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McAndrews Attorneys Christopher Carani, Wil Rao, and Dunstan Barnes Invited to Present and Meet With High-Ranking Officials at Korean Intellectual Property Office on U.S. Design Patent Law

Date: January 16, 2015 || McAndrews News

Design patent practice is expanding by leaps and bounds, with damages verdicts in the United States exceeding hundreds of millions of dollars.  As a result, global interest in the law of design patents is at an all-time high.  Despite this, there are only a few law firms in the United States with a design patent focus. McAndrews, Held and Malloy, Ltd. is one of these elite few.

To help the Korean Intellectual Property Office (KIPO)  better understand the state of U.S. design patent law and patenting strategy, McAndrews shareholder Christopher V. Carani, Esq., recognized internationally as a leading authority in the field of design law, along with shareholder Wilhelm (Wil) L. Rao, M.S., Esq., and associate Dunstan H. Barnes, Ph. D., Esq., spoke upon special invitation at KIPO headquarters in Daejeon, South Korea on January 7, 2014.   The series of meetings and presentations focused on the law of design patent infringement, design patent prosecution, and design patent claiming strategies from a U.S. perspective.   Particular focus was given to the burgeoning field of design rights directed to subject matter in the virtual realm, including GUIs, icons, and animations.

The majority of KIPO's design patent examining corps was in attendance at the conference.  The McAndrews delegation conducted special meetings with KIPO's Seong-Joon PARK (Director General of the Trademark & Design Examination Bureau), Insoo LEE (Director of the Design Examination Policy Division), and Jihoon KIM, Ph. D. (Deputy Director of the Design Policy Division), to discuss U.S. and Korean design patent policy.  Additionally, the McAndrews delegation met with other high-ranking officials and examiners, including:  By Yong JEONG (Deputy Director of the Trademark & Design Examination Bureau), Ho Beom JEON (Deputy Director of Design Examination), Se-Kyun YOON (Deputy Director of the Trademark & Design Examination Bureau), Jaehong KO (Deputy Manager of the Design Examination Policy Division), Eunrim CHOI, Ph. D. (Trademark and Design Examination Bureau), and Soo Min SEO (Deputy Director of the Convergence Design Examination Division).  The McAndrews delegation provided detailed analysis and insights for the Koreans on:

  • Case law trends in patent  infringement in the United States
  • Decisional trends in patent prosecution strategy in the United States
  • Comparative analysis of legal design patent standards among the United States, Korea and other TM5 countries
  • Trends in patent prosecution examination and strategy

Plans for a future visit were discussed with details to be finalized at a later time.

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About McAndrews, Held & Malloy
McAndrews, Held & Malloy boasts one of the most highly regarded teams of intellectual property attorneys, agents and technology specialists in the United States. Founded in 1988, the firm offers deep bench strength in matters relating to patents, trademarks, copyrights, trade secrets and unfair competition. McAndrews attorneys have underlying scientific-based degrees and extensive prior experience in technology and IP-focused professions, and they routinely handle cases that involve innovative and cutting-edge technologies in specialized industries. While best known for their record of litigation successes, the firm also offers services in IP procurement, patent interferences, trademark oppositions and cancellations, IP/technology opinions and investigations, global portfolio management, development and licensing, M&A support, due diligence, design rights and joint ventures. Clients include multi-national corporations, Fortune 500 companies, startups and world-renowned universities. For more information, visit www.mcandrews-ip.com.

About McAndrews' Delegation to Korea

Christopher V. Carani, Esq., a McAndrews shareholder, counsels clients on a wide range of strategic design protection and enforcement issues. He is the immediate past Chair of the American Bar Association's Design Rights Committee, and the past chair of the American Intellectual Property Law Association's Committee on Industrial Designs. He has litigated numerous disputes regarding design rights and has served as a legal consultant and expert witness in design law cases in a wide range of industries, including consumer electronics and accessories, consumer retail products, furniture, medical devices, apparel, footwear, and sporting goods, to name a few.  In addition, Carani has authored amicus briefs for landmark U.S. design patent cases, such as Egyptian Goddess v. Swisa, Lawman Armor Corp. v. Winner Int'l LLC, Calmar, Inc. v. Arminak & Assoc. and Richardson v. Stanley Works, Inc. Carani earned an engineering degree from Marquette University and a law degree from the University of Chicago, and went on to serve as a law clerk to the Honorable Rebecca Pallmeyer at the U.S. District Court for the Northern District of Illinois. He is a registered patent attorney and licensed to practice before the USPTO.

Carani is a frequent contributor to CNN on intellectual property law issues, and is often called upon to provide commentary to other major media outlets, including New York Times, Wall Street Journal, Forbes, NPR, PBS TV, CNBC TV, BBC, Bloomberg TV, and Reuters.  Away from the law, Chris is a studied jazz musician who plays upright bass on the Chicago jazz circuit.   Follow Carani (@ccarani) on Twitter: https://twitter.com/ccarani.

Wilhelm (Wil) L. Rao, M.S., Esq., a McAndrews shareholder, is a registered patent attorney and trial-experienced litigator whose practice focuses on procurement, enforcement and transfer of intellectual property rights across a wide-range of technologies, with an emphasis on patents, including design patents, and trade secrets.  He has represented clients from multi-national corporations to small and medium-sized enterprises (SMEs).  Wil advises clients on strategic management of intellectual property rights, including patent and trade secret protection, due diligence, freedom to operate opinions, patent office proceedings, licensing, and rights enforcement, including significant litigation before the U.S. International Trade Commission and at the trial and appellate levels. Wil has represented clients across a range of technology areas. Those areas include, among others: mobile devices, wearable technology, medical devices, specialty chemicals, sporting goods and equipment, HVAC, railway wheels, gaming equipment, heavy machinery, baby/children's products, apparel, air purification, consumer electronics and accessories, consumer retail products, furniture, fabric design, hardware and tools, dental equipment, pigments and lubricants. He is an active member of select intellectual property advocacy organizations, including AIPPI, AIPLA and IPO.  Wil is the current chairman for AIPLA's Trade Secret subcommittee on international trade secret law.  He has lectured and published on a range of intellectual property topics, and has been asked to provide comments to various news media.  Wil is active in local charitable endeavors and in pro bono activities.

Dunstan H. Barnes, Ph.D., Esq., a McAndrews associate, counsels clients in a wide range of technological fields, and has worked in numerous different areas of intellectual property law, including patent litigation, copyright litigation, trademark litigation, and trade secrets law.  Dunstan graduated from Chicago-Kent College of Law, where he was the President of the Intellectual Property Law Society, a Notes & Comments Editor for the Chicago-Kent Law Review, a Submissions Editor for the Journal of Intellectual Property, and a Co-Captain of the "Chicago-Kent Sportfeasors" soccer team.  Prior to law school, Dunstan earned his Ph.D. in Materials Science & Metallurgy from the University of Cambridge.  His doctoral research explored the development and enhancement of biomimetic calcium phosphate coatings applied to the endplate surfaces of artificial polymeric spinal disc devices.  During his doctorate, Dunstan presented his research at five international conferences in the Netherlands, South Korea, United Kingdom, and United States (twice).  In addition, Dunstan assisted in a collaborative research project with the National Metallurgical Laboratory in Jamshedpur, India that focused on applying calcium phosphate coatings to metallic glasses for use in artificial limbs.

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