Expert Consultant in Design Patent Matters
Perry is available as an expert consultant to assist litigation counsel in analyzing design patent infringement including the sometimes difficult issue of the effect of prior art. He also analyzes design patent validity including issues of anticipation, obviousness, indefiniteness, and functionality (which is both a validity issue and a claim construction issue during infringement analysis), as well as the issue of total profit damages. Perry has also served as an expert witness in dozens of design patent matters involving infringement, validity, proceedings in the U.S. Patent and Trademark Office, and related trade dress issues.
Full or half-day Trainings in Design Patent Law for Corporate and Private Practitioners
Perry calls upon his experience as a Professor teaching Design Law at the George Washington University law school to give trainings and presentations to corporate legal departments and private practitioners on the nuts and bolts of design patent law, as well as advanced topics such as determination of total profit damages. The training agenda can be custom made to address particular issues that the audience is interested in. Trade dress and copyright law can also be covered.
Strategies for Maximizing Design Patent Protection
Perry is particularly experienced in formulating design patent application filing strategies for clients who wish to maximize the effectiveness of the resulting design patent. This includes an analysis of prior art, taking into account the products of known competitors, and considering a client’s alternate designs. He often employs the strategy of including an Appendix to a patent application which affords great flexibility in protection against infringers while minimizing costs.
Legal Opinions Analyzing Design Patent Infringement and Validity
Perry has drafted many formal legal opinions for clients regarding design patent infringement and/or validity. He has supervised outside vendors to conduct relevant searches in connection with the opinions, and analyzed the results. He can also provide a verbal opinion in the event a formal written opinion is not desired.
Analysis of Foreign Origin Applications
Perry analyzes and advises foreign clients regarding their foreign origin design applications in a way to preserve their claim to priority when filing in the US. Clients frequently engage him before filing their foreign applications in order to maximize US protection.
Webinars & Presentations
Perry has given many presentations and webinars, including: “Product Designs and Packaging Protection: Leveraging Trade Dress, Design Patent and Copyright”; “Effective Design Protection Using Design Patents, Trade Dress, and Copyright”; “Design Patent Litigation: Increasing the Probability of Success in Infringement Outcomes”; “Functionality: Designs, Trade Dress & Copyright”; “Best Practices for Enforcing Design Patent Rights”; “The Future of Design Patent Law: Proposed Legislation”; “The Latest and Greatest: How Design Patent Litigation Informs Prosecution”; “The Sec. 289 ‘Total Profit’ Damages Regime: The Government’s 4-Factor Test for Determining the ‘Article of Manufacture’ ”; and many others.
Design Patent Enforcement and Litigation
Perry has investigated and analyzed potentially infringing products, drafted cease and desist letters to infringers, and negotiated with them in an effort to settle disputes short of litigation, with the goals of getting the infringing product off the market and secure money damages from the infringer. In the event negotiations are unsuccessful, Perry has partnered with outside litigation counsel, serving as a design patent law expert during discovery, reviewing motions, briefs, and other court documents.