Design Patents: Meeting Obviousness and Novelty Requirements (2023)

Director Tracy-Gene G. Durkin was a speaker on the webinar “Design Patents: Meeting Obviousness and Novelty Requirements” hosted by Strafford on Wednesday, December 20, 2023.

This CLE course guided patent counsel in prosecuting and litigating design patent claims. The panel examined recent USPTO and court treatment of novelty and obviousness issues and offered best practices for prosecuting and defending against obviousness and novelty attacks in litigation.

Description

While many of the same requirements govern the patentability of utility inventions and designs, the application of those requirements in these two contexts can be entirely different. Like utility inventions, designs must be novel and not obvious, but recent ambiguous rulings from the USPTO and courts have blurred the distinction between the two.

As a result, it can be seemingly easier to prove lack of novelty based on a single reference that is not identical to the claimed design than it can be to demonstrate that a design is obvious.

Listen as our authoritative panel guides patent counsel prosecuting and litigating design patent claims in the U.S. The panel will examine recent USPTO and court treatment of novelty and obviousness issues and offer best practices for prosecuting design patent applications and defending against obviousness and novelty attacks in litigation.

Outline

1. The novelty standard for designs and how it has evolved based on recent rulings from the Federal Circuit
2. The obviousness standard for designs and how it has evolved based on recent rulings from the Federal Circuit
3. Recent USPTO and district court treatment of novelty and obviousness
4. Challenging novelty and obviousness rejections at the USPTO
5. Best practices for defending against obviousness and novelty attacks in post-grant proceedings and litigation

Benefits

The panel reviewed these and other key issues:

• How do the novelty and obviousness requirements for design patents differ from utility patents and each other?
• How has the Federal Circuit and PTAB treated the issue of novelty and obviousness for design patents?
• What are the steps that patent applicants can take to stand up to novelty and obviousness rejections before the USPTO?