR process.

Outline

1. Advantages and limitations of IPR for design patents
2. Issues the PTAB considers critical when determining whether to institute IPRs of design patents
3. Prior art analysis
4. Obviousness analysis
5. Guidance for navigating the IPR process

Benefits

The panel will review these and other key issues:

• What are the advantages of IPR for design patents? What are the limitations?
• What challenges arise in AIA proceedings as a result of the unique characteristics of design patents? What steps can counsel take to overcome these challenges?
• What is the test to determine obviousness for design patents in AIA proceedings?