Perry Saidman is a pioneer in the field of design law, successfully representing clients in ground-breaking cases that have established the enforceability of design patents in court, cases such as Avia Group Int’l. v. LA Gear where the U.S. Court of Appeals for the Federal Circuit affirmed a summary judgment holding that two design patents on tennis shoes were valid and willfully infringed, entitling the design patent owner to increased damages and attorney fees.
Today, he is a leading advocate for design patents in the United States. He authored an Amicus Curiae brief on behalf of Apple in the seminal design patent infringement case of Egyptian Goddess v. Swisa that was decided en banc by the U.S. Court of Appeals for the Federal Circuit in September, 2008. The Apple brief was the only amicus curiae brief referenced by the Court in its opinion.
Mr. Saidman publishes frequently on design patent law, most recently “Design Patent Damages: A Critique of the Government’s Proposed 4-Factor Test for Determining the
‘Article of Manufacture’ ” IP Theory, Maurer School of Law, Indiana University (Vol. 8, Issue 1, Article 3) (2019); and “Design Patents Are Sinking in International Seaway: Rethinking Design Patent Anticipation” (February 5, 2020), https://ssrn.com/abstract=3532376 or http://dx.doi.org/10.2139/ssrn.3532376.
In 1990, Perry founded Saidman DesignLaw Group, the first and foremost U.S. law firm to specialize in the patenting of designs. Relying on a team of skilled specialists, and an extensive network of foreign design law experts, the firm develops and implements design protection strategies for clients. Perry’s extensive consultancy work, as an expert witness, lecturer and author of numerous publications, has helped the firm build a knowledge bank in design law that is unparalleled. During his career Perry has prepared, prosecuted and supervised thousands of U.S. design patents, and as a result the firm has established close working relationships with many of the USPTO Design Patent Examiners. The firm has also successfully prosecuted and enforced numerous design copyrights – relatively inexpensive and valuable components of any well-rounded design portfolio.
In July, 2019, he became Of Counsel to the firm, and established Perry Saidman, LLC where he focuses on enforcement and litigation. He is also available as an expert consultant in design patent law, and offers full or half-day trainings to corporate and private practitioners.
Perry has served as a consultant and expert witness in dozens of design patent and trade dress/product configuration cases, and is a popular keynote speaker both in the U.S. and abroad.
Well-known in legal and design circles as a leader in the field, Perry was the founder and first chair of the Industrial Design Committee of the American Intellectual Property Law Associations (AIPLA), and was the founder and co-chair of the Design Protection Committee of the Industrial Designers Society of America (IDSA). He also contributes to similar committees in the American Bar Association (ABA), Intellectual Property Owners Association (IPO), and the International Trademark Association (INTA). Past audiences have included the United States Patent and Trademark Office, the AIPLA and the Japan Design Protection Association, as well as numerous state bar associations in their CLE programs (e.g., California, Texas, Michigan, Ohio, New York, and Florida).
Publications (links in bold):
“Copyrights: Novelty or Originality?”, Journal of the Patent Office Society, Vol 55, No. 5 pp. 314-319 (1973).
“Patent Law for General Practitioners and Business Lawyers”, Maryland Institute for Continuing Professional Education of Lawyers (MICPEL), Baltimore, MD, April 1980.
“Trademarking Software Packages”, BYTE, March, 1984.
“Copying Mass Marketed Software”, BYTE, February, 1985.
“The Sale of Computer Products”, BYTE, May, 1985.
“Patents: There is Something New Under the Sun”, Barrister, Winter, 1987.
“Avia Wins Major Design Patent Suit: How the Design Patent Slam Dunked the Knock-off”, Design Perspectives, Feb, 1989 (IDSA).
“Sneakers, Design Patents & Summary Judgements: Opening a New Era in the Protection of Consumer Product Designs”, 71 Journal of the Patent and Trademark Office Society (JPTOS). 524, July, 1989.
“Design Patent Suits Can be Won”, FDM, July, 1989, p. 114.
“How Design Patents Defeat Product Piracy”, Seminar Papers on Design Management, Industrial Design Department, University of the Arts, Phila., PA., March, 1990.
“The Ten Commandments of Design Patent Prosecution”, innovation (Industrial Designers Society of American quarterly journal) Fall, 1990, p. 21.
“The Doctrine of Functionality in Design Patent Cases”, 19 U. Balt. L. Rev. 352 (Fall 89-Winter 90).
“The Glass Slipper Approach to Protecting Industrial Designs or When the Show Fits, Wear It”, 19 U. Balt. L. Rev. 167 (Fall 89- Winter 90).
“Design Protection Tools- A Primer”, The Design Management Institute News, Vol. III, Issue 4, July/August, 1991.
“The Basic Tools of Design Protection”, SAIDMAN DesignLaw Group, (pamphlet), Fall, 1991.
“How to Protect Product Design”, Design Management Journal, Vol. 2, No. 4, p.32 (Fall, 1991).
“Design Patents- the Whipping Boy Bites Back”, 73 Journal of The Patent and Trademark Office Society (JPTOS) 859, November, 1991.
“Who Owns What?/ Design Protection Tools”, innovation, Winter, 1992, p21.
“Trade Dress: The Emperor Gets Some Real Clothes”, innovation, Spring/Summer, 1995, p. 65.
“The Valuable Yet Elusive Trademark: All Dressed Up”, innovation, Summer/Fall, 1995, p. 51.
“Design Patentees: Don’t Get Unglued by Elmer or The Single Most Important Thing to Know About the Preparation of Design Patent Applications: 78 Journal of the Patent and Trademark Office Society (JPTOS) 311, May, 1996.
“Supreme Court Decides in Favor of Knock-Offs: Wal-Mart Case Makes Trade Dress Protection for Product Design More Difficult”, innovation, Summer 2000, p.24.
“Kan TrafFix Kops Katch the Karavan Kopy Kats? -or- Beyond Functionality: Design Patents are the Key to Unlocking the Trade Dress/Patent Conundrum”, 82 Journal of the Patent and Trademark Office Society (JPTOS) 839, December 2000.
“Protecting Proprietary Product Designs in the USA”, Chapter Nineteen, Industrial Design Rights- An International Perspective, co-author with David Brinkman, Kluwer Law International and International Bar Association, 2001, pp. 325-359.
“When Patents Expire: The Supreme Court Gives TrafFix a Green Light to Copy”, innovation, Winter 2001, p. 28.
“The Death of Gorham Co. v. White: Killing it Softly with Markman”, 86 Journal of the Patent and Trademark Office Society (JPTOS) 792, October, 2004.
“The Right to Copy Doctrine”, 89 Journal of the Patent and Trademark Office Society (JPTOS) 204, March, 2007.
“The Crisis in the Law of Designs”, 89 Journal of the Patent and Trademark Office Society (JPTOS) 204, March, 2007.
“A Manifesto on Industrial Design Protection: Resurrecting the Design Registration League”, 55 Journal of the Copyright Society of the USA 2-3, Winter-Spring, 2008.
“What is the Point of the Point of Novelty Test for Design Patent Infringement? Nail Buffers and Saddles: An Analysis Fit for an Egyptian Goddess”, 90 Journal of the Patent and Trademark Office Society (JPTOS) 401, June, 2008.
“The Dysfunctional Read Test: Missing the Mark(man) Regarding the Test for Design Patent Infringement”, 90 Journal of the Patent and Trademark Office Society (JPTOS) 533, July, 2008.
“Egyptian Goddess Exposed! But Not in the Buff(er)…”, 90 Journal of the Patent and Trademark Office Society (JPTOS) 859, December, 2008.
“Functionality and the Test for Design Patent Infringement: Rarely the Twain Shall Meet”, 77 BNA’s Patent, Trademark & Copyright Journal 1897, December 19, 2008.
“The Ornamental/ Functional Dichotomy in Design Patent Law is Akin to the Idea/Expression Dichotomy in Copyright Law”, 78 BNA’s Patent, Trademark & Copyright Journal 199, June 12, 2009.
“Functionality and Design Patent Validity and Infringement”, 91 Journal of the Patent and Trademark Office Society (JPTOS) 313, May 2009.
“Design Patents Sunk in International Seaway”, 83 BNA’s Patent, Trademark & Copyright Journal 278, December 23, 2011.
“Describing a Design – When Enough is Enough!” Co-authored with Kerry Leonard. Http://www.jptos.org/news/400/80/d,Blog.html, March 17, 2015.
“The Demise of the Functionality Doctrine in Design Patent Law”, 92 Notre Dame L. Rev. 1471 (2017).
“Determining the ‘Article of Manufacture’ Under 35 U.S.C. § 289”, 99 J. Pat. & Trademark Off. Soc’y. 349 (2017).