Design Patents

Sterne Kessler is recognized internationally as a global leader in the protection of design rights.

Long before other law firms saw the value of design patents, the Sterne Kessler team was breaking new ground in the field. More than 30 years later, we are still helping clients develop comprehensive programs to protect some of the most iconic designs in the world and to eliminate knock-offs in the marketplace. Design patents we have obtained for clients have withstood challenges around the globe and enabled our clients to recover millions of dollars in damages and injunctions against future sales. There are clear reasons why clients rely on Sterne Kessler to help them obtain global design rights:

• Experience. We file hundreds of design patent applications at the U.S. Patent and Trademark Office (USPTO) each year and have been counsel in scores of design patent enforcement litigations, resulting in millions of dollars in recoveries from design patent infringements.
• Challenging conventional wisdom. We were one of the first firms to challenge the conventional wisdom that design patents take too long to get. By understanding what causes examination delay and how to expedite examination, we can quickly usher patent applications through the system.
• Expanding product protection. We dispelled the notion that design patent scope is too narrow and that one must claim the entire product design. By focusing on salient product features, in addition to protecting the product as a whole, we can provide more flexibility when it comes to stopping knock-offs.
• Continuation practice. We use continuing application practice to ensnare copiers who draw inspiration from our client’s designs, even when those designs are not exact copies.
• Global reach. For global brands, we work with an international network of law firms who, like us, are experts in design rights. Together, we create coordinated strategies for protecting design rights worldwide including using the Hague System for the International Registration of Industrial Rights. Likewise, clients rely on Sterne Kessler to orchestrate enforcement of their design rights around the world as well as to defend validity challenges of their rights.
• Cutting-edge strategies. In some countries, protection for designs has not yet caught up with technological advancements and market realities. In select jurisdictions, we have brought test cases to challenge the legal system and bring about changes in the law that are in line with current trends.
• Effective, targeted results. Where settlement negotiations prove fruitless, we routinely seek to have design patent cases mediated in order to obtain a quick result. Where appropriate, we move for preliminary injunctions and summary judgment to cost-effectively and quickly resolve the case.
• Market monitoring. We collaborate with clients to identify and stop offending products online, at trade shows and in the marketplace.
• Investment in the system. Sterne Kessler has appeared before the U.S. Congress and has assisted the Intellectual Property Owners Association in drafting its recommendations to the U.S. Customs and Border Protection agency regarding extension of full border enforcement protection to design patents. In addition, we actively brief overseas patent offices on the importance of design patent protection in emerging technology areas.