Firm Formalizes Interdisciplinary Team to Enhance Its Approach to Industrial Design Matters

April 21, 2022

In celebration of USPTO Design Day 2022, Marshall, Gerstein & Borun LLP is pleased to share the launch of its Design Patents Practice Group to optimize client service with respect to intellectual property protection for industrial designs. The group, chaired by Partner Jeremy Kriegel, will provide a fresh perspective to an area of IP law at the exciting intersection of branding and technology.

The 36-member team, a mix of partners, associates, patent agents, technical specialists, and paralegal professionals, collaborates with clients and patent drawing artisans to develop creative strategies that address design protection issues. These run the gamut from filing on designs in the mechanical and electrical arts, such as consumer products, apparel, furniture, and graphical user interfaces, to litigating claims involving design patent validity and infringement. Another key focus of Marshall Gerstein’s Design Patent Practice Group (DPPG) is international design protection, effectively leveraging the Hague international design filing system and coordinating direct filings for design registrations outside the US under the Paris Convention.

“Formalizing the Design Patents Practice Group recognizes the important role design protection plays in the IP system and our team’s vast experience with design patent matters, providing a forum for educating our clients and advancing development of our professionals,” Kriegel said. “It gives us the opportunity and structure to hone best practices and generate creative approaches to design patent preparation and prosecution. The DPPG members discuss design patent filing strategies and provide an interactive training environment for our professionals, clients, and the greater IP community. We pay attention to recent court and PTAB opinions and other legal developments involving design patents, such as rule changes and amendments to design procedures outside the US.”

Since Apple v. Samsung, design patents, which protect non-functional, ornamental aspects of articles of manufacture, have gained increased recognition and prominence in IP portfolios. With statutory damages for design patent infringement that include an infringer’s profits, which can exceed damages available for utility patent infringement since those are often capped at a reasonable royalty, the increasing rate of issued design patents and growing number of PTAB challenges to design patents are not surprising. Diligent, proactive protection strategies are more essential than ever for product designers, website/app developers, and manufacturers. Marshall Gerstein has broad experience in filing, prosecuting, opining on, and litigating design patents.

In just the past two years, Marshall Gerstein has successfully obtained over 160 design patents for clients, filed multiple petitions for inter partes review of design patents, conducted due diligence and freedom to practice opinions on design patent portfolios, and provided thought leadership through article writing, blog posts, and domestic and international presentations on design protection in areas such as architectural works and virtual reality. The Marshall Gerstein Design Patent Practice Group is excited to continue securing protection for industrial designs on behalf of clients in a broad range of industry sectors, like consumer products, packaging, construction, graphic user interfaces, and medical devices.

For more information see Marshall Gerstein's Design Patents Practice Group.

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