IP Fridays - your intellectual property podcast about trademarks, patents, designs and much more

Register for the 2016 INTA Annual Meeting at https://inta.org !! In a recent episode of the IP Fridays podcast, I spoke with Deborah Hampton, President of the International Trademark Association (INTA) and Global Brand Enforcement and Trademark Team Leader at the Chemours Company. I am Rolf Claessen and my co-host Ken Suzan and I are welcoming you to episode 173 of our podcast IP Fridays! Today’s interview guest is Deborah Hampton. She is the Global Brand Enforcement & Trademark Team Leader at The Chemours Company and is currently serving as the president of the International Trademarks Association. But before we jump into this interview, I have news for you: The US Department of Justice and the USPTO filed a joint statement supporting the right of Non-Practicing Entities (NPEs) to seek injunctions against patent infringers. This position challenges established post-eBay case law, which has made it difficult for NPEs to obtain injunctive relief. The UPC Court of Appeal ruled that security for costs can be provided through specialized insurance policies. This significantly lowers the financial barriers to bringing patent actions at the UPC, as companies no longer need to deposit large amounts of liquid capital as security. Huawei has filed a new lawsuit at UPC Mannheim against twelve Walt Disney Group companies (Ref. UPC-CFL-0000352/2026), asserting EP 3 211 897 relating to transform coefficient coding under the HEVC standard used by Disney+. Two additional suits were filed at Munich Regional Court I. In a parallel action, Huawei is suing Meta and Facebook at the UPC over EP 3 471 419, covering video compression in end devices. This continues Huawei’s strategy of pressuring streaming and platform providers into licensing its SEP portfolios. In a landmark first, the UPC Court of Appeal has referred a legal question to the European Court of Justice (ECJ): whether the UPC has jurisdiction over defendants without a seat in a UPC member state, provided a co-defendant is domiciled within the UPC territory (“long-arm jurisdiction”). The case arose from a dispute between Dyson and Chinese competitor Dreame; the first-instance injunction was simultaneously extended to cover newer Dreame hair dryers. For German companies, this signals a gradual expansion of UPC jurisdiction beyond its territorial borders, with significant implications for cross-border patent strategy. And now let’s jump into the interview with Deborah Hampton: Our conversation covered one central question:How must intellectual property enforcement evolve in a world that is more global, digital, and complex than ever before? A Career Built on Intellectual Property Deborah Hampton has spent more than four decades in the field of intellectual property. She began her career as a paralegal in a small IP firm in New York and quickly discovered her passion for the subject. Over the years, IP has taken her around the world. She has worked with leading professionals, governments, and institutions. Her experience reflects a key truth: IP is not a narrow legal discipline. It is a global ecosystem that connects law, business, innovation, and policy. Counterfeiting: A Much Bigger Problem Than Many Think One of the key topics in our discussion was counterfeiting. Many people still see counterfeit goods as a minor issue—cheap handbags or fake T-shirts bought on holiday. But the reality is far more serious. Counterfeiting creates real risks for consumers because products often bypass safety and quality standards. It damages trust in brands and undermines legitimate marketplaces, especially online. The economic impact is also significant. Companies lose revenue, innovation slows down, and jobs are affected. Smaller businesses suffer the most because they often lack the resources to fight counterfeiting effectively. Perhaps most concerning is the link to organized crime. Counterfeiting is not an isolated activity. It is often part of larger illegal networks. From Deborah Hampton’s perspective, effective enforcement must address both supply and demand. That includes stronger border measures, better online enforcement, and, importantly, consumer education. The Core Problem: Fragmentation in IP Enforcement A central theme of the interview was fragmentation. Many companies approach IP protection in silos. Legal teams, cybersecurity experts, business units, and external advisors often work separately. Even when they pursue the same goal, their efforts are not aligned. This leads to inefficiencies, missed opportunities, and unnecessary risks. To address this, Deborah Hampton has launched a Presidential Task Force at INTA. The goal is to create a unified approach to IP protection and enforcement. The idea is simple but powerful:Bring all stakeholders together and align strategy, enforcement, and measurement. This includes not only companies and their advisors but also regulators, courts, customs authorities, and IP offices. Only a coordinated approach can effectively address global challenges like counterfeiting. The Changing Role of IP Professionals Another important insight is how the role of IP professionals is changing. In the past, IP work was often reactive and focused on legal protection. Today, expectations are much higher. IP professionals are now expected to: Act as strategic advisors to the business Align IP with commercial goals Manage global and digital portfolios Use data to make better decisions At the same time, new technologies such as artificial intelligence are transforming how IP is managed and enforced. These tools create efficiencies but also raise new legal and strategic questions. Budget constraints add another layer of complexity. Teams must achieve more with fewer resources. In short, IP professionals must become more strategic, more integrated, and more business-focused. Why the INTA Annual Meeting Matters We also discussed the upcoming INTA Annual Meeting in London. For many in the field, this event is the most important gathering of the year. It brings together more than 10,000 professionals from around 140 jurisdictions. According to Deborah Hampton, the value lies in three areas: First, the return on investment is exceptionally high. The combination of education, networking, and business development is difficult to replicate elsewhere. Second, the educational program is extensive. It covers law, policy, technology, and the business of intangible assets. Third, the networking opportunities are unmatched. The meeting creates a unique environment where a year’s worth of work can be done in a single week. At the same time, Hampton addressed a sensitive issue: attending without registering. She made it clear that this practice undermines the entire system. Without proper support from participants, events like this would not be possible. A Clear Message for the Future If there is one key takeaway from the conversation, it is this: Intellectual property protection must become more coordinated, more strategic, and more closely aligned with business objectives. The challenges are growing. Counterfeiting is more sophisticated. Markets are more global. Technology is changing rapidly. But the opportunity is also clear. By breaking down silos and working together across functions and borders, companies can protect their IP more effectively and create real value. For IP professionals, this means stepping into a broader role. Not just as legal experts, but as strategic partners in the business. Rolf Claessen: Today’s guest on the IP Fridays podcast is Deborah Hampton. If you don’t know Deborah, she’s the global brand and enforcement and trademark team leader at the Chemours company and is currently serving as the president of the International Trademark Association. Thank you for being on our podcast IP Fridays, Deborah. Deborah A. Hampton: Thank you. Thank you for having me. Rolf Claessen: So you have been in the field of IP for more than 25 years now. How did you get there and where did it lead to you? Deborah A. Hampton: I’ve actually been an IP practitioner for 43 years. I started at a small IP firm in New York; it was my first paralegal position, and I fell in love with IP from the very beginning. This field has allowed me to travel the world meeting some amazing and brilliant colleagues as well as high-ranking government, judicial, and IPO officials. I’ve also worked extremely hard to stay abreast of trends, statutes, precedent cases, and practices that enhance the way we do our jobs. Rolf Claessen: Wow. That sounds really exciting. I didn’t know you’ve been in the field so long. Great to hear that. So I’m personally very interested in the fight against counterfeit goods. Why, in your personal opinion, is it so important to fight counterfeit goods? Maybe you can share your thoughts on why it is important and a little bit about how you do it. Deborah A. Hampton: There are a number of factors that I always take into consideration when it comes to counterfeit goods. Starting with consumer safety, counterfeits often bypass safety and quality standards, putting consumers at real risk. Then there’s consumer trust; fake goods undermine confidence in brands and legitimate marketplaces, especially online. Economic harm is another factor; counterfeiting drains revenue from lawful businesses, weakens innovation, and ultimately costs jobs. Smaller businesses (SMEs) are hit the hardest because they lack resources to combat fakes at scale. The factor that scares me the most is organized crime, as counterfeiting fuels criminal networks and is linked to broader illicit activity. There is also the issue of fair competition, where fake goods distort markets by undercutting compliant, responsible producers. Finally, strong enforcement protects the integrity of the IP system and the trademarks that drive investment, innovation, and growth. It is important to combat the production, sale, and demand for counterfeit goods. At INTA, our anti-counterfeiting priorities focus on customs and border measures, criminal enforcement, online counterfeiting, and consumer education. Our Anti-Counterfeiting Committee leads initiatives to address the production and sale of fakes by monitoring worldwide developments in treaties and legislation and proposing policy recommendations to the board. We also partner with stakeholders to promote cooperation across agencies and borders. Additionally, the Unreal Campaign Committee addresses the demand for counterfeit goods by educating young consumers ages 14 to 23 about the importance of brands and the dangers of fakes. I remember being that age and wanting low-priced goods that looked good, but now I realize I probably wasn’t always getting genuine products. Rolf Claessen: Yes, that helps me explain to friends who buy fake clothes on holiday in Turkey and don’t realize the harm they are doing. You’re also on the presidential task force for unifying IP protection and enforcement strategy. Can you tell us more about who is part of this task force and what the agenda is? Deborah A. Hampton: When I was nominated to become an officer, I immediately wondered what my presidential task force topic would be and what I would wear for the opening ceremonies. The 2026 task force is titled “Unifying Intellectual Property Protection and Enforcement Strategy”. The goal is to eliminate value leakage and risk caused by fragmented approaches to IP protection. We want to deliver a unified global operating model that aligns strategy and enforcement, allowing organizations to work smarter and quantify their impact across all jurisdictions. Many organizations, including my own, currently operate in disconnected silos that sometimes work at cross purposes. The challenge is to maintain internal coordination across all intangible-related aspects. We have many stakeholders—business, security, cybersecurity, outside counsel, customers, the judiciary, and IPOs—all striving for the same goal, but the road we take is not always unified. I hope to build a strong cross-functional partnership focused on protecting all forms of IP, including patents and designs, not just brands. Rolf Claessen: Right, IP includes patents and designs and everything. Most importantly, you are this year’s INTA president. What is your agenda for the year and what do you want people in the field to realize? Deborah A. Hampton: As president, I chair the board and steward our strategy and governance. I am also an ambassador, representing INTA globally to IPOs and government officials. My agenda has three pillars. First is the 2026–2029 Strategic Plan, which is the roadmap for our future. Second is my Presidential Task Force on unifying IP strategies. Third is volunteer mobilization; with a new committee structure in 2026, I want to energize our volunteers and recognize their contributions. I want people in the field to prioritize mentorship and professional development for the next generation. We need to ensure young practitioners are prepared to lead. I also want them to embrace the unified approach to IP protection we are advocating. Rolf Claessen: That’s a powerful vision. Thank you so much for sharing your insights and for the work you’re doing with INTA. Deborah A. Hampton: Thank you again for the opportunity. I really enjoyed the interview

I am Rolf Claessen and together with my co-host Ken Suzan I welcome you to Episode 172 of our podcast IP Fridays. Today’s interview guests are Co-Founder & CEO of Inception Point AI, Jeanine Wright, and Mark Stignani, who is Partner & Chair of Analytics Practice at Barnes & Thornburg LLP. https://www.linkedin.com/in/jeaninepercivalwright https://www.linkedin.com/in/markstignani Inception Point AI But before the interview I have news for you: The Unified Patent Court (UPC) ruled on Feb 19, 2026, that specialized insurance can cover security for legal costs. This is vital for firms, as it eases litigation financing and lowers financial hurdles for patent lawsuits by removing the need for high liquid assets to enforce rights at the UPC. On Feb 12, 2026, the WIPO Coordination Committee nominated Daren Tang for a second six-year term as Director General. Tang continues modernizing the global IP system, focusing on SMEs, women, and digital transformation. His confirmation in April is considered certain. An AAFA study from Feb 4 reveals 41% of tested fakes (clothing/shoes) failed safety standards. Many contained toxic chemicals like phthalates, BPA, or lead. The study highlights that counterfeiters increasingly use Meta platforms to sell unsafe imitations directly to consumers. China’s CNIPA 2026 report announced a crackdown on bad-faith patent and trademark filings. Beyond better examination quality, the agency will sanction shady IP firms and stop strategies violating “good faith” to make China’s IP system more ethical and innovation-friendly. Now, let’s hear the interview with Jeanine Wright and Mark Stignani! How AI Is Rewiring Media & Entertainment: Key Takeaways from Ken Suzan’s Conversation with Jeanine Wright and Mark Stignani In this IP Fridays interview, Ken Suzan speaks with two repeat guests who look at the same phenomenon from two angles: Jeanine Wright, Co-Founder & CEO of Inception Point AI, as a builder of AI-native entertainment, and Mark Stignani, Partner and Chair of the Analytics Practice at Barnes & Thornburg LLP, as a lawyer advising clients who are trying to use AI without stepping into a legal (or ethical) crater. What emerges is a clear picture: generative AI is not just “another tool.” It is rapidly becoming the default infrastructure for creative work—while the rules around ownership, consent, and accountability lag behind. 1) What “AI-generated personalities” really are (and why that matters) Jeanine’s company is not primarily “cloning” real people. Instead, Inception Point AI creates original, fictional personalities—characters with backstories, ambitions, and evolving arcs—then deploys them into the world as podcast hosts and content creators (and eventually actors and musicians). Her key point: the creative work still starts with humans. Writers and creators define the concept, tone, audience, and story engine. What AI changes is speed, cost, and iteration—and therefore what is economically feasible to produce. 2) The “generative content pipeline” isn’t a magic button A recurring misconception Ken raises is the idea that someone “pushes a button” and content pops out. Jeanine explains that real production looks more like a hybrid studio: A creative team defines character, voice, format, and storyline. A technical team builds what she calls an “AI orchestration layer” that combines multiple models and tools. The “stack” differs by format: the workflow for a long-form audio drama is different from a short-form beauty clip. This matters because it reframes AI content not as a single output, but as a pipeline decision: which tools, which data sources, which QA, and which governance steps are used—and where human review happens. 3) The biggest legal questions: origin, liability, ownership, and contracts Mark doesn’t name a single “top issue.” He describes a cluster of problems that repeatedly show up in client conversations: Training data and “origin story” Clients keep asking: Can I legally use AI output if the tool was trained on copyrighted works? Even if the output looks new, the unease is about whether the tool’s capabilities are built on unlicensed inputs. Liability for unintended harm Mark flags risk from AI content that inadvertently infringes, defames, or carries bias. The legal exposure may not match the creator’s intent. Ownership and protectability He points to a big gap: many jurisdictions are still reluctant to grant classic IP rights (copyright or patent-style protection) to purely AI-generated material. That creates uncertainty around whether businesses can truly “own” what they produce. Old contracts weren’t written for AI A final, practical point: many agreements—talent contracts, author clauses, data licenses—predate generative AI and simply don’t address it. That leads to disputes about scope, permissions, and—crucially—indemnities. 4) Are we at a tipping point? The “gold rush” vs. “next creative era” views Jeanine frames AI as “the world’s most powerful creative tool”—comparable to previous step-changes like animation, special effects, and CGI. For her, the strategic implication is simple: creators who learn to use AI well will expand what they can build and test, faster than ever. Mark’s metaphor is more cautionary: he calls the moment a “gold rush” where technology is sprinting ahead of law. Courts are getting flooded with foundational disputes, while legislation is fragmented—he notes that states may move faster than federal frameworks, and that labor agreements (e.g., union protections) will be a key pressure point. 5) Democratization: more creators, more niche content, more experimentation One of the most concrete themes is access. Jeanine argues AI will: Lower production barriers for independent filmmakers and storytellers. Reduce the need for “hit-making only” economics that dominate Hollywood. Make micro-audience content commercially viable. Her example is intentionally niche: highly localized, specialized content (like a “pollen report” for many markets) that would never have made financial sense before can now exist—and thrive—because the production cost drops and personalization scales. 6) Likeness, consent, and “digital performers”: what happens when AI resembles a real actor? Ken pushes into a sensitive area: what if someone generates a performance that closely resembles a living actor without consent? Mark outlines the current (imperfect) toolbox—because, as he emphasizes, most laws weren’t built for this scenario. He points to practical claims that may come into play in the U.S., such as rights of publicity and false endorsement-type theories, and notes that whether something is parody or “too close” can become a major fault line. Jeanine explains her company’s operational approach: They focus on original personalities, designed “from scratch.” They build internal checks to avoid misappropriating known names, likenesses, or recognizable identities. If they ever work with real people, the model would be licensing their likeness/voice. A subtle but important business point also appears here: Jeanine expects AI-native characters themselves to become licensable assets—meaning the entertainment economy may expand to include “celebrity rights” for fully synthetic personalities. 7) Ethics: the real line is “deception,” not “AI vs. human” The ethical core of the conversation is not “AI is bad” or “AI is good.” It’s how AI is used—especially whether audiences are misled. Mark highlights several ethical risks: Misuse of tools to manipulate faces and content (“AI slop” and political misuse). Displacement of creative workers without adequate transition support. A concern that AI often optimizes toward “statistical averages,” potentially flattening originality. Jeanine agrees ethics must be designed into the system. She describes regular discussions with an ethicist and emphasizes a principle: transparency. Her company discloses when content or personalities are AI-generated. She argues that if people understand what they’re engaging with and choose it knowingly, the ethical problem shifts from “AI exists” to “Are we tricking people?” Mark adds a real-world warning: deepfakes are now credible enough to enable serious fraud—he references a case-like scenario where a synthetic video meeting deceived an employee into authorizing a payment. The point is clear: authenticity and verification are no longer optional. 8) The “dead actor” hypothetical: legal permission vs. moral intent Ken raises a provocative scenario: an actor’s estate authorizes an AI-generated new performance, but the actor opposed such technology while alive. Neither guest offers a simplistic answer. Jeanine suggests that even if the estate holds legal rights, a company might choose to avoid such content out of respect and because the ethical “overhang” could damage the storytelling outcome. She also notes the harder question: people who died before today’s capabilities may never have been able to meaningfully consent to what AI can now do—raising questions about how we interpret legacy intent. Mark underscores the practical contract problem: many rights are drafted “in perpetuity,” but that doesn’t automatically settle the ethical question. 9) Five-year forecast: “AI everywhere,” but audiences may stratify Ken closes with a prediction question: in five years, how much entertainment content will significantly involve AI—and will audiences care? Jeanine predicts AI becomes the default creative layer for most content creation. Mark is slightly more conservative on the percentage, but adds an important nuance: the market will likely stratify. Low-cost, high-volume content may become saturated with AI, while premium segments may emphasize “human-made” as a differentiator—especially if disclosure norms become standard. Bottom line for business leaders and creators This interview lands on a pragmatic conclusion: AI will change how content is made at scale, and the competitive edge will go to teams that combine creative taste, operational discipline, and legal/ethical governance. If you’re building, commissioning, or distributing content, the questions you can’t dodge anymore are: What’s the provenance of the tools and data you rely on? Who is responsible when output harms, infringes, or misleads? What rights can you actually claim in AI-assisted work? Do your contracts and disclosures match the new reality? Ken Suzan: Thank you, Rolf. We have two returning guests to the IP Friday’s podcast. Joining me today is Jeanine Wright and Mark Stignani. Our topic for discussion, how is AI transforming the media and entertainment industries today? We look at the issues from differing perspectives. A bit about our guests, Jeanine Wright is a seasoned board member, CEO, global COO and CFO. She’s led organizations from startup to a $475 million plus revenue subsidiary of a public company. She excels in growth strategy, adopting innovative technologies, scaling operations and financial management. Jeanine is a media and entertainment attorney and trial litigator turned technologist and qualified financial expert. She is the co-founder and CEO of Inception Point AI, a growing company that is paving new ground with AI-generated personalities and content through developing technology and story. Mark Stignani is a partner with Barnes & Thornburg LLP and is based in Minneapolis, Minnesota. He is the chair of the data analytics department with a particular emphasis on artificial intelligence, machine learning, cryptocurrency and ESG. Mark combines the power of artificial intelligence and machine learning with his skills as a corporate and IP counsel to deliver unparalleled insights and strategies to his clients. Welcome, Jeanine and Mark to the IP Friday’s podcast. Jeanine Wright: Thank you. Thank you. Thank you so much for having me and fun to be back. It feels nostalgic to be here. Ken Suzan: That’s right. And you both were on the program. So it’s fantastic that you’re both back again. So our format, I’m going to ask a question to Jeanine and or Mark and sometimes to both of you. So that’s going to be how we proceed. Let’s jump right in. Jeanine, your company creates AI-generated actors. For listeners who may not be familiar, can you briefly explain what that means and what’s now possible that wasn’t even two years ago? Jeanine Wright: Sure. Yeah, we are creating AI-generated personalities. So new characters, new personalities from scratch. We design who these personalities are and will be, how they will evolve. So we give them complex backstories. We give them hopes and dreams and aspirations. We every aspect of them, their families, how they’re going to evolve. And in the same way that, say, you know, Disney designs the character for its next animated feature or, you know, an electronic arts designs a character for its next major video game. We are doing that for these personalities and then we are launching them into the world as podcast hosts, content creators on social platforms like YouTube, Instagram and TikTok. And even in the future, you know, actors in feature length films, musicians, etc. Ken Suzan: Very fascinating. Mark, from your practice, what’s the single biggest legal question or dispute you’re seeing clients wrestle with when it comes to AI and media creation? Mark Stignani: Well, I think that, you know, it’s not just one thing, it’s like four things. But most of them tend to be kind of the origin story of AI data or AI tools that they use because, you know, but for the use of AI tools trained on copyrighted materials, the tools wouldn’t really exist in their current form. So a lot of my clients are wondering about, you know, can I legally use this output if it’s built upon somebody else’s IP? The second ask, the second flavor of that is really, is there liability being created if I take AI content that inadvertently infringes or defames or biases there? So there’s the whole notion of training bias from the training materials that comes out. The third phase is really, you know, can I really own this? Because much of the world does not really give IP rights into AI-generated inventions, copyrighted materials. It’s still kind of a big razor. Then at the end of the day, you know, if it’s an existing relationship, does my contract even contemplate this? So everything from authors contracts on up to just use of data rights that predate AI. Ken Suzan: And Jeanine and Mark, a question to both of you. How would you describe where we are right now in the AI revolution in media and entertainment? Are we approaching a tipping point? And if so, what are the things we need to watch for? Jeanine Wright: Yeah, I definitely think that we’re at a phase where people are starting to come to the realization that AI is the world’s most powerful creative tool. But that, you know, storytelling and point of view is what creates demand and audiences. And AI doesn’t threaten or change that. But it does mean that as people evolve in this medium, they’re very likely going to need to adopt, utilize and figure out how to hone their craft with these AI-generated content and these AI-generated toolings. So this is, you know, something that people have done certainly in the past in all sorts of ways in using new tools. And we’ve seen that make a significant change in the industry. So you look at, you know, the dawn of animation as a medium. You look at use of special effects, computer-generated imagery in the likes of Pixar. And this is certainly the next phase of that evolution. But because of the power of the tool and what will become the ubiquity of the tool, I think that it’s pretty revolutionary and all the more necessary for people to figure out how to embrace this as part of their creative process. Ken Suzan: Thank you, Jeanine. Mark, your thoughts? Mark Stignani: Yeah, I mean, I liken this to historically to like the California gold rush right now, because, you know, the technology is so far outpaced in any of the legal frameworks that are available. And so we’re just trying to shoehorn things in left and right here. So, I mean, the courts are beginning to start to engage with the foundational questions. I don’t think they’re quite there yet. I just noticed Anthropic got sued again by another group of people, big music group, because of the downloaded works they’ve done. I mean, so the courts are, you know, the courts are certainly inundated with, you know, too many of these foundational questions. Legislatively, hard to tell. I mean, federal law, the federal government is not moving uniformly on this other than to let the gold rush continue without much check and balance to it. Whereas states are now probably moving a lot faster. Colorado, Illinois, even Minnesota is attempting to craft legislation and limitations on what you can do with content and where to go with it. So, I mean, the things we need to watch for any of the fair use decisions coming out here, you know, some of the SAG-AFTRA contract clauses. And, you know, again, the federal government, I just, you know, I got a big shrug going as to what they’re actually going to come up with here in the next 90 to 100 days. So, but, you know, I think they’ll be forced into doing something sooner than later. Ken Suzan: Okay, let’s jump into the topic of the rise of generative content pipelines. My first question to Jeanine. Studios and production companies are now building what some call generative content pipelines. This is where AI systems produce everything from scripts to visual effects to voice performances. What efficiencies and creative possibilities does this unlock for the industry? Jeanine Wright: Yeah, so this is quite a bit of what we do. And if I could help pull the curtain back and explain a little bit. Ken Suzan: That’d be great. Jeanine Wright: Yeah, there’s this assumption that, you know, somebody is just sitting behind a machine pushing a button and an out pops, you know, what it is that we’re producing. There’s actually quite a bit of humans still in the loop in the process. You know, we have my team as creators. The other half of my team is the technologists. And those creators are working largely at what we describe as the the tip of the sphere. So they’re, of course, coming up with the concepts of who are these personalities? What are these personalities, characters, backgrounds going to be a lot of like rich personality development? And then they’re creating like what are the formats? What are the kind of story arcs? What is the kinds of content that this this character wants to tell? And what are the audiences they’re desiring to reach and what’s most going to resonate with them? And then what we built internally is what we refer to as an AI orchestration layer. So that allows us to pull from basically all of the different models and then all of these different really cool AI tools. And put those together in such a way and combine those in such a way that we can have the kind of output that our creative team envisions for what they want it to be. And at the end of the day, what you what the stack looks like for, say, a long form audio drama, like the combination of LLMs that we’re going to use in different parts of scripting and production and, you know, ideating and all of that. And the kinds of tooling that we use to actually make it and get it to sound good and have the kinds of personality characteristics that we want to be in an authentic voice for a podcast is going to be different than the tech stack and the tool stack that we might use for a short form Instagram beauty tip reel. And so there’s a lot of art in being able to pull all of these tools together to get them to do exactly what you want them to do. But I think the second part of your question is just as interesting as the first. I mean, what is what possibilities is this unlocking? So of course you’re finding efficiencies in the creative production process. You can move faster. You can do things were less expensive, perhaps, and you were able to do it before. But on the creator side, I think one thing that hasn’t been talked about enough is how it is really like blown wide the aperture of what creators can do and can envision. Traditionally, you know, Hollywood podcasting, many of these businesses that become big businesses have become hit making businesses where they need to focus on a very narrow of wide gen pop content that they think is going to get tens of millions, hundreds of millions in, you know, fans and dollars in revenue for every piece of content that they make. So the problem with that is, is that it really narrows the kinds of things that ultimately get made, which is why you see things happening in Hollywood, like the Blacklist, which is, you know, this famous list of really exceptional content that remains unpredited, unproduced, or why you see things like, you know, 70 to 80% of the top 100 movies being based on pre-existing IP, right? Because these are such huge bets that you need to feel very confident that you’re going to be able to get big, big audiences and big, big dollars from it. But with AI, and really lowering the barrier to entry, lowering the costs of production and marketing, the experimentation that you can do is really, really phenomenal. So, you know, my creative team, if they have an idea, they make it, you know, they don’t have to wring their hands through like a green lighting process of, you know, should we, shouldn’t we, like we, we can make an experiment with lots of different things, we can do various different versions of something. We can see what would this look like if I placed it in the 1800s, or what if I gave this character an Australian accent, and it’s just the power of being able to have this creative partner that can ideate with you and experiment with you at rocket speed. With the creators that are embracing it, you can see how it is really fun for them to be able to have this wide of a range of possibility. Ken Suzan: Mark, when you hear about these generative pipelines, what are the immediate red flags or concerns that come to mind from a legal standpoint? How about ethics underlying all of this? Well, Mark Stignani: that was not, that’s the number one red flag because I mean, we are seeing not just that in the entertainment industry, but it literally at political levels, and the kind of the phrase, to turn the phrase AI slop being generated, we’re seeing, you know, people’s facial expressions altered. In some cases, we’re seeing AI tools being misused to exploit various groups of individuals and genders and age groups. So I mean, there’s a whole lot of things ethically that people are using AI for that just don’t quite cover it. Especially in the entertainment industry, I mean, we’re looking at a fair amount of displacement of human workers without adequate transition support, devaluation of the creative labor. I mean, the thing though that I’m always from a technical standpoint is AI is simply a statistical average of most everything. So it kind of devalues the benefit of having a human creator, a human contribution to it. That’s the ethical side. But on the legal side, I see chain of title issues. I mean, because these are built on very questionable IP ownership stages, I mean, in most of these tools, there has been some large copying, training and taking of copyrighted materials. Is it transformational? Maybe. But there’s certainly not a chain of title, nor is there permission granted for that training. I mentioned SAG-AFTRA earlier, I think there’s a potential set of union contract aspects to this that if you know many of these agreements and use sub-licenses for authors and actor agreements, they weren’t written with AI in mind. So that’s another red flag. And also I just think in indemnification. So if we ultimately get to a point where groups are liable for using content without previous license, then who’s liable? Is the tool maker the liable group or the actual end user? So those are probably my top four red flags. But I think ethics is probably my biggest place because just because we can do something from an ethical standpoint doesn’t mean we should. Jeanine Wright: Yeah, if I can respond to both of those points. I mean, one from a legal perspective, just to be very clear, I mean, we are always pulling from multiple different models and always pulling from multiple different sources. And we even have data sources that we license or use for single source of truth on certain pieces of information. So we’re always pulling things together from multiple different sources. We also have built into our process, you know, internal QAing and checking to make sure that we’re not misappropriating the name or likeness of any existing known personality or character. We are creating original personalities there. We design their voice from scratch. We design their look from scratch. So we’re not on our personality side, we’re not pulling or even taking inspiration from existing intellectual property that’s already out there in creating these personalities. On the ethical side, I agree. I mean, when we came out of stealth, we came out of stealth in September. There was certainly quite a bit of backlash from folks in my—I previously co-founded a company in the audio space. I mean, there’s been many rounds of layoffs in audio and in many other parts of the entertainment industry. So I’m very sensitive to the feedback around, like, is this job displacement? I mean, I do think that the CEO of NVIDIA said it right when he said, you’re likely not going to lose your job to AI, but you will lose your job to somebody who knows how to use AI. I think these tools are transforming the way that content is made and that the faster that people can embrace this tooling, the more likely they’re going to be having the kinds of roles that they want in, you know, in content creation and storytelling in the future. And we are hiring. I’m hiring AI video creators, AI audio creators. I’m hiring AI developers. So people who are looking for those roles, I mean, please reach out to me, we would love to work with you and we’d love to grow with you. We also take the ethics very seriously. For the last few months or so, I’ve met regularly with an ethicist, we talk about all sorts of issues around, you know, is designing AI-generated people, you know, good for humanity? And what about authenticity and transparency and deception, and how are we in building in this space going to avoid some of the problems that we’ve seen with things like social media and other forms of technology? So we keep that very top of mind and we try to build on our own internal values-based system and, you know, continue to elevate and include the humanity as part of the conversation. Ken Suzan: Thank you, Jeanine. Jeanine, some argue that AI content pipelines will level the field for filmmaking, giving independent creators access to tools that were once available only to major studios. Is that the future you envision? Jeanine Wright: I do think that with AI you will see an incredible democratization of access to technology and access to these capabilities. So I do think, you know, rise of independent filmmakers, you won’t have as many people who are sitting on a brilliant idea for the next fantastic script or movie that just cannot get it made because they will be able to with these tools, get something made and out there, at least to get the attention of somebody who could then decide that they want to invest in it at a studio kind of level in the future. The other thing that I think is really interesting is that I think, you know, AI will empower more niche content and more creators who can thrive in micro-communities. So it used to be because of this hit generation business model, everything needed to be made for the masses and a lot of content for niche audiences and micro-communities was neglected because there was just no way to make that content commercially viable. But now, if you can leverage AI—we make a pollen report podcast in 300 markets, you know, nobody would have ever made that before, but it is very valuable information, a very valuable piece of content for people who really care about the pollen in their local community. So there’s all sorts of ways that being able to leverage AI is making it more accessible both to the creator and to the audience that is looking for content that truly resonates with them. Ken Suzan: Mark, let’s talk about the legal landscape right now. If someone creates an AI-generated performance that closely resembles a living actor without their consent, what legal recourse does that actor have? Mark Stignani: Well, I mean, I think we can go back to the OpenAI Scarlett Johansson thing where, you know, if it’s simply—well, the “walks like a duck, quacks like a duck” type of aspect there. You know, I think it’s pretty straightforward that they need to walk it back. I mean, the US doesn’t have moral rights, really, but there’s a public visage right, if you will. And so, one of the things that I find predominantly useful here is that these actors likely have rights of publicity there, we probably have a Lanham Act false endorsement claim, and you know, again, if the performance is not parody, and it’s so close to the original performance, we probably have a copyright discussion. But again, all of these laws predate the use of AI, so we’re going to probably see new sets of law. I mean, we’re probably going to see “resurrection” frameworks, we’ll probably have frameworks for synthetic actors and likenesses, but the rules just aren’t there yet. So, unfortunately, your question is largely predictive versus well-settled at this point. Ken Suzan: Jeanine, your company works with AI actors. How do you navigate the questions of consent and likeness compensation when creating digital performers? Jeanine Wright: I mean, if we—so first of all, if we were to work with a person who is an existing real-life person or was an existing real-life person, then we would work with them to license their name and likeness or their voice or whatever aspects of it we were going to use in creating content in partnership with them. Not typically our business model; we are, as I said, designing all of our personalities from scratch and making all of our content originally. So, we’ve not had to do that historically. Now, you know, the flip side is: can I license my characters as if they’re similar to living characters? Like will I be able to license the name and likeness and voice of my AI-generated personalities? I think the answer is yes and we’re already starting to do that. Ken Suzan: Let’s just switch gears into ethics and AI because I find this to be a really fascinating issue. I want to look at a hypothetical. And this is to both of you, Jeanine and Mark: an AI system creates a new performance by a beloved actor who passed away decades ago, and the actor’s estate authorizes it, but the actor was known to have expressed opposition to such technology during their lifetime. Is this ethical? Jeanine Wright: This feels like a Gifts, Wills, and Trusts exam question. Ken Suzan: It sounds like it, that’s right. Jeanine Wright: Throwing me back to my law school days. Exactly. What are your thoughts? It’d be interesting to see like who has the rights there. I mean, I think if you have the legal rights, the question is around, you know, is it ethical to go against what you knew was somebody’s wishes at the time? I guess the honest answer is I don’t know. It would depend a lot on the circumstances of the case. I mean, if we were faced with a situation like that where there was a discrepancy, we would probably move away from doing that content out of respect for the deceased and out of a feeling that, you know, if this person felt strongly against it, then it would be less likely that you could make that storytelling exceptional in some way—it would color it in a way that you wouldn’t want in the outcome. And I feel like there’s—I mean, certainly going forward and it’s already happening—there are plenty of people I think who have name, likeness, and voice rights that they are ready to license that wouldn’t have this overhang. Ken Suzan: Mark, your thoughts? Mark Stignani: Yeah, I mean, again, I have to kind of go back to our property law—the Rule Against Perpetuities. You know, from a property standpoint to AI rights and likenesses—since most of the digital replica contracts that I’ve reviewed generally do talk about things in perpetuity. But if it’s not written down for that actor and the estate is doing this—is it ethical? You know, that is the debate. Jeanine Wright: Well, gold star to you, Mark, for bringing up the Rule Against Perpetuities. There’s another one that I haven’t heard for many years. This is really taking me back to my law school days. Ken Suzan: It’s a throwback. Jeanine Wright: The other thing that’s really interesting is that this technology is really so revolutionary and new that it’s hard to even contemplate now what it is going to be in a decade, much less for people who have passed away to have contemplated what the potential for it could be today. So you could have somebody who is, perhaps, a deceased musician who expressed concerns about digital representations of themselves or digital music while they were alive. But now, the possibility is that you could recreate—certainly I could use my technology to recreate—that musician from scratch in a very detailed way, trained on tons of different available data. Not just like a digital twin or a moving image of them, but to really rebuild their personality from scratch, so that they and their music could be reintroduced to totally new generations in a very respectful and authentic way to them. It’s hard to know, with the understanding that that is possible, whether or not somebody who is deceased today would or would not agree to something like that. I mean, many of them might want, under those circumstances, for their music to live on. These deceased actors and musicians could live forever with the power of AI technology. Mark Stignani: Yeah, I really just kind of go to the whole—is deep-faking a famous actor the best way to preserve them or keep them live? Again, that’s a bit more of an ethical question because the deep fakes are getting good enough right now to create huge problems. Even zoom meetings in Hong Kong where a CFO was on a call with five synthetic actors who all looked like his coworkers and they sent a big check out based upon that. So again, the technology is getting good enough to fool people. Jeanine Wright: I think that’s right, Mark, but I guess I would just highlight the same way that it always has been: the ethical line isn’t AI versus human, the ethical line is about deception. Like, are you deceiving people? And if people know what it is that they’re getting and they’re choosing to engage with it, then I think it isn’t about the power of the technology. In our business, we have elected—not everybody has—but we have elected to be AI transparent. So we tell people when they listen to our show, we include it in our show notes, we include it on our socials. Even when we’re designing our characters to be very photo-realistic, we make an extra point to make sure that people know that this is AI-generated content or an AI personality. Like, our intention is not to deceive and to be candid. From a business model perspective, we don’t need to. I mean, there’s already people who know and understand that it is AI, and AI is different than people. Because it is AI, there’s all sorts of things that you can do with it that you would not be able to do with a real person. You know, we get people who ask us on the podcast side, we get all sorts of crazy funny requests. You know, people who say, “Can I text with this personality? Can I talk to them on the phone? Can they help me cook in the kitchen? Can they sing me Happy Birthday? Can they show up at my Zoom meeting today because I think my boss would love it?” You know, all sorts of different ways that people are wanting to engage with these characters. And now we’re in the process of rolling out real-time personalities so people will be able to engage with our personalities live. It is a totally different way that people are able to engage with content, and people can, as they choose, decide what kind of content they want to engage with. Ken Suzan: Jeanine and Mark, we’re coming to the end of this podcast. I would love to keep talking for hours but we have to stay to our timetable here. Last question: five years from now, what percentage of entertainment content do you predict will involve significant AI generation, and will audiences care about that percentage? Jeanine? Jeanine Wright: I mean, I would say 99.9%. I mean, already you’re seeing—I think YouTube did a survey—that it was like 90% of its top creators said that they’re using AI as material components of their content creation process. So, I think this will be the default way that content is created. And content that is not made with AI, you know, there’ll be special film festivals for non-AI generated content, and that will be a special separate thing than the thing that everybody is doing now. Ken Suzan: Mark, your thoughts? Mark Stignani: Yeah, I go a little lower. I mean, I think Jeanine is right that we’re seeing, especially in the low-quality content creation and like the YouTube shorts and things like that, you know, there’s so much AI being pushed forward that the FTC even acquired an “AI slop” title to it. I do think that disclosure will become normalized, that the industries will be pushed to say when something is AI and what is not. And I think it’s very much like, you know, do you care about quality or not? If you value the human input or the human factor in this, there will be an upper tier where it’s “AI-free” or low AI assistant. I think that it’s going to stratify because the stuff coming through the social media platforms right now—I can’t be on it right now just because there’s so much nonsense. Even my children, who are without much AI training at all, find it just too unbelievable for them. So, I think it will become normalized, but I think that we’re going to see a bunch of tiers. Ken Suzan: Well, Jeanine and Mark, this has been a fantastic discussion of an ever-evolving field in IP law. Thank you to both of you for spending time with us today on the IP Friday’s podcast. Jeanine Wright: Thank you so much for having me. Mark Stignani: Appreciate your time. Thank you again.

My co-host Ken Suzan and I are welcoming you to episode 171 of our podcast IP Fridays! Today’s interview guest is the president of the German Patent and Trademark Office Eva Schewior! But before we jump into this very interesting interview, I have news for you: The US Supreme Court has taken up an important patent law case concerning so-called “skinny labels” for generic drugs. Specifically, the highest US court is reviewing a case in which Amarin accuses generic drug manufacturer Hikma of inciting doctors to use the cholesterol drug Vascepa in violation of patents by providing a limited package insert. In two landmark decisions, the UPC Court of Appeal clarified the criteria for inventive step and essentially confirmed the EPO’s typical “problem-solution” approach (Amgen v Sanofi and Meril v Edwards). However, experts are not entirely sure whether the Court of Appeal’s decisions, particularly those relating to the determination of the closest prior art, deviate from EPO practice. As a result of Brexit, mutual recognition of trademark use between the EU and the UK will cease to apply from January 1, 2026. Use of a trademark only in the UK will then no longer count as use of an EU trademark for the purpose of maintaining rights – and conversely, EU use will no longer count for British trademarks. Bayer is attacking several mRNA vaccine manufacturers in the US (Pfizer, BioNTech, Moderna, and J&J separately). The core allegation: patent infringements relating to old (Monsanto) patents on mRNA stabilization; Bayer is seeking damages, not sales bans. DISCO Pharmaceuticals from Cologne signs an exclusive license agreement with Amgen (potentially up to USD 618 million plus royalties) for novel cancer therapies targeting surface structures. Relevant from an IP perspective: license scope, milestones, data/know-how allocation. And now let’s jump into the interview with Eva Schewior! The German IP System in Transition: Key Insights from DPMA President Eva Schewior In an in-depth conversation on the IP Fridays podcast, Eva Schewior, President of the German Patent and Trademark Office (DPMA), outlined how Germany’s IP system is responding to rising demand, technological change, and a fundamentally altered European patent landscape. The interview offers valuable insights for innovators, companies, and IP professionals navigating patent, trademark, and design protection in Europe. Sustained Demand and Procedural Efficiency Despite the introduction of the Unitary Patent system, national German IP rights continue to see strong and growing demand. According to Schewior, application numbers at the DPMA have been increasing for years, which she views as a strong vote of confidence in the quality and reliability of German IP rights. At the same time, this success creates pressure on examination capacity. The average duration of patent proceedings at the DPMA is currently around three years and two months from filing to grant, provided applicants request examination early and avoid extensions. Internationally, this timeframe remains competitive. Nevertheless, shortening procedures remains a strategic priority. Search requests alone have risen by almost 50% over the past decade, yet the DPMA still delivers search reports on time in around 90% of cases. To better reflect applicant needs, the DPMA distinguishes between two main user groups: applicants seeking a rapid grant, often as a basis for international filings, and applicants primarily interested in a fast, high-quality initial assessment through search or first examination. Future procedural adjustments are being considered to better serve both groups. The Role of Artificial Intelligence Artificial intelligence already plays a practical role at the DPMA, particularly in patent search, classification, and the translation of Asian patent literature. Schewior emphasized that the office is closely monitoring rapid developments in AI to assess where these tools can further improve efficiency. However, she made clear that AI will remain a supporting technology. In public administration, and especially in IP examination, final decisions must always be taken and reviewed by humans. AI is seen as a way to relieve examiners of routine tasks so they can focus on substantive examination and quality. Maintaining and Monitoring Examination Quality Quality assurance is a central pillar of the DPMA’s work. Schewior reported consistently positive feedback from users, but stressed that maintaining quality is a continuous task. The office applies systematic double checks for grants and refusals and uses internal quality management tools to randomly review searches and first office actions during ongoing proceedings. External feedback is equally important. The DPMA’s User Advisory Board, which includes patent attorneys, startups, and patent information centers, plays a key role in identifying issues and suggesting improvements. Several of its recommendations have already been implemented. Trademark Filings and Bad-Faith Applications The trademark side of the DPMA has experienced particularly strong growth. In 2025, the office received around 95,000 trademark applications, an increase of approximately 18% compared to the previous year. Much of this growth came from abroad, especially from China. While new trademark types such as sound marks, multimedia marks, and holograms have so far seen only moderate uptake, word marks and figurative marks remain dominant. A growing challenge, however, is the rise in bad-faith trademark filings. The DPMA has responded by intensively training examiners to identify and handle such cases. Procedural reforms following EU trademark law modernization have also shifted competencies. Applicants can now choose whether to bring revocation and invalidity actions before the courts or directly before the DPMA. While courts may act faster, proceedings before the DPMA involve significantly lower financial risk, as each party generally bears its own costs. Accelerated Examination as a Practical Tool Despite rising filing numbers, the DPMA aims to avoid significant delays in trademark proceedings. Organizational restructuring within the trademark department is intended to balance workloads across teams. Schewior highlighted the option of accelerated trademark examination, available for a relatively modest additional fee. In practice, this can lead to registration within a matter of weeks, without affecting priority, since the filing date remains decisive. New Protection for Geographical Indications A major recent development is the extension of EU-wide protection for geographical indications to craft and industrial products. Since late 2025, the DPMA acts as the national authority for German applications in this area. The first application has already been filed, notably for a traditional German product. Under the new system, applications undergo a national examination phase at the DPMA before being forwarded to the EUIPO for final decision. Products eligible for protection must originate from a specific region and derive their quality or reputation from that origin, with at least one production step taking place there. The EU estimates that around 40 German products may qualify. Outreach, SMEs, and Education Schewior underlined the DPMA’s statutory duty to inform the public about IP rights, with a particular focus on small and medium-sized enterprises. The office has significantly expanded its presence on platforms such as LinkedIn and YouTube, offering accessible and practical IP content. Studies show that fewer than 10% of European SMEs use IP rights, despite evidence that IP-owning companies generate higher revenues. To address this gap, the DPMA is expanding outreach formats, strengthening cooperation with educational institutions, and publishing new empirical studies, including a forthcoming analysis of patenting behavior among innovative German startups conducted with WIPO. Strategic Challenges Ahead Looking forward, Schewior identified several key challenges: insufficient awareness of IP protection among SMEs and startups, a tendency in some sectors to rely solely on trade secrets, and the growing problem of product and trademark piracy linked to organized crime. From an institutional perspective, the DPMA must remain attractive and competitive in a European system offering multiple routes to protection. This requires legally robust decisions, efficient procedures, qualified staff, and continuous investment in IT and training. Careers at the DPMA Finally, Schewior highlighted recruitment as a strategic priority. The DPMA recently hired around 50 new patent examiners and continues to seek experts in fields such as electrical engineering, e-mobility, IT, and aerospace, as well as IT specialists, lawyers, and staff in many other functions. She emphasized the DPMA’s role as Europe’s largest national patent office and a globally significant, stable, and family-friendly employer at the forefront of technological development. German and European Patents as Complementary Options In her closing remarks, Schewior addressed the post-UPC patent landscape. Rather than competing, German and European patent systems complement each other. For many SMEs, a German patent alone may be sufficient, particularly where Germany is the core market. At the same time, the possibility of holding both a European patent and a national German patent offers strategic resilience, as national protection can survive even if a European patent is revoked. Her key message was clear: the range of options has never been broader, but making informed strategic choices is more important than ever. If you would like, I can also adapt this article for a specialist legal audience, condense it for a magazine format, or rework it as a thought-leadership piece for LinkedIn or your website. Rolf Claessen: Today’s interview guest is Eva Schewior. If you don’t know her yet, she is the President of the German Patent and Trademark Office. Thank you very much for being here. Eva Schewior: I’m very happy that you’re having me today. Thank you, Mr. Claessen. Rolf Claessen: Shortening the length of procedures has been a stated goal since you took office. What is the current situation, and which measures are in place to achieve this goal? Eva Schewior: First of all, I’m very glad that German IP rights are in high demand. Even though applicants in Europe have multiple options today to obtain protection for their innovations, we have seen increasing application numbers for years at my office, even after the introduction of the Unitary Patent system. I see this as very positive feedback for our work. It is clear, however, that the high number of applications leads to a constantly increasing workload. At the same time, we want to remain attractive for our applicants. This means we must offer not only high-quality IP rights but also reasonable durations of proceedings. Ensuring this remains a central and permanent objective of our strategy. The average duration of proceedings from filing to grant is currently about three years and two months, provided that applicants file an examination request within the first four months after application and do not request extensions of time limits. In other cases, the average duration of proceedings is admittedly longer. With these three years and two months, we do not have to shy away from international comparison. Nonetheless, we strive to get better. In the last few years, we were able to improve the number of concluded proceedings or to keep them at a high level. In some areas, we were even able to shorten durations of proceedings a bit, though not yet to the extent that we would have wished for. Our efforts are often overtaken by the increasing demand for our services. Just to give you an example, in the last ten to fifteen years, search requests increased by nearly fifty percent. Despite this, we managed to deliver search reports in ninety percent of all cases in time, so that customers have enough time left to take a decision on a subsequent application. I have to admit that we are not equally successful with the first official communication containing the first results of our examination. Here, our applicants need a bit more patience due to longer durations of proceedings. But I think I do not have to explain to your expert audience that longer processing times depend on various reasons, which are in no way solely to be found on our side as an examination office. To further reduce the length of proceedings, we need targeted measures. To identify them, we have analyzed the needs of our applicants. It has been shown that there are two main interests in patent procedures. About three quarters of our applicants have a very strong interest in obtaining a patent. They mainly expect us to make fast decisions on their applications. Here we find applicants who want to have their invention protected within Germany but often also wish for subsequent protection outside Germany. The remaining quarter consists of applicants that are solely interested in a fast and high-quality first assessment of the application by means of a search or a first official examination. We observe that these applicants use our services before they subsequently apply outside Germany. This latter group has little interest in continuing the procedure before my office here in Germany. We are currently considering how we can act in the best interest of both groups. What I can certainly say is that we will continue to address this topic. And of course, in general, it can be said that if we want to shorten the duration of proceedings, we need motivated and highly skilled patent examiners. Therefore, we are currently recruiting many young colleagues for our offices in Munich and Jena, and we want to make our procedures more efficient by using new technical options, thus taking workload from patent examiners and enabling them to concentrate on their core tasks and on speedy examination. Rolf Claessen: Thank you very much. I also feel that the German Patent and Trademark Office has become quite popular, especially with the start of the UPC. Some applicants seem to find that it is a very clever option to also file national patents in Germany. Eva Schewior: I think you’re perfectly right, and I think we will come to this point later. Rolf Claessen: In 2023, you mentioned artificial intelligence as an important tool for supporting patent examiners. What has happened regarding AI since then? Eva Schewior: Of course, we are already successfully using AI at our office. For instance, in the field of patent search, we use AI-based tools that make our examiners’ work easier. We also use AI quite successfully for classification and for the translation of Asian patent literature into English. In the meantime, we have seen a rapid development of AI in the market. I think it is strategically imperative to get an overview and to make realistic assessments of what AI is capable of doing to make our procedures more efficient. Therefore, we are observing the market to find out where AI can perform tasks so that we enable examiners to concentrate on their core business. There are many ideas right now in our office where artificial intelligence can help us tackle challenges, for instance demographic change, which certainly also affects our office, and maintaining our quality standards. We will strategically promote new tools in this field to cope with these challenges. But this much is also clear: humans will always stay in our focus. Especially in public administration, I consider it a fundamental principle that in the end, decisions must be taken and reviewed by humans. AI may help us reach our goals in a more efficient way, but it can never replace patent or trademark examiners. Rolf Claessen: You have made quality improvements in patent examination a priority and have already implemented a number of measures. How would you describe the current situation? Eva Schewior: I often receive positive feedback from different sides that our users are very satisfied with the quality of our examination, and I’m very glad about that. But maintaining this quality standard is a permanent task, and we must not become careless here. For years, for instance, we have established double checks for all grants and rejections. In addition, we have introduced a quality management tool that enables us, even during the examination process, to randomly check the quality of first office communications and searches. This helps us detect critical trends and take appropriate countermeasures at a very early stage. What is also very important when it comes to patent quality is to actively ask our customers for their feedback. We do this in different ways. Just to give you an example, we have a User Advisory Board, which is a panel of external experts implemented a couple of years ago. Discussing questions of quality is regularly on the agenda of this board. We carefully listen to criticism, ideas, and suggestions, and we have already implemented some of them for the benefit of the office and our users. Rolf Claessen: The German Patent and Trademark Office, as the largest patent and trademark office in Europe, records very high numbers of trademark applications. What are you currently especially concerned with in the trademark area? Eva Schewior: In 2025, we saw around ninety-five thousand trademark applications. This is an increase of eighteen percent compared to the previous year, and I have to say that this took us by surprise. Especially applications from outside Germany, and above all from China, have risen significantly. It is of course challenging to cope with such a sudden increase on an organizational level. Another challenge is dealing with trademark applications filed in bad faith, which we are currently seeing more and more of. We have thoroughly trained our trademark examiners on how to identify and handle such applications. As regards the new types of trademarks, the rush has been moderate so far. Sound marks, multimedia marks, or holograms are apparently not yet common solutions for the majority of applicants. The key focus remains on word marks and combined word and figurative marks. Nevertheless, I believe that the new trademark types are a meaningful supplement and may play a greater role as digitization advances. The most significant changes, however, concern procedures. Applicants can now choose whether to file revocation or invalidity actions with the courts or with our office. While courts may proceed somewhat faster, the financial risk is higher. Before the DPMA, each party generally bears its own costs, apart from exceptional cases. Rolf Claessen: How does this dynamic filing development impact the duration of trademark proceedings? Eva Schewior: This is indeed a major organizational challenge. For a long time, our trademark department managed to keep durations of proceedings very short, especially with regard to registration. Despite the recent increases in applications, especially in 2025, we hope to avoid a significant extension of processing times. We have restructured the organization of the trademark department to distribute applications more equally among teams. Applicants should also be aware that it is possible to request accelerated examination for a relatively moderate fee of two hundred euros. This often leads to registration within a very short time. The filing date, of course, always determines priority. Rolf Claessen: Since December 2025, the EU grants protection not only for agricultural products but also for craft and industrial products through geographical indications. Has your office already received applications? Eva Schewior: Yes, we have received our first application, and interestingly it concerns garden gnomes. Protected geographical indications are an important topic because they help maintain traditional know-how in regions and secure local jobs. The DPMA is the competent authority for Germany. Applications go through a national examination phase at our office before being forwarded to the EUIPO, which takes the final decision on EU-wide registration. Eligible products must originate from a specific region and derive their quality, reputation, or characteristics from that origin, with at least one production step taking place there. Rolf Claessen: The DPMA has expanded its outreach activities, including social media. What else is planned? Eva Schewior: Raising awareness of IP rights, especially among small and medium-sized enterprises, is part of our statutory duty. We currently use LinkedIn and YouTube to communicate IP topics in an understandable and engaging way. We also plan dedicated LinkedIn channels, for example for SMEs. Studies show that fewer than ten percent of European SMEs use IP rights, even though those that do earn significantly more on average. In 2026, we will further expand outreach activities, cooperate more closely with universities and educational institutions, and publish new studies, including one on the patenting behavior of innovative German start-ups conducted together with WIPO. Rolf Claessen: Where do you see the biggest future challenges in IP? Eva Schewior: Germany depends on innovation, but awareness of IP protection is still insufficient, particularly among SMEs and start-ups. Some companies deliberately avoid IP rights and rely on trade secrets, which I consider risky. Another growing concern is the increase in product and trademark piracy, often linked to organized crime. For our office, remaining attractive and competitive is crucial. Applicants have many options in Europe, so we need fast procedures, legally robust decisions, qualified staff, and modern IT systems. Rolf Claessen: The DPMA is currently recruiting. Which areas are you focusing on? Eva Schewior: Our focus is on patent examination and IT. We recently hired fifty new patent examiners and are particularly looking for experts in fields such as electrical engineering, e-mobility, IT, and aerospace. We are Europe’s largest national patent office and offer meaningful, secure jobs with fair compensation and strong development opportunities. Rolf Claessen: Is there a final message you would like to share with our listeners? Eva Schewior: The Unitary Patent system has created many new options. German and European patent systems do not compete; they complement each other. For many SMEs, a German patent may already be sufficient, especially where Germany is the core market. Holding both European and national patents can also be a strategic advantage. My key message is: be aware of the options, stay informed, and choose your IP strategy deliberately. Rolf Claessen: Thank you very much for being on IP Fridays. Eva Schewior: Thank you for having me. It was a pleasure.

Brian is: Managing Director, GlassRatner LinkedIn bio: https://www.linkedin.com/in/brianbuss I am Rolf Claessen and my co-host Ken Suzan and I are welcoming you to episode 170 of our podcast IP Fridays! We also want to wish you a happy holiday season and a successful year 2026! Today’s interview guest is Brian Buss. He is the managing director of GlassRatner and my co-host Ken Suzan talks with him about the valuation of intellectual property rights and damages in infringement cases. But before we jump into the interview, I have news for you! A US start-up called Operation Bluebird is trying to take over the “Twitter” trademark. It has asked the USPTO to cancel Twitter word marks, arguing that Elon Musk’s company X no longer uses them after the rebrand. Led by a former Twitter trademark lawyer, Operation Bluebird also filed its own “Twitter” trademark application. Commentators note that X could face challenges defending the legacy marks if they are truly no longer in use. In parallel, the US debate on patent quality and review procedures is intensifying. The USPTO proposed controversial rule changes that would restrict Inter Partes Review (IPR). The proposal triggered substantial backlash, with more than 11,000 public comments submitted—over 4,000 of them via the civil liberties group EFF. In the EU, a major trademark reform will take effect on 1 January 2026. It aims to simplify procedures, recognize new types of marks (including hologram, multimedia, and motion marks), and make fees more SME-friendly (e.g., lower base fees for the first class and discounts for timely renewals). Opposition procedures will be further harmonized across the EU, including a mandatory “cooling-off” period, so mid-sized brand owners should adjust filing and monitoring strategies accordingly. The Unified Patent Court (UPC) continues to see strong uptake, especially in Germany. In the first 18 months since its launch on 1 June 2023, well over 900 cases were filed, with German local divisions (Munich, Düsseldorf, Mannheim, Hamburg) leading in patent actions. While many early cases were filed in German, English now dominates as the main language of proceedings. The court has largely met its timelines, with oral hearings typically held within 12 months of filing. China has reached a milestone in its patent system: for the first time, a country has surpassed 5 million active invention patents. CNIPA emphasizes a strategic shift from “quantity to quality,” citing growth in “high-value” patents and higher commercialization rates for university inventions. China has also led global PCT filings for six consecutive years—signals of rapid technological progress relevant to IP planning for German SMEs. On 4 December 2025, the USPTO issued new guidance on “Subject Matter Eligibility Declarations.” These declarations allow applicants to submit additional evidence to support patent eligibility for emerging technologies such as AI systems and medical diagnostics, aiming to reduce the risk that breakthrough inventions are excluded from protection under strict eligibility case law. In December, the European Patent Office (EPO) introduced new patent-quality measures. Third parties can now submit observations on published applications or granted patents via a simplified online form. These Third-Party Observations—supported by evidence and even filed anonymously—go directly to examination teams to flag potential obstacles early. The Interview with Brian Buss: Ken Suzan interviews Brian Buss, a valuation and damages expert who describes his work as “financial detective” work: identifying what intellectual property and other intangible assets are worth and how they translate into measurable economic benefits such as sales, profit, earnings, or cash flow. Buss emphasizes that “IP” should be understood broadly, not only as formal rights (patents, trademarks, copyrights), but also as brands, technology portfolios, internet and social media assets, know-how, and other business intangibles that help generate economic value. A central point is that IP is often a company’s most valuable resource but is rarely measured well. Buss cites a “value gap” he observed in middle-market public companies: market capitalization often exceeds the asset values shown on balance sheets, and much of the gap is explained by intangible assets and IP. He argues that valuation helps companies understand ROI on IP spend (prosecution, protection, enforcement) and supports better strategic decision-making. He outlines common scenarios that trigger IP valuation: internal management needs (understanding performance drivers), disputes about resource allocation (e.g., technology vs. marketing), external events (M&A, licensing, partnerships, franchising, divestitures), and pricing strategy (how exclusivity supported by IP should affect product/service pricing). On “how” valuation is performed, Buss summarizes the three standard approaches—cost (replacement/replication cost), market (comparable transactions), and income (present value of future benefits). He adds that strong IP valuation requires integrating three dimensions of analysis: financial factors (performance data and projections), behavioral factors (customer demand drivers, perceptions, brand recall, feature importance), and legal factors (registration/enforcement history and competitive IP landscape). For practical readiness, he advises companies to improve data discipline: maintain solid books and records; develop credible budgets, forecasts, and business plans; document marketing activities; and actively collect/monitor website and social analytics (e.g., traffic sources, engagement). He stresses that these datasets inform valuation even for technology assets like patents, because they reveal whether protected features are actually marketed and valued by customers. A concrete example is domain names, which he frames as “virtual real estate.” In due diligence for a domain sale, he would focus on analytics showing whether the domain itself drives traffic (direct type-ins, branded search terms, bookmarks) versus traffic driven by other marketing efforts. The key question is whether the address is known and used as a pathway to the business. In closing, Buss argues that while gathering the necessary information requires effort, the investment typically pays off through greater awareness of the most valuable assets, better strategic decisions, and stronger support for growth opportunities. He presents IP valuation as a virtuous cycle of information, insight, and improved decision-making—summed up in his recurring theme: knowledge of IP value is “power” to increase business profitability and enterprise value. Here is the full transcript: Ken Suzan: Our guest today on the IP Fridays podcast is Brian Buss. Brian is a managing director with Glass-Rattner Advisory and Capital Group. Brian provides financial analysis, corporate finance, and expert testimony around the world. Ken Suzan: Mr. Buss provides strategic advice for owners of intellectual property portfolios, transactional services such as acquisition due diligence and purchase price allocation, and valuation services for trademarks, patents, copyrights, brand assets, trade secrets, technology assets, and intangibles. Ken Suzan: During his career, Mr. Buss has provided valuation opinions and financial analysis in business disputes and in transactions, and he has been retained as a testifying expert and consulting expert in federal court, state courts, and arbitration proceedings. Ken Suzan: As an expert, Mr. Buss has provided over 100 expert opinions, served as an expert witness at trial and deposition, and has been published in numerous journals and publications. He is also a participant in the International Task Force on Intellectual Property Reporting for Brands. Ken Suzan: Brian holds an MBA from San Diego State University and a bachelor’s degree from Claremont McKenna College. Welcome, Brian, to the IP Fridays podcast. Brian Buss: Thank you, Ken, for having me. I appreciate the opportunity. Ken Suzan: Excellent, Brian. Can you tell our listeners a little bit about your professional background and what you do in the world of IP? Brian Buss: Sure. I’m a valuation professional and an economic damages expert. Most of my work involves valuing intellectual property and intangible assets and, in litigation contexts, assessing economic damages—often related to IP disputes. My role is frequently to translate legal or technical issues into financial outcomes. Ken Suzan: When people hear “IP,” they often think patents, trademarks, and copyrights. In your work, how broadly do you define intellectual property and intangible assets? Brian Buss: I define it very broadly. Of course, there are the formal rights—patents, trademarks, copyrights—but there are many other intangible assets that drive value: brand reputation, customer relationships, proprietary know-how, trade secrets, data, software, domain names, social media assets, and the systems and processes a business builds over time. All of those can create economic value, even if they’re not always captured well on a balance sheet. Ken Suzan: Why is IP valuation important for companies—especially mid-sized businesses that may not have a large in-house legal or finance team? Brian Buss: Because IP and intangible assets can be a large portion—sometimes the largest portion—of what makes a business valuable, yet they’re often not measured or managed with the same discipline as tangible assets. Valuation can help companies understand what is actually driving revenue, profit, and enterprise value. It can also help them justify investment in IP creation, protection, and enforcement, and it can support strategic decisions like licensing, partnerships, acquisitions, or pricing. Ken Suzan: You’ve talked elsewhere about a “value gap” between what’s on the balance sheet and what the market thinks a company is worth. Can you explain that concept? Brian Buss: Sure. If you look at many companies—particularly in the middle market—you’ll often see that market capitalization exceeds the asset values recorded on the balance sheet. A significant portion of that difference is attributable to intangible assets and IP that accounting rules don’t fully recognize unless there’s an acquisition. That “gap” is essentially the market saying, “There is value here beyond tangible assets,” and much of it comes from intangibles. Ken Suzan: What are the most common situations where a company needs an IP valuation? Brian Buss: There are a few big categories. One is transactions—M&A, due diligence, purchase price allocation, and financing. Another is licensing and partnerships—setting royalty rates, structuring deals, or evaluating whether a proposed license makes economic sense. A third is internal management: understanding ROI on R&D, marketing, or IP spend, or resolving internal debates about what is really driving business performance. And of course, litigation—damages, reasonable royalties, lost profits, and other economic remedies tied to IP. Ken Suzan: In practical terms, how do you value IP? What methods do you use? Brian Buss: The valuation profession generally relies on three approaches: the cost approach, the market approach, and the income approach. The cost approach looks at what it would cost to recreate or replace the asset. The market approach looks at comparable transactions—if you can find good comparables. The income approach is often the most relevant for IP: it looks at the present value of future economic benefits attributable to the IP, based on cash flows, risk, and time. Ken Suzan: In addition to the financial methods, what other factors matter? For example, legal strength or market perception? Brian Buss: Exactly. A strong valuation integrates financial, behavioral, and legal analysis. Financial is obvious—historic results, projections, margins, pricing. Behavioral is about demand drivers—what customers value, how they perceive the brand, how features influence purchasing decisions, and what drives loyalty or switching. Legal involves the nature of the IP rights, scope, enforceability, registration and maintenance history, and the competitive landscape. IP exists at the intersection of all three. Ken Suzan: What kind of information should a company have ready if they want to do an IP valuation? Brian Buss: Good books and records are essential—reliable financial statements, product-level revenue and cost data if possible, and credible budgets and forecasts. They should also document marketing activities, product positioning, and the role of IP in commercialization. For digital and brand assets, analytics matter—website traffic sources, conversion data, engagement metrics, and social media statistics. The more you can connect the IP or intangible asset to measurable economic outcomes, the stronger the valuation. Ken Suzan: That’s interesting—people might not think that marketing analytics matter for patents. Can you explain how those link up? Brian Buss: Sure. A patent might cover a particular feature or technology, but the key economic question is: does that feature drive demand? If customers value it and it supports pricing power, adoption, or market share, that’s important. Marketing materials, customer communications, sales training, and analytics can help show what the company emphasizes and what resonates with customers. It helps tie the legal right to real-world economic value. Ken Suzan: You mentioned domain names earlier. Many people underestimate them. How do you think about domain names as an asset? Brian Buss: I often describe domain names as virtual real estate. The question is whether the domain is a meaningful pathway to the business. In a valuation context, you’d look at the domain’s role in generating traffic—direct navigation, branded search, bookmarks, and repeat visits. You’d also look at how much traffic is attributable to the domain itself versus paid marketing. If the domain is known and drives organic traffic and credibility, it can be quite valuable. Ken Suzan: So, if you’re doing due diligence on a domain sale, what would you look for? Brian Buss: I’d look closely at analytics: traffic volume over time, sources of traffic, geographic distribution, conversion rates, and the relationship between marketing spend and traffic. If traffic is mostly paid and disappears when marketing stops, that’s different than sustained direct navigation. I’d also look at brand alignment, risk factors, and whether there are disputes or competing rights. Ken Suzan: For a mid-sized company listening to this, what are the biggest “misses” you see—things companies do that reduce the value they can capture from IP? Brian Buss: A big one is not collecting and organizing information that demonstrates value. Another is not aligning IP strategy with business strategy—filing patents or trademarks without a clear plan for how they support products, markets, and revenue. Some companies also underinvest in documenting commercialization and customer impact, which becomes important in transactions and disputes. And sometimes they simply don’t revisit their portfolios to understand what is still relevant and what is not. Ken Suzan: How should companies think about ROI on IP spend—both the costs of prosecution and the costs of enforcement? Brian Buss: They should start by identifying the economic role of the IP: is it supporting pricing power, is it protecting market share, is it enabling licensing revenue, is it reducing competitive entry? Then they can compare the costs—filing, maintenance, monitoring, enforcement—against the value it protects or creates. Valuation can provide a framework for that, and it can also help prioritize where to spend resources. Ken Suzan: When valuation is used in litigation, what are the typical types of damages analysis you’re asked to perform? Brian Buss: Commonly, reasonable royalty analysis, lost profits, unjust enrichment, and sometimes disgorgement depending on the jurisdiction and the claims. The specifics depend on the legal framework, but the core is the same: quantify the economic harm and connect it causally to the alleged infringement or misappropriation, using financial data, market evidence, and assumptions that can be tested. Ken Suzan: Are there misconceptions about valuation that you’d like to correct for our audience? Brian Buss: One misconception is that valuation is purely subjective or that it’s just an “opinion.” A good valuation is grounded in data, established methodologies, and transparent assumptions. Another is that intangibles can’t be measured. They can be measured—often through the economic benefits they create and through evidence of customer behavior and market dynamics. It takes work, but it’s doable. Ken Suzan: If a company wants to prepare for a future transaction—say a sale or a major partnership—what are some practical steps they can take now to make their IP story stronger? Brian Buss: Maintain clean records, develop credible forecasts, and document the link between IP and business results. Make sure registrations and maintenance are up to date. Track how IP supports products and competitive differentiation. Collect evidence of brand strength and customer loyalty. And if possible, structure internal reporting so you can see performance by product line or offering. That helps in due diligence and helps buyers or partners understand what they’re paying for. Ken Suzan: Any final thoughts or advice for owners of intellectual property portfolios, transactional professionals, or executives listening to this? Brian Buss: I’d emphasize that the investment in gathering the information needed for evaluation typically pays off. It creates awareness of the most valuable assets, supports better strategic decisions, and makes it easier to pursue growth opportunities. IP valuation is a virtuous cycle of information gathering, analysis, deeper understanding, and then decision-making. Knowledge is power, and knowledge of the value of your IP is the power to increase the profitability and value of your business. IP valuation is a key element of the management toolkit. Ken Suzan: Brian, well said, and thank you so much for taking time today to be on the IP Fridays podcast. Brian Buss: Thank you, Ken. I really appreciate the opportunity.

I am Rolf Claessen and together with my co-host Ken Suzan I am welcoming you to episode 169 of our podcast IP Fridays! Today’s interview guest is Prof. Aloys Hüttermann, co-founder of my patent law firm Michalski Hüttermann & Partner and a true expert on the Unified Patent Court. He has written several books about the new system and we talk about all the things that plaintiffs and defendants can learn from the first decisions of the court and what they mean for strategic decisions of the parties involved. But before we jump into this very interesting interview, I have news for you! The US Patent and Trademark Office (USPTO) is planning rule changes that would make it virtually impossible for third parties to challenge invalid patents before the patent office. Criticism has come from the EFF and other inventor rights advocates: the new rules would play into the hands of so-called non-practicing entities (NPEs), as those attacked would have few cost-effective ways to have questionable patents deleted. The World Intellectual Property Organization (WIPO) reports a new record in international patent applications: in 2024, around 3.7 million patent applications were filed worldwide – an increase of 4.9% over the previous year. The main drivers were Asian countries (China alone accounted for 1.8 million), while demand for trademark protection has stabilized after the pandemic decline. US rapper Eminem is taking legal action in Australia against a company that sells swimwear under the name “Swim Shady.” He believes this infringes on his famous “Slim Shady” brand. The case illustrates that even humorous allusions to well-known brand names can lead to legal conflicts. A new ruling by the Unified Patent Court (UPC) demonstrates its cross-border impact. In “Fujifilm v. Kodak,” the local chamber in Mannheim issued an injunction that extends to the UK despite Brexit. The UPC confirmed its jurisdiction over the UK parts of a European patent, as the defendant Kodak is based in a UPC member state. A dispute over standard patents is looming at the EU level: the Legal Affairs Committee (JURI) of the European Parliament voted to take the European Commission to the European Court of Justice. The reason for this is the Commission’s controversial withdrawal of a draft regulation on the licensing of standard-essential patents (SEPs). Parliament President Roberta Metsola is to decide by mid-November whether to file the lawsuit. In trademark law, USPTO Director Squires reported on October 31, 2025, that a new unit (“Trademark Registration Protection Office”) had removed approximately 61,000 invalid trademark applications from the registries. This cleanup of the backlog relieved the examining authority and accelerated the processing of legitimate applications. Now let’s jump into the interview with Aloys Hüttermann: The Unified Patent Court Comes of Age – Insights from Prof. Aloys Hüttermann The Unified Patent Court (UPC) has moved from a long-discussed project to a living, breathing court system that already shapes patent enforcement in Europe. In a recent IP Fridays interview, Prof. Aloys Hüttermann – founder and equity partner at Michalski · Hüttermann & Partner and one of the earliest commentators on the UPC – shared his experiences from the first years of practice, as well as his view on how the UPC fits into the global patent litigation landscape. This article summarises the key points of that conversation and is meant as an accessible overview for in-house counsel, patent attorneys and business leaders who want to understand what the UPC means for their strategy. How Prof. Hüttermann Became “Mr. UPC” Prof. Hüttermann has been closely involved with the UPC for more than a decade. When it became clear, around 13 years ago, that the European project of a unified patent court and a unitary patent was finally going to happen, he recognised that this would fundamentally change patent enforcement in Europe. He started to follow the legislative and political developments in detail and went beyond mere observation. As author and editor of several books and a major commentary on the UPC, he helped shape the discussion around the new system. His first book on the UPC appeared in 2016 – years before the court finally opened its doors in 2023. What fascinated him from the beginning was the unique opportunity to witness the creation of an entirely new court system, to analyse how it would be built and, where possible, to contribute to its understanding and development. It was clear to him that this system would be a “game changer” for European patent enforcement. UPC in the Global Triangle: Europe, the US and China In practice, most international patent disputes revolve around three major regions: the UPC territory in Europe, the United States and China. Each of these regions has its own procedural culture, cost structure and strategic impact. From a territorial perspective, the UPC is particularly attractive because it can, under the right conditions, grant pan-European injunctions that cover a broad range of EU Member States with a single decision. This consolidation of enforcement is something national courts in Europe simply cannot offer. From a cost perspective, the UPC is significantly cheaper than US litigation, especially if one compares the cost of one UPC action with a bundle of separate national cases in large European markets. When viewed against the territorial reach and procedural speed, the “bang for the buck” is very compelling. China is again a different story. The sheer volume of cases there is enormous, with tens of thousands of patent infringement cases per year. Chinese courts are known for their speed; first-instance decisions within about a year are common. In this respect they resemble the UPC more than the US does. The UPC also aims at a roughly 12 to 15 month time frame for first-instance cases where validity is at issue. The US, by contrast, features extensive discovery, occasionally jury trials and often longer timelines. The procedural culture is very different. The UPC, like Chinese courts, operates without discovery in the US sense, which makes proceedings more focused on the written record and expert evidence that the parties present, and less on pre-trial disclosure battles. Whether a company chooses to litigate in the US, the UPC, China, or some combination of these forums will depend on where the key markets and assets are. However, in Prof. Hüttermann’s view, once Europe is an important market, it is hard to justify ignoring the UPC. He expects the court’s caseload and influence to grow strongly over the coming years. A Landmark UPC Case: Syngenta v. Sumitomo A particularly important case in which Prof. Hüttermann was involved is the Syngenta v. Sumitomo matter, concerning a composition patent. This case has become a landmark in UPC practice for several reasons. First, the Court of Appeal clarified a central point about the reach of UPC injunctions. It made clear that once infringement is established in one Member State, this will usually be sufficient to justify a pan-European injunction covering all UPC countries designated by the patent. That confirmation gave patent owners confidence that the UPC can in fact deliver broad, cross-border relief in one go. Second, the facts of the case raised novel issues about evidence and territorial reach. The allegedly infringing product had been analysed based on a sample from the Czech Republic, which is not part of the UPC system. Later, the same product with the same name was marketed in Bulgaria, which is within UPC territory. The Court of Appeal held that the earlier analysis of the Czech sample could be relied on for enforcement in Bulgaria. This showed that evidence from outside the UPC territory can be sufficient, as long as it is properly linked to the products marketed within the UPC. Third, the Court of Appeal took the opportunity to state its view on inventive step. It confirmed that combining prior-art documents requires a “pointer”, in line with the EPO’s problem-solution approach. The mere theoretical possibility of extracting a certain piece of information from a document does not suffice to justify an inventive-step attack. This is one of several decisions where the UPC has shown a strong alignment with EPO case law on substantive patentability. For Prof. Hüttermann personally, the case was also a lesson in oral advocacy before the UPC. During the two appeal hearings, the presiding judge asked unexpected questions that required quick and creative responses while the hearing continued. His practical takeaway is that parties should appear with a small, well-coordinated team: large enough to allow someone to work on a tricky question in the background, but small enough to remain agile. Two or three lawyers seem ideal; beyond that, coordination becomes difficult and “too many cooks spoil the broth”. A Game-Changing CJEU Decision: Bosch Siemens Hausgeräte v. Electrolux Surprisingly, one of the most important developments for European patent litigation in the past year did not come from the UPC at all, but from the Court of Justice of the European Union. In Bosch Siemens Hausgeräte v. Electrolux, the CJEU revisited the rules on cross-border jurisdiction under the Brussels I Recast Regulation (Brussels Ia). Previously, under what practitioners often referred to as the GAT/LuK regime, a court in one EU country was largely prevented from granting relief for alleged infringement in another country if the validity of the foreign patent was contested there. This significantly limited the possibilities for cross-border injunctions. In Bosch, the CJEU changed course. Without going into all procedural details, the essence is that courts in the EU now have broader powers to grant cross-border relief when certain conditions are met, particularly when at least one defendant is domiciled in the forum state. The concept of an “anchor defendant” plays a central role: if you sue one group company in its home forum, other group companies in other countries, including outside the EU, can be drawn into the case. This has already had practical consequences. German courts, for example, have issued pan-European injunctions covering around twenty countries in pharmaceutical cases. There are even attempts to sue European companies for infringement of US patents based on acts in the US, using the logic of Bosch as a starting point. How far courts will ultimately go remains to be seen, but the potential is enormous. For the UPC, this development is highly relevant. The UPC operates in the same jurisdictional environment as national courts, and many defendants in UPC cases will be domiciled in UPC countries. This increases the likelihood that the UPC, too, can leverage the broadened possibilities for cross-border relief. In addition, we have already seen UPC decisions that include non-EU countries such as the UK within the scope of injunctions, in certain constellations. The interaction between UPC practice and the Bosch jurisprudence of the CJEU is only beginning to unfold. Does the UPC Follow EPO Case Law? A key concern for many patent owners and practitioners is whether the UPC will follow the EPO’s Boards of Appeal or develop its own, possibly divergent, case law on validity. On procedural matters, the UPC is naturally different from the EPO. It has its own rules of procedure, its own timelines and its own tools, such as “front-loaded” pleadings and tight limits on late-filed material. On substantive law, however, Prof. Hüttermann’s conclusion is clear: there is “nothing new under the sun”. The UPC’s approach to novelty, inventive step and added matter is very close to that of the EPO. The famous “gold standard” for added matter appears frequently in UPC decisions. Intermediate generalisations are treated with the same suspicion as at the EPO. In at least one case, the UPC revoked a patent for added matter even though the EPO had granted it in exactly that form. The alignment is not accidental. The UPC only deals with European patents granted by the EPO; it does not hear cases on purely national patents. If the UPC were more generous than the EPO, many patents would never reach it. If it were systematically stricter, patentees would be more tempted to opt out of the system. In practice, the UPC tends to apply the EPO’s standards and, where anything differs, it is usually a matter of factual appreciation rather than a different legal test. For practitioners, this has a very practical implication: if you want to predict how the UPC will decide on validity, the best starting point is to ask how the EPO would analyse the case. The UPC may not always reach the same result in parallel EPO opposition proceedings, but the conceptual framework is largely the same. Trends in UPC Practice: PIs, Equivalents and Division-Specific Styles Even in its early years, certain trends and differences between UPC divisions can be observed. On preliminary injunctions, the local division in Düsseldorf has taken a particularly proactive role. It has been responsible for most of the ex parte PIs granted so far and applies a rather strict notion of urgency, often considering one month after knowledge of the infringement as still acceptable, but treating longer delays with scepticism. Other divisions tend to see two months as still compatible with urgency, and they are much more cautious with ex parte measures. Munich, by contrast, has indicated a strong preference for inter partes PI proceedings and appears reluctant to grant ex parte relief at all. A judge from Munich has even described the main action as the “fast” procedure and the inter partes PI as the “very fast” one, leaving little room for an even faster ex parte track. There are also differences in how divisions handle amendments and auxiliary requests in PI proceedings. Munich has suggested that if a patentee needs to rely on claim amendments or auxiliary requests in a PI, the request is unlikely to succeed. Other divisions have been more open to considering auxiliary requests. The doctrine of equivalents is another area where practice is not yet harmonised. The Hague division has explicitly applied a test taken from Dutch law in at least one case and found infringement by equivalence. However, the Court of Appeal has not yet endorsed a specific test, and in another recent Hague case the same division did not apply that Dutch-law test again. The Mannheim division has openly called for the development of an autonomous, pan-European equivalence test, but has not yet fixed such a test in a concrete decision. This is clearly an area to watch. Interim conferences are commonly used in most divisions to clarify issues early on, but Düsseldorf often dispenses with them to save time. In practice, interim conferences can be very helpful for narrowing down the issues, though parties should not expect to be able to predict the final decision from what is discussed there. Sometimes topics that dominate the interim conference play little or no role in the main oral hearing. A Front-Loaded System and Typical Strategic Mistakes UPC proceedings are highly front-loaded and very fast. A defendant usually has three months from service of the statement of claim to file a full statement of defence and any counterclaim for revocation. This is manageable, but only if the time is used wisely. One common strategic problem is that parties lose time at the beginning and only develop a clear strategy late in the three-month period. According to Prof. Hüttermann, it is crucial to have a firm strategy within the first two or three weeks and then execute it consistently. Constantly changing direction is a recipe for failure in such a compressed system. Another characteristic is the strict attitude towards late-filed material. It is difficult to introduce new documents or new inventive-step attacks later in the procedure. In some cases even alternative combinations of already-filed prior-art documents have been viewed as “new” attacks and rejected as late. At the appeal stage, the Court of Appeal has even considered new arguments based on different parts of a book already in the file as potentially late-filed. This does not mean that parties should flood the court with dozens of alternative attacks in the initial brief. In one revocation action, a plaintiff filed about fifty different inventive-step attacks, only to be told by the court that this was not acceptable and that the attacks had to be reduced and structured. The UPC is not a body conducting ex officio examination. It is entitled to manage the case actively and to ask parties to focus on the most relevant issues. Evidence Gathering, Protective Letters and the Defendant’s Perspective The UPC provides powerful tools for both sides. Evidence inspection is becoming more common, not only at trade fairs but also at company premises. This can be a valuable tool for patentees, but it also poses a serious risk for defendants who may suddenly face court-ordered inspections. From the perspective of potential defendants, protective letters are an important instrument, especially in divisions like Düsseldorf where ex parte PIs are possible. A well-written protective letter, filed in advance, can significantly reduce the risk of a surprise injunction. The court fees are moderate, but the content of the protective letter must be carefully prepared; a poor submission can cause more harm than good. Despite the strong tools available to patentees, Prof. Hüttermann does not view the UPC as unfair to defendants. If a defendant files a solid revocation counterclaim, the pressure shifts to the patentee, who then has only two months to reply, prepare all auxiliary requests and adapt the enforcement strategy. This is even more demanding than at the EPO, because the patentee must not only respond to validity attacks but also ensure that any amended claims still capture the allegedly infringing product. It is entirely possible to secure the survival of a patent with an auxiliary request that no longer covers the defendant’s product. In that scenario, the patentee has “won” on validity but lost the infringement case. Managing this tension under tight time limits is a key challenge of UPC practice. The Future Role of the UPC and How to Prepare Today the UPC hears a few hundred cases per year, compared with several thousand patent cases in the US and tens of thousands in China. Nevertheless, both the court itself and experienced practitioners see significant growth potential. Prof. Hüttermann expects case numbers to multiply in the medium term. Whether the UPC will become the first choice forum in global disputes or remain one pillar in parallel proceedings alongside the US and China will depend on the strategies of large patentees and the evolution of case law. However, the court is well equipped: it covers a large, economically important territory, is comparatively cost-effective and offers fast procedures with robust remedies. For companies that may end up before the UPC, preparation is essential. On the offensive side, that means building strong evidence and legal arguments before filing, being ready to proceed quickly and structured, and understanding the specific styles of the relevant divisions. On the defensive side, it may mean filing protective letters in risk-exposed markets, preparing internal processes for rapid reaction if a statement of claim arrives, and taking inspection requests seriously. Conclusion The Unified Patent Court has quickly moved from theory to practice. It offers pan-European relief, fast and front-loaded procedures, and a substantive approach that closely mirrors the EPO’s case law. At the same time, national and EU-level developments like the Bosch Siemens Hausgeräte v. Electrolux decision are reshaping the jurisdictional framework in which the UPC operates, opening the door for far-reaching cross-border injunctions. For patent owners and potential defendants alike, the message is clear: the UPC is here to stay and will become more important year by year. Those who invest the time to understand its dynamics now – including its alignment with the EPO, the differences between divisions, and the strategic implications of its procedures – will be in a much better position when the first UPC dispute lands on their desk. Here is the full transcript of the interview:  Rolf Claessen:Today’s interview guest is Prof. Aloys Hüttermann. He is founder and equity partner of my firm, Michalski · Hüttermann & Partner. More importantly for today’s interview, he has written several books about the Unified Patent Court. The first one already came out in 2016. He is co-editor and author of one of the leading commentaries on the UPC and has gained substantial experience in UPC cases so far – one of them even together with me. Thank you very much for being on IP Fridays again, Aloys. Aloys Hüttermann:Thank you for inviting me, it’s an honour. How did you get so deeply involved in the UPC? Rolf Claessen:Before we dive into the details, how did you end up so deeply involved in the Unified Patent Court? And what personally fascinates you about this court? Aloys Hüttermann:This goes back quite a while – roughly 13 years. At that time it became clear that, after several failed attempts, Europe would really get a pan-European court and a pan-European patent, and that this time it was serious. I thought: this is going to be the future. That interested me a lot, both intellectually and practically. A completely new system was being built. You could watch how it evolved – and, if possible, even help shape it a bit. It was also obvious to me that this would be a complete game changer. Nobody expected that it would take until 2023 before the system actually started operating, but now it is here. I became heavily interested early on. As you mentioned, my first book on the UPC was published in 2016, in the expectation that the system would start soon. It took a bit longer, but now we finally have it. UPC vs. US and China – speed, cost and impact Rolf Claessen:Before we go deeper into the UPC, let’s zoom out. If you compare litigation before the UPC with patent litigation in the US and in China – in terms of speed, cost and the impact of decisions – what are the key differences that a business leader should understand? Aloys Hüttermann:If you look at the three big regions – the UPC territory in Europe, the US and China – these are the major economic areas for many technology companies. One important point is territorial reach. In the UPC, if the conditions are met, you can get pan-European injunctions that cover many EU Member States in one go. We will talk about this later in more detail. On costs there is a huge difference between the US and the UPC. The UPC is much cheaper than US litigation, especially once you look at the number of countries you can cover with one case if the patent has been validated widely. China is different again. The number of patent infringement cases there is enormous. I have seen statistics of around 40,000 infringement cases per year in China. That is huge – compared with roughly 164 UPC infringement cases in the first year and maybe around 200 in the current year. On speed, Chinese courts are known to be very fast. You often get a first-instance decision in about a year. The UPC is comparable: if there is a counterclaim for revocation, you are looking at something like 12 to 15 months for a first-instance decision. The US can be slower, and the procedure is very different. You have full discovery, you may have juries. None of that exists at the UPC. From that perspective, Chinese and UPC proceedings are more similar to each other than either is to the US. The UPC is still a young court. We have to see how influential its case law will be worldwide in the long run. What we already see, at least in Germany, is a clear trend away from purely national patent litigation and towards the UPC. That is inside Europe. The global impact will develop over time. When is the UPC the most powerful tool? Rolf Claessen:Let’s take the perspective of a global company. It has significant sales in Europe and in the US and production or key suppliers in China. In which situations would you say the UPC is your most powerful tool? And when might the US or China be the more strategic battleground? Aloys Hüttermann:To be honest, I would almost always consider bringing a case before the UPC. The “bang for the buck” is very good. The UPC is rather fast. That alone already gives you leverage in negotiations. The threat of a quick, wide-reaching injunction is a strong negotiation tool. Whether you litigate in the US instead of the UPC, or in addition, or whether you also go to China – that depends heavily on the individual case: where the products are sold, where the key markets are, where the defendant has assets, and so on. But in my view, once you have substantial sales in Europe, you should seriously consider the UPC. And for that reason alone I expect case numbers at the UPC to increase significantly in the coming years. A landmark UPC case: Syngenta vs. Sumitomo (composition patent) Rolf Claessen:You have already been involved in several UPC cases – and one of them together with me, which was great fun. Looking at the last 12 to 18 months, is there a case, decision or development that you find particularly noteworthy – something that really changed how you think about UPC litigation or how companies should prepare? Aloys Hüttermann:The most important UPC case I have been involved in so far is the Syngenta v. Sumitomo case on a composition patent. It has become a real landmark and was even mentioned in the UPC’s annual report. It is important for several reasons. First, it was one of the first cases in which the Court of Appeal said very clearly: if you have established infringement in one Member State, that will usually be enough for a pan-European injunction covering all UPC countries designated by the patent. That is a powerful statement about the reach of UPC relief. Second, the facts were interesting. The patent concerned a composition. We had analysed a sample that had been obtained in the Czech Republic, which is not a UPC country. Later, the same product was marketed under the same name in Bulgaria, which is in the UPC. The question was whether the analysis of the Czech sample could be used as a basis for enforcement in Bulgaria. The Court of Appeal said yes, that was sufficient. Third, the Court of Appeal took the opportunity to say something about inventive step. It more or less confirmed that the UPC’s approach is very close to the EPO’s problem-solution approach. It emphasised that, if you want to combine prior-art documents, you need a “pointer” to do so. The mere theoretical possibility that a skilled person could dig a particular piece of information out of a document is not enough. For me personally, the most memorable aspect of this case was not the outcome – that was largely in line with what we had expected – but the oral hearings at the appeal stage. We had two hearings. In both, the presiding judge asked us a question that we had not anticipated at all. And then you have about 20 minutes to come up with a convincing answer while the hearing continues. We managed it, but it made me think a lot about how you should prepare for oral hearings at the UPC. My conclusion is: you should go in with a team, but not too big. In German we say, “Zu viele Köche verderben den Brei” – too many cooks spoil the broth. Two or three people seems ideal. One of them can work quietly on such a surprise question at the side, while the others continue arguing the case. In the end the case went very well for us, so I can speak about it quite calmly now. But in the moment your heart rate definitely goes up. The CJEU’s Bosch Siemens Hausgeräte v. Electrolux decision – a real game changer Rolf Claessen:You also mentioned another development that is not even a UPC case, but still very important for European patent litigation. Aloys Hüttermann:Yes. In my view, the most important case of the last twelve months is not a UPC decision but a judgment of the Court of Justice of the EU (CJEU): Bosch Siemens Hausgeräte v. Electrolux. This is going to be a real game changer for European IP law, and I am sure we have not seen the end of its effects yet. One example: someone has recently sued BMW before the Landgericht München I, a German court, for infringement of a US patent based on acts in the US. The argument is that this could be backed by the logic of Bosch Siemens Hausgeräte v. Electrolux. We do not know yet what the court will do with that, but the fact that people are trying this shows how far-reaching the decision might be. Within the UPC we have already seen injunctions being issued for countries outside the UPC territory and even outside the EU, for example including the UK. So you see how these developments start to interact. Rolf Claessen:For listeners who have not followed the case so closely: in very simple terms, the CJEU opened the door for courts in one EU country to rule on patent infringement that took place in other countries as well, right? Aloys Hüttermann:Exactly. Before Bosch Siemens Hausgeräte v. Electrolux we had what was often called the GAT/LuK regime. The basic idea was: if you sue someone in, say, Germany for infringement of a European patent, and you also ask for an injunction for France, and the defendant then challenges the validity of the patent in France, the German court cannot grant you an injunction covering France. The Bosch decision changed that. The legal basis is the Brussels I Recast Regulation (Brussels Ia), which deals with jurisdiction in civil and commercial matters in the EU. It is not specific to IP; it applies to civil cases generally, but it does have some provisions that are relevant for patents. In Bosch, a Swedish court asked the CJEU for guidance on cross-border injunctions. The CJEU more or less overturned its old GAT/LuK case law. Now, in principle, if the defendant is domiciled in a particular Member State, the courts of that state can also grant cross-border relief for other countries, under certain conditions. We will not go into all the details here – that could fill a whole separate IP Fridays episode – but one important concept is the “anchor defendant”. If you sue a group of companies and at least one defendant is domiciled in the forum state, then other group companies in other countries – even outside the EU, for example in Hong Kong – can be drawn into the case and affected by the decision. This is not limited to the UPC, but of course it is highly relevant for UPC litigation. Statistically it increases the chances that at least one defendant will be domiciled in a UPC country, simply because there are many of them. And we have already seen courts like the Landgericht München I grant pan-European injunctions for around 20 countries in a pharmaceutical case. Rolf Claessen:Just to clarify: does it have to be the headquarters of the defendant in that country, or is any registered office enough? Aloys Hüttermann:That is one of the open points. If the headquarters are in Europe, then it is clear that subsidiaries outside Europe can be affected as well. If the group’s headquarters are outside Europe and only a subsidiary is here, the situation is less clear and we will have to see what the courts make of it. Does the UPC follow EPO case law? Rolf Claessen:Many patent owners and in-house counsel wonder: does the UPC largely follow the case law of the EPO Boards of Appeal, or is it starting to develop its own distinct line? What is your impression so far – both on substantive issues like novelty and inventive step, and on procedural questions? Aloys Hüttermann:On procedure the UPC is, of course, very different. It has its own procedural rules and they are not the same as at the EPO. If we look at patent validity, however, my impression is that there is “nothing new under the sun” – that was the title of a recent talk I gave and will give again in Hamburg. Substantively, the case law of the UPC and the EPO is very similar. For inventive step, people sometimes say the UPC does not use the classical problem-solution approach but a more “holistic” approach – whatever that is supposed to mean. In practice, in both systems you read and interpret prior-art documents and decide what they really disclose. In my view, the “error bar” that comes from two courts simply reading a document slightly differently is much larger than any systematic difference in legal approach. If you look at other grounds, such as novelty and added matter, the UPC even follows the EPO almost verbatim. The famous “gold standard” for added matter appears all over UPC decisions, even if the EPO case numbers are not always cited. The same is true for novelty. So the rule-based, almost “Hilbertian” EPO approach is very much present at the UPC. There is also a structural reason for that. All patents that the UPC currently deals with have been granted by the EPO. The UPC does not handle patents granted only by national offices. If the UPC wanted to deviate from EPO case law and be more generous, then many patents would never reach the UPC in the first place. The most generous approach you can have is the one used by the granting authority – the EPO. So if the UPC wants to be different, it can only be stricter, not more lenient. And there is little incentive to be systematically stricter, because that would reduce the number of patents that are attractive to enforce before the UPC. Patent owners might simply opt out. Rolf Claessen:We also talked about added matter and a recent case where the Court of Appeal was even stricter than the EPO. That probably gives US patent practitioners a massive headache. They already struggle with added-matter rules in Europe, and now the UPC might be even tougher. Aloys Hüttermann:Yes, especially on added matter. I once spoke with a US practitioner who said, “We hope the UPC will move away from intermediate generalisations.” There is no chance of that. We already have cases where the Court of Appeal confirmed that intermediate generalisations are not allowed, in full alignment with the EPO. You mentioned a recent case where a patent was revoked for added matter, even though it had been granted by the EPO in exactly that form. This shows quite nicely what to expect. If you want to predict how the UPC will handle a revocation action, the best starting point is to ask: “What would the EPO do?” Of course, there will still be cases where the UPC finds an invention to be inventive while the EPO, in parallel opposition proceedings, does not – or vice versa. But those are differences in the appreciation of the facts and the prior art, which you will always have. The underlying legal approach is essentially the same. Rolf Claessen:So you do not see a real example yet where the UPC has taken a totally different route from the EPO on validity? Aloys Hüttermann:No, not really. If I had to estimate how the UPC will decide, I would always start from what I think the EPO would have done. Trends in UPC practice: PIs, equivalents, interim conferences Rolf Claessen:If you look across the different UPC divisions and cases: what trends do you see in practice? For example regarding timelines, preliminary injunctions, how validity attacks are handled, and how UPC cases interact with EPO oppositions or national proceedings? Aloys Hüttermann:If you take the most active divisions – essentially the big four in Germany and the local division in The Hague – they all try to be very careful and diligent in their decisions. But you can already see some differences in practice. For preliminary injunctions there is a clear distinction between the local division in Düsseldorf and most other divisions. Düsseldorf considers one month after knowledge of the infringement as still sufficiently urgent. If you wait longer, it is usually considered too late. In many other divisions, two months is still viewed as fine. Düsseldorf has also been the division that issued most of the ex parte preliminary injunctions so far. Apart from one special outlier where a standing judge from Brussels was temporarily sitting in Milan, Düsseldorf is basically the only one. Other divisions have been much more reluctant. At a conference, Judge Pichlmaier from the Munich division once said that he could hardly imagine a situation where his division would grant an ex parte PI. In his words, the UPC has two types of procedure: one that is fast – the normal main action – and one that is very fast – the inter partes PI procedure. But you do not really have an “ultra-fast” ex parte track, at least not in his division. Another difference relates to amendments and auxiliary requests in PI proceedings. In one recent case in Munich the court said more or less that if you have to amend your patent or rely on auxiliary requests in a PI, you lose. Other divisions have been more flexible and have allowed auxiliary requests. Equivalence is another area where we do not have a unified line yet. So far, only the Hague division has clearly found infringement under the doctrine of equivalents and explicitly used a test taken from Dutch law. Whether that test will be approved by the Court of Appeal is completely open – the first case settled, so the Court of Appeal never ruled on it, and a second one is still very recent. Interestingly, there was another Hague decision a few weeks ago where equivalence was on the table, but the division did not apply that Dutch-law test. We do not know yet why. The Mannheim division has written in one decision that it would be desirable to develop an autonomous pan-European test for equivalence, instead of just importing the German, UK or Dutch criteria. But they did not formulate such a test in that case because it was not necessary for the decision. So we will have to see how that evolves. On timelines, one practical difference is that Düsseldorf usually does not hold an interim conference. That saves them some time. Most other divisions do hold interim conferences. Personally, I like the idea because it can help clarify issues. But you cannot safely read the final outcome from these conferences. I have also seen cases where questions raised at the interim conference did not play any role in the main oral hearing. So they are useful for clarification, but not as a crystal ball. Front-loaded proceedings and typical strategic mistakes Rolf Claessen:If you look at the behaviour of parties so far – both patentees and defendants – what are the most common strategic mistakes you see in UPC litigation? And what would a well-prepared company do differently before the first statement of claim is ever filed? Aloys Hüttermann:You know you do not really want me to answer that question… Rolf Claessen:I do! Aloys Hüttermann:All right. The biggest mistake, of course, is that they do not hire me. That is the main problem. Seriously, it is difficult to judge parties’ behaviour from the outside. You rarely know the full picture. There may be national proceedings, licensing discussions, settlement talks, and so on in the background. That can limit what a party can do at the UPC. So instead of criticising, I prefer to say what is a good idea at the UPC. The system is very front-loaded and very fast. If you are sued, you have three months to file your statement of defence and your counterclaim for revocation. In my view, three months are manageable – but only if you use the time wisely and do not waste it on things that are not essential. If you receive a statement of claim, you have to act immediately. You should have a clear strategy within maybe two or three weeks and then implement it. If you change your strategy every few weeks, chances are high that you will fail. Another point is that everything is front-loaded. It is very hard to introduce new documents or new attacks later. Some divisions have been a bit generous in individual cases, but the general line is strict. We have seen, for example, that even if you filed a book in first instance, you may not be allowed to rely on a different chapter from the same book for a new inventive-step attack at the appeal stage. That can be regarded as late-filed, because you could have done it earlier. There is also case law saying that if you first argue inventive step as “D1 plus D2”, and later want to argue “D2 plus D1”, that can already be considered a new, late attack. On the other hand, we had a revocation action where the plaintiff filed about 50 different inventive-step attacks in the initial brief. The division then said: this does not work. Please cut them down or put them in a clear hierarchy. In the end, not all of them were considered. The UPC does not conduct an ex officio examination. It is entitled to manage the case and to tell the parties to limit themselves in the interest of a fair and efficient procedure. Rolf Claessen:I have the feeling that the EPO is also becoming more front-loaded – if you want to rely on documents later, you should file them early. But it sounds like the UPC is even more extreme in that regard. Aloys Hüttermann:Yes, that is true. Protective letters, inspections and the defendant’s perspective Rolf Claessen:Suppose someone from a company is listening now and thinks: “We might be exposed at the UPC,” or, “We should maybe use the UPC offensively against competitors.” What would you consider sensible first steps before any concrete dispute arises? And looking three to five years ahead, how central do you expect the UPC to become in global patent litigation compared to the US and China? Aloys Hüttermann:Let me start with the second part. I expect the UPC to become significantly more important. If we have around 200 cases this year, that is a good start, but it is still very small compared to, say, 4,000 to 5,000 patent cases per year in the US and 40,000 or so in China. Even François Bürgin and Klaus Grabinski, in interviews, have said that they are happy with the case load, but the potential is much larger. In my view, it is almost inevitable that we will see four or five times as many UPC cases in the not-too-distant future. As numbers grow, the influence of the UPC will grow as well. Whether, in five or ten years, companies will treat the UPC as their first choice forum – or whether they will usually run it in parallel with US litigation in major disputes – remains to be seen. The UPC would be well equipped for that: the territory it covers is large, Europe is still an important economy, and the UPC procedure is very attractive from a company’s perspective. On sensible first steps: if you are worried about being sued, a protective letter can make a lot of sense – especially in divisions like Düsseldorf, where ex parte PIs are possible in principle. A protective letter is not very expensive in terms of court fees. There is also an internal system that ensures the court reads it before deciding on urgent measures. Of course, the content must have a certain quality; a poor protective letter can even backfire. If you are planning to sue someone before the UPC, you should be extremely well prepared when you file. You should already have all important documents and evidence at hand. As we discussed, it is hard to introduce new material later. One tool that is becoming more and more popular is inspection – not just at trade fairs, where we already saw cases very early, but also at company premises. Our firm has already handled such an inspection case. That is something you should keep in mind on both sides: it is a powerful evidence-gathering tool, but also a serious risk if you are on the receiving end. From the defendant’s perspective, I do not think the UPC is unfair. If you do your job properly and put a solid revocation counterclaim on the table, then the patentee has only two months to prepare a full reply and all auxiliary requests. And there is a twist that makes life even harder for the patentee than at the EPO. At the EPO the question is mainly: do my auxiliary requests overcome the objections and are they patentable? At the UPC there is an additional layer: do I still have infringement under the amended claims? You may save your patent with an auxiliary request that no longer reads on the defendant’s product. That is great for validity, but you have just lost the infringement case. You have kept the patent but lost the battle. And all of this under very tight time limits. That creates considerable pressure on both sides. How to contact Prof. Hüttermann Rolf Claessen:Thank you very much for this really great interview, Aloys. Inside our firm you have a nickname: “the walking encyclopedia of the Unified Patent Court” – because you have written so many books about it and have dealt with the UPC for such a long time. What is the best way for listeners to get in touch with you? Aloys Hüttermann:The easiest way is by email. You can simply write to me, and that is usually the best way to contact me. As you may have noticed, I also like to speak. I am a frequent speaker at conferences. If you happen to be at one of the conferences where I am on the programme – for example, next week in Hamburg – feel free to come up to me and ask me anything in person. But email is probably the most reliable first step. Rolf Claessen:Perfect. Thank you very much, Aloys. Aloys Hüttermann:Thank you. It was a pleasure to be on IP Fridays again. Some of your long-time listeners may remember that a few years ago – when you were not yet part of our firm – we already did an episode on the UPC, back when everything was still very speculative. It is great to be back now that the system is actually in place and working. Rolf Claessen:I am very happy to have you back on the show.

I am Rolf Claessen and you are listening to episode 168 of our podcast IP Fridays! My co-host Ken Suzan has interviewed Wole Araromi about the registration and enforcement of trademarks in Nigeria. But before we jump into this great interview, I have news for you: The U.S. patent system is currently undergoing significant changes. The new USPTO Director, John Squires, is taking a hands-on approach to the inter partes review (IPR) process. As of October 20, he announced that he will personally decide on all IPR and post-grant review (PGR) cases, removing this authority from the PTAB panels. At the same time, the USPTO published a proposed rule introducing mandatory exclusion criteria for IPR petitions. These measures—accompanied by a wave of discretionary denials since early 2025—are aimed at strengthening the position of patent holders and limiting review procedures that have often favored defendants. In practice, this is expected to significantly reduce the number of new IPR filings and marks a politically driven policy shift in favor of patent owner rights. Meanwhile, U.S. patent legislation remains in flux. Republican Congressman Thomas Massie has announced that he will reintroduce the RALIA bill (“Restoring America’s Leadership in Innovation Act”). If passed, it would bring sweeping changes: the Patent Trial and Appeal Board (PTAB), established only in 2012, would be abolished, the U.S. system would revert to a first-to-invent regime, and the automatic publication rule for patent applications would be repealed. According to Massie, the goal is to roll back what he views as harmful reforms of the past decade and provide stronger protections for inventors. However, observers doubt whether this proposal has any realistic chance of becoming law—competing bills like the Patent Eligibility Reform Act are already more advanced, and full abolition of the PTAB is seen by many as politically unfeasible. On the international stage, a novel patent dispute over FRAND licenses made headlines. For the first time, the Unified Patent Court (UPC) and the Munich Regional Court issued an “anti-interim-license” injunction in favor of patent holder InterDigital, aiming to prevent Amazon from obtaining a compulsory license in the UK. The response from London was swift: the High Court (Mr. Justice Meade) issued an “anti-anti-suit injunction,” prohibiting InterDigital from interfering with Amazon’s license proceedings in the UK. This cross-border legal standoff over standard-essential patents (SEPs) illustrates the increasing complexity between the UPC and national courts in the global FRAND litigation landscape. There was also a noteworthy win for patent holders in Germany. In a patent infringement case concerning refill cassettes for diaper disposal systems, the Düsseldorf Higher Regional Court upheld an injunction against a Polish imitator. The company Sonesta and its former managing director were prohibited from offering the film refill sets in Germany without clearly indicating that their use was only allowed with permission from the patent holder (Angelcare/IRC). Notably, the court confirmed the personal liability of the former managing director, as she had acted as the responsible seller on the sales platform. This ruling strengthens the rights of patent owners and highlights that even individuals can be held liable if they knowingly facilitate IP-infringing conduct in a managerial role.

Interview with Prof. Karsten Lemmer, Executive Board Member of the German Aerospace Center DLR responsible for ‘Innovation, Transfer and Research Infrastructure’. ECJ strengthens enforcement of national trademarks across borders: In its ruling C-76/24, the ECJ clarified that trademark owners can also take action against trademark-infringing goods if these are located in another member state—provided that they are intended to be offered or placed on the market in the country of protection. This does not weaken the principle of territoriality, but significantly strengthens the scope of injunctive relief: it is sufficient for the goods to be located abroad, as long as the intention to market them in the country of protection can be proven. In addition, the ECJ clarified that the term “possession” in Article 10(3)(b) of the Trademark Directive does not only cover direct possession. Indirect possession is also sufficient if the person concerned actually exercises control over the goods through supervisory or management authority (e.g., in the case of Amazon). In practice, this means that trademark owners can take more effective action against cross-border supply chains and online retailers, even if they store their goods abroad or have them managed by third parties. The ruling thus significantly extends liability and closes existing gaps in online and platform trade. Germany slips in innovation index: In WIPO’s new Global Innovation Index 2025, Germany has fallen from 9th to 11th place and is thus no longer among the top 10 most innovative economies for the first time. Although the study attests to Germany’s strengths in traditional technology products, exports, and science, it also reveals weaknesses in digitalization and start-up culture. DPMA President Eva Schewior urges that the enormous research potential be translated much more effectively into protected innovations and new business models. Boom in agricultural patents: According to a new technology report by the EPO, digital agricultural technologies are growing three times faster than the average for all technology fields. The report highlights that smart farming plays a key role in addressing food and climate challenges. Networked sensor technology, AI-supported precision farming, and new breeding techniques are leading to a sharp increase in patent applications in the agricultural sector. Change at the top of the USPTO: In the US, the Senate confirmed John Squires as the new director of the US Patent and Trademark Office (USPTO) on September 18. Squires, an experienced patent attorney with a focus on AI and fintech, takes over from interim director Coke Morgan Stewart. He has announced plans to reduce the patent backlog with digital tools and push ahead with reforms in patent law—for example, through increased use of AI in examinations. His term of office comes at a critical time, as global innovation competition and new technologies (especially AI) are having a growing impact on the patent system. Remote Work at the USPTO is on the Chopping Block: resident Trump issued an executive order on August 28, 2025, excluding the USPTO’s entire Patents business unit from federal collective bargaining protections.  The executive order would effectively lead to a termination of remote work at the USPTO. Many examiners are expected to resign.

I am Rolf Claessen and my Co-Host Ken Suzan and I are welcoming you to episode 166 of the IP Fridays Podcast. Today’s interview guest is Joshua Cunnington, who is Managing Associate at Stephenson Harwood in the UK. My Co-Host Ken Suzan talks with him about an update on Trademark Caselaw in the UK, e.g. the Doctrine of Postsale Confusion. Before we jump into the interview, I have news for you The U.S. Patent and Trademark Office (USPTO) has removed more than 52,000 fraudulent trademark applications and registrations from the register. On August 6, 2025, the agency sanctioned a foreign filing firm that had submitted large numbers of applications using forged signatures, fake attorney identities, and manipulated specimens of use. Reports from the United States describe an unusual funding proposal: according to the Wall Street Journal, Commerce Secretary Lutnick is considering imposing a levy of 1% to 5% of a patent’s value on patent owners. This possible “patent-value fee” would raise additional budget funds. Details remain unclear, and the idea is already stirring controversy in the IP community. On August 4, 2025, the USPTO’s patent division issued new guidance on the patent eligibility of AI and software inventions. The “Kim Memo” stresses that examiners should not hastily label software-related claims as abstract ideas. Instead, all claim elements should be evaluated together; where eligibility is uncertain, no Section 101 rejection should be made absent clear exclusionary grounds. In its first costs decision, the Unified Patent Court (UPC) Court of Appeal dismissed Expert klein’s appeal and declined to refer questions to the CJEU. The judges confirmed that applications for costs must be filed no later than one month after judgment and saw no reason to seek guidance from the CJEU. It seems that the Court of Appeal generally rejects the idea that decisions of the UPC could potentially be brought before the CJEU.

I am Rolf Claessen and my co-host Ken Suzan and I are welcoming you to episode 165 of our IP Fridays podcast! Today’s interview guest is Christian Wichard, who is the Deputy Director General of at the Federal Ministry of Justice and Consumer Protection and he has been doing that for about 14 years, with a short brek from 2009 to 2014, where he as Deputy Director General at the WIPO. He is overseeing all legislative efforts of the German government related to intellectual property and we talk about many interesting topics. He had large contributions to the becoming of the Unified Patent Court, we talk about the role of AI in IP, about new reforms in the IP world. Stay tuned for this interesting interview! Before we jump into this interview, I have news for you: The USPTO has launched DesignVision, the first AI-powered image search tool available to design patent examiners through the Patents End-to-End (PE2E) system. This tool uses artificial intelligence to support prior art searches in design patent examination and is part of the agency’s broader efforts to modernize workflows and reduce pendency. In Europe, the EPO’s Enlarged Board of Appeal issued a much-anticipated decision in G 1/23 on July 2. The Board clarified that a product already on the market before the filing date of a European patent application cannot be excluded from the state of the art under Article 54(2) EPC merely because its internal structure or composition could not be analysed or reproduced. Furthermore, any technical information about that product that was publicly available before the filing date forms part of the state of the art—regardless of whether the product itself could be reverse-engineered. Just weeks earlier, on June 18, the same Board issued another important decision in G 1/24, ruling that claims must always be interpreted in the context of the description and drawings—not only when ambiguities arise. This decision aligns EPO practice more closely with that of the Unified Patent Court and is a major step toward harmonization. Speaking of the UPC, its case management system (CMS) transitioned to a new platform between July 3 and July 8. During the switchover, certain functionalities—like opt-out requests and representative registrations—were temporarily limited. Since July 8, all filing capabilities have resumed, supported by updated FAQs and training materials. Finally, the EUIPO has expanded its mediation service to cover all inter partes proceedings in the areas of trademarks and designs. As of June 2, 2025, parties in opposition or invalidity proceedings can now opt into mediation free of charge, fully online, and on a voluntary basis. Now let’s jump into the interview: In this episode of IP Fridays, Rolf Claessen speaks with J. Christian Wichard, Deputy Director General at the German Federal Ministry of Justice and Consumer Protection. Wichard has been one of the most influential figures in shaping intellectual property law and policy in Germany and Europe over the past two decades. He reflects on the most significant developments in European IP law during this time. First and foremost is the creation of the Unitary Patent and the Unified Patent Court (UPC), which he describes as a historic milestone for patent protection and enforcement across Europe. He explains why this new system makes litigation more accessible, enhances legal certainty, and strengthens Europe’s competitiveness. The second major development he highlights is the EU Directive on Copyright in the Digital Single Market, particularly the implementation of Article 17 concerning the liability of content-sharing platforms. He outlines the challenges of balancing copyright protection with fundamental rights and explains how Germany approached the directive’s implementation. Third, Wichard discusses the Second Patent Modernization Act in Germany, which addressed some of the systemic effects of bifurcation in patent litigation. He explains how the reform introduced measures to better synchronize infringement and invalidity proceedings, and how it introduced a safety valve allowing courts to deny injunctions in exceptional cases. In a detailed discussion about the UPC, Wichard shares his personal involvement in both the early conceptual phase and the more recent ratification process. He explains why it took so long to bring the UPC into force and how political, legal, and procedural hurdles—especially in Germany—had to be overcome. He also outlines the core advantages of the UPC: its broad territorial scope, procedural efficiency, cost-effectiveness, and the expertise of its judges. According to Wichard, the UPC is well positioned to become one of the leading patent litigation venues worldwide. The conversation then turns to the current EU IP reform package. Wichard explains the status of various legislative dossiers, including the proposal for compulsory licensing in crisis situations, the introduction of unitary supplementary protection certificates (SPCs), and the regulation of standard-essential patents (SEPs). He offers insights into the controversial withdrawal of the SEP proposal and the diverging views among member states. Another focal point of the interview is the intersection of copyright and artificial intelligence. Wichard discusses whether copyrighted works can be used to train AI systems, whether AI-generated content can be protected under copyright law, and what challenges generative AI poses for the remuneration of human creators. He emphasizes the need for legal clarity, transparency, and a fair remuneration system in the age of AI. Finally, Wichard talks about a new official expert opinion on remuneration in the platform economy and for private copying in Germany. Although the report had not yet been published at the time of the interview, he reveals that its main conclusion is that the current system does not require fundamental reform, but that improvements in transparency and efficiency are necessary. The report is expected to be published shortly and may already be available when this episode airs. This is a rare opportunity to hear from someone who has been deeply involved in drafting and negotiating major pieces of IP legislation at the national and European levels. Whether you are a practitioner, policymaker, or simply interested in the future of IP in Europe, this episode offers valuable insights into where we stand and where we are heading. If you don’t know Christian Wichard, he is the Deputy Director General at the Federal Ministry of Justice and Consumer Protection of the German government, and I’m very happy that you are taking your time to be on IP Fridays. J. Christian Wichard: Thank you for having me. Thanks. Rolf Claessen: Thank you very much for being here. Just to clarify, and that’s important: everything that you mention here in this interview is your personal opinion and you don’t speak for the government of Germany. That is clear. And you have been Deputy Director General at the Federal Ministry of Justice and Consumer Protection for over 10 years now and you are in charge of everything related to intellectual property in the government of Germany and so that’s very interesting for our listeners of IP Fridays, of course. What have been the top three things you remember from this whole time that in your personal opinion have the biggest impact in the intellectual property world? J. Christian Wichard: First let me start with a small clarification. I’ve been Deputy Director General in charge of IP matters twice: first between 2006 and 2010. Then I moved to WIPO as DDG, came back in 2015 to the ministry, and back again in 2019. And yes, I mean there are a number of IP issues that have been around during the last 10 years. And I think by far number one is the creation of the unitary patent and the Unified Patent Court. I think in my view this is almost a once-in-a-lifetime event, at least in the area of intellectual property. You have a patent that is valid currently in 18 countries and possibly in the future in the whole European Union. You have a specialized patent jurisdiction with judgments that are enforceable in all 18 participating countries. I think that in itself is already a huge achievement that makes patent litigation much easier in Europe. It lowers the threshold for SMEs to enter the patent system. It also contributes to Europe’s competitiveness and I think it’s also a unifying force beyond the patent family. So it’s the first civil or private law European litigation system we have. Number two was already a bit more difficult. So here I’m hesitating a little, but probably it’s the EU directive on copyright and related rights in the digital single market that was passed in 2019 and our implementation in Germany. In translation, that would mean the law on the responsibility of service providers under copyright for the sharing of content. Already the directive was hotly disputed and heavily criticized, but in the end I think it did its job. It aims at extending copyright and related rights into the digital environment, including all limitations and exceptions, and this is a very complex process. And hotly debated in particular was Article 17 of the directive, which clarifies the responsibilities of content-sharing platforms. And here just to explain a little: these platforms make a business out of making content available online, but traditionally they haven’t really borne any responsibility for copyright infringements that happen on these platforms. So new is now that they can be held accountable for material that is on their platform. The directive considers this posting by third parties by users as an act of communication to the public by the platform itself, which might trigger liability. So that means that they must either try to get the license for the copyright-protected works that are posted there or must prevent it from being made available even if they haven’t received a warning. So this goes beyond the notice-and-take-down system that was established by the e-commerce directive and this also provoked the discussion on upload filters, with demonstrations in the streets and everything. But at the same time, the DSM directive also stipulates a principle of proportionality. It explicitly states that there should be no general obligation for providers to monitor everything at all times and it also safeguards exceptions and limitations. So in a way you’re looking at a difficult balance to implement into national law, given also the different legal traditions that we have. So that was the challenge we were facing: trying to implement that while doing justice both to copyright protection as well as to exceptions and limitations — the countervailing freedoms and rights that have to be guaranteed — and to make that implementable in a way that is also possible in a technical environment. I think in the end, in our implementation, we’ve done a reasonably good job. That was indirectly confirmed by the guidelines that were later passed by the EU Commission — after we had already passed our law — and also by the ECJ judgment that came out a bit later. So I think that was number two. And perhaps number three is the Second Patent Law Modernization Act, which we passed in 2021. Not so much for all the rules that are new or have been reformed there, but more because it touches on some key features of the German patent litigation system. In its key part, this modernization act seeks to address certain consequences of the bifurcation we have — the separation between, on the one hand, invalidity actions that are handled by the Federal Patent Court, which includes technical judges, and on the other hand, infringement actions that go to the general civil courts, some of which are rather specialized. This bifurcation is a very German tradition. The reason why we have it is that patents are granted only after extensive examination by technical experts at the patent office, and they should not be declared invalid quickly by legal judges. So that’s why the infringement court should normally treat a patent as valid — unless they have very clear indications that it might not be valid — and then they can hold the procedure. But typically, they would have to treat a patent as valid because it has been examined. That also means that infringement actions can proceed really quickly. So under a year you can have a judgment that is enforceable in Germany, and you can have a strong injunction against an infringer. That, in a way, is the strength of the German system — the speed with which you can get an infringement judgment. But the declaration of invalidity then takes place, as I said, before the Federal Patent Court in a separate procedure involving technical expert judges. Those principles are still valid and Germany is keeping them. Problems sometimes arise because there often is a time gap between the invalidity action at the Federal Patent Court and the infringement action. The invalidity action often starts later and takes longer than the infringement proceedings. That means that in extreme cases it might happen that you get an injunction issued on the basis of a patent that is later declared invalid by the Federal Patent Court. In extreme cases only — but still, it might happen. Then there is the question of patent quality. Is the assumption still correct that patents are granted on the basis of a thorough technical examination? Some are questioning that — less so with regard to the German office, but more so with regard to the European Patent Office. I’m not saying that EPO patents are bad, but there has been a patent quality debate relating to the EPO. The Second Patent Modernization Act has made efforts to address the negative consequences and to address them within the system — without changing bifurcation, but to make it a bit more viable. So there is a shorter deadline: it is meant to speed up invalidity proceedings. There are shorter deadlines for filing a response in invalidity actions before the Federal Patent Court. And then the Federal Patent Court also should issue a first early substantive assessment as to the validity within six months. So parties should get an indication of whether the court thinks that a patent is valid or not reasonably early in the procedure. That can then also be included in the infringement procedure. The infringement court can decide whether — on the basis of this early opinion — it might have to hold the proceedings until the invalidity action is over, because there may be indications that the patent is invalid. That is meant to bring both procedures closer together. Another aspect of the act was that we also expressly included a provision into the law that now allows a court — in exceptional cases — to grant damages rather than an injunction, where granting an injunction would be disproportionate. So that is meant to serve as a safety valve and not meant to undercut the strong and enforceable patent rights, which are a cornerstone of the German patent system. Sorry, that was a bit long, but I think those are still three key things that happened over the last ten years. Rolf Claessen: Yeah. J. Christian Wichard: But again, I mean, I think number one definitely is the unitary patent and the Unified Patent Court. Rolf Claessen: We will talk about the Unified Patent Court. But first, maybe also my feeling is that the German patent system — one of the major differences compared to other important jurisdictions — is the injunction. That you can get an injunction, compared for example to the US, where it is very difficult to get one. And my understanding and feeling is that since the reform, there has not been a lot of case law denying injunctions and just awarding damages. So I think the big fears of patentees have not become true so far. Let’s see how this develops. J. Christian Wichard: It’s just a safety valve. So it’s not meant to be the regular feature of patent litigation. Rolf Claessen: You have watched very closely how the Unified Patent Court was established — and in fact, you have played an important role in its formation. Can you briefly describe your role in the process that brought the UPC into reality? J. Christian Wichard: Yes. I participated in two phases, in a way. First, in the early and formative phase between 2006 and 2009. And then in 2023 again, as Deputy Director General here in the ministry. In the early phase, our job was to voice the key concerns of the German government. Those concerns were regarding the Community Patent system, as it was called at the time — which then became the Unitary Patent. The aim was an efficient patent granting system with a limited language regime that would lower translation costs, but also reduce legal uncertainty arising from translation requirements. Because you never really know whether there are differences between the different language versions, especially with regard to the claims. Also, the price of a unitary patent should not exceed that of a European patent valid in four countries — cost-benefit efficiency was key. The second major concern was to ensure a high-quality and efficient court system. High quality also meant specialization: a specialized patent court with expert judges, including technical judges. So that was the German position from the outset — an official procedure that should run quickly and effectively. The key decisions in this regard were already taken in 2009 and 2010, when the EU Council adopted the first common position. Most of the substance had already been developed by then. Then in 2019, when I was back at the ministry, we had to address a lot of difficulties, both constitutional and political. This included legal challenges in Germany, and of course, the Brexit. Trying to sort all of that out was quite a handful. We had to pass the ratification law, oversee the development of secondary legislation like the Rules of Procedure — which were the first European set of rules for a private court system — as well as the schedule of fees and so on. In the end, we supported the establishment of the court, which administratively still functions like a startup with a very small secretariat and administrative unit. So they still need a lot of help from the member states. Rolf Claessen: Right. It took a couple of decades, as you mentioned, for the UPC to finally open its doors. The idea is really old, and the process has been quite long and tedious in some phases. Why, in your personal opinion, did it take so long to establish the Unified Patent Court? J. Christian Wichard: I’m not going to talk about the period before 2009, because I think there was quite a mix of factors. One was the tension between linguistic diversity and efficiency — between a multilingual approach and a more streamlined system. After the key features were established in 2010, the difficulties arose not so much from the substance of the system, but from external factors. First, there was an opinion from the ECJ that was necessary. Member states had asked the ECJ for an opinion, which was delivered in 2011. Everything was fine, we just needed to make a few adjustments. Then Spain and Italy didn’t want to participate — again, for linguistic reasons. So in 2012, for the first time in EU history, reinforced cooperation was used. The Council adopted the European Patent Package without Spain and Italy. That included the Unitary Patent. In 2013, the Agreement on the establishment of the Unified Patent Court was signed by almost all member states. But then Spain challenged the Council decision before the ECJ, and it took until 2015 to get a decision confirming everything was in order. Next came difficulties in Germany. A constitutional complaint was filed in 2017, which meant we had to suspend ratification. We wanted to be one of the first countries to ratify, but couldn’t. The Federal Constitutional Court issued a decision in 2020 — not on substance, but on procedural grounds. So we had to pass a new law, which we did quickly. Then another constitutional complaint was filed, which again delayed things, but this time the court acted faster and confirmed the law in 2021. Only then were we able to ratify. And of course, there was the Brexit. The UK was one of the three countries with the most patent activity, whose ratification was required for the system to enter into force — alongside Germany and France. When the UK left the EU, we had to adjust the agreement, and Italy was determined to be the third country based on patent activity. Once all these complications were cleared, we formally ratified the system in February 2023, and the court system officially started in June 2023. Rolf Claessen: The idea is really old and the process has been quite long and tedious in some phases. Why, in your personal opinion, did it take so long to establish the Unified Patent Court? J. Christian Wichard: I think the key advantages of the Unified Patent Court system are, first, the territorial scope. That’s a big achievement. You have only one procedure for handling a patent dispute, and the resulting judgment is valid and enforceable in all 18 participating member states. Also, you have a procedure that will contribute to the development of a unified European patent case law. That, in turn, will lead to more legal certainty throughout what you might call a single European patent litigation space. Second, there is procedural efficiency. A single action before the UPC in most cases will be more cost-effective than multiple national actions. Even if you look at the current fees, a UPC procedure can often be cheaper than a German court procedure — if you consider the need to go through both infringement and validity procedures in several national courts, possibly including appeal instances. The UPC Rules of Procedure are designed to expedite proceedings. Typically, the first instance decision is issued within 12 months after commencement. They are still managing to stick to that timeline for now. Then you have a limited language regime. Typically, the language of the proceedings is the language of the patent. But importantly, English can be used before all local chambers, and that has been authorized. This makes it easier to access for international companies. The third major advantage is expertise. The court consists of the most experienced patent judges from the participating member states. They were selected not by the member states, but by an independent expert panel, which makes the selection process less susceptible to political pressure. That is a real benefit and contributes to the UPC being recognized as a high-quality patent court — at least equivalent to the respected German system. And of course, legal and technical judges sit together on the bench in many cases. Technical judges are not just expert advisors; they participate fully in the decision-making process. That really adds value when dealing with technically complex matters. Rolf Claessen: And more countries are joining. So it’s really a growing system. I think Ireland might be joining sometime soon, and other countries have expressed interest. So yes, it’s growing. And the usage is increasing a lot — we see that in the monthly figures published by the UPC, which are all going up. So the acceptance is clearly rising. J. Christian Wichard: Yes. Rolf Claessen: Let’s switch topics a bit and talk about the EU’s IP harmonization package. The European Union wants to reform and harmonize intellectual property. What is the goal of this package, and what are the most important components in your view? J. Christian Wichard: What we currently have is what’s referred to as the patent package. It includes three dossiers, each of which is quite substantial. First, there is a proposed regulation aimed at establishing an EU-wide compulsory licensing system. That is a politically hot topic. Second, there are dossiers relating to Supplementary Protection Certificates (SPCs). This includes a regulation to harmonize the granting of national SPCs through a single European procedure — that’s two regulations — and another regulation to establish a unitary SPC as the long-awaited complement to the unitary patent. The third element is a regulation on standard-essential patents (SEPs) aimed at increasing transparency and facilitating the licensing process. This is also a very complex and hotly debated issue. Rolf Claessen: The EU Commission has announced its intention to withdraw the SEP component of the package. What is the current status, particularly with regard to SPCs and compulsory licenses in your opinion? J. Christian Wichard: The SEP dossier has not yet been officially withdrawn, but the Commission has indeed announced its intention to do so. It has given the Council and the European Parliament an opportunity to comment. The European Parliament was very clear in its response — it is clearly against a withdrawal. The Parliament made this position very clear to the Commission. Unfortunately, the Council is split. We didn’t really have the possibility to discuss the substance of the SEP proposal thoroughly because we were so busy dealing with compulsory licensing and SPCs. The Presidencies so far have not scheduled in-depth discussions of the SEP dossier. But in the end, 10 countries — including Germany, France, and Italy — opposed the withdrawal very clearly. About the same number supported the withdrawal, including Sweden, Finland, and the Netherlands. So in a way, the Council was divided. From the point of view of the German government, a withdrawal would be unfortunate. While we were not happy with every single element of the SEP proposal, we still think it is better than having no instrument at all. It provides a good basis for substantive discussion in the Council with the aim of reaching a qualified majority necessary to adopt legislation. The alternative would be nothing — and we think that would not be a good outcome. At least from the German government’s perspective, there is a clear need to enhance transparency and to provide guidance for licensing negotiations. That is obviously quite difficult at the moment, as we see from the divergent court decisions emerging in the EU. Regarding the compulsory licensing proposal: an agreement was reached between the Commission, the Council, and the European Parliament in the so-called trilogue negotiations in May 2025. Currently, we are in the legal scrubbing phase, which means that the legal services are reviewing the text for consistency and correctness. The formal adoption will take place at one of the next Council meetings — we don’t know exactly when, but it will happen. So compulsory licensing — which, incidentally, was the proposal we cared the least about — will be the first to be finalized. The SPC discussions are significantly more complicated — at least for three reasons. First, the Council Legal Service — unprompted — questioned the legal basis used by the Commission for the proposal. The legal basis is Article 118 of the Treaty on the Functioning of the EU. The argument is that a unitary SPC would only be valid in the 18 member states currently participating in the unitary patent system, and that therefore it doesn’t qualify as a title valid “throughout the EU,” which is what Article 118 requires. We don’t agree with that assessment, and neither does the Commission’s Legal Service. Still, this point has become a stumbling block. Second, there is the question of judicial competence. Not all member states agree on whether the Unified Patent Court should be responsible for invalidity actions — both direct and indirect. If the EUIPO were to grant the title, then, according to the Commission Legal Service, direct invalidity actions might fall under the jurisdiction of the ECJ. That’s not ideal. So some member states suggested involving the EPO instead. However, involving a non-EU body like the EPO as the granting authority poses another problem — you have to stretch EU law considerably to allow for that. It may not even be possible legally. So we are facing a complicated mix of legal and political issues — regarding the legal basis, the competence of the UPC, and the choice of granting institution. Fortunately, the Danish Presidency is very ambitious. They have declared that they want to bring the SPC negotiations to a conclusion by the end of their term — at least by reaching a qualified majority in Council. Rolf Claessen: So interesting to hear the status from you because you are an insider — you are in discussion with your colleagues from other countries, trying to reach agreement and achieve the best outcomes for users of the system. I’m very grateful that you are participating there. Since you are here in the podcast, I also wanted to ask you something else — a topic that has been in the news and is also hotly debated among IP professionals. What are the current discussions about copyright versus artificial intelligence on a government level? Can artificial intelligence be a creator? And can copyrighted material be used to train artificial intelligence without the consent of the creator? There are already some early court decisions on this around the world. What is your view — and what is the current status? J. Christian Wichard: This is definitely an extremely hot topic and one that raises deep concern among stakeholders in the creative industries. On the one hand, generative AI is a helpful tool. It can increase efficiency and assist in creative work. But on the other hand, there’s a fear that it might replace human-created content. And we are already seeing that. Machine translations are becoming common. Background music can be generated by AI. Even press articles and news items can now be produced by algorithms. So the fundamental question is: How can copyright still support human creators in making a living from their work? That is why this discussion is both difficult and politically charged. At the Ministry — where we are also responsible for copyright — we are very active in this area. Not always in the media, but we’ve been working behind the scenes. For example, we organized an international conference early last year. That was one of the first in a long series of events on this topic. We’ve also actively contributed to the debate in the Council of the EU. Perhaps most importantly, we are in touch with the European Commission to prepare a broader policy discussion at EU level. We believe that this debate should not be limited to the text and data mining (TDM) exception that already exists in the Digital Single Market Directive. There will be an evaluation of that exception next year, but we think we shouldn’t wait. The debate is broader, and it should start now — with a view to finding practical solutions. To your questions: Can copyrighted material be used to train AI without the consent of the creator? The answer is: To a certain extent, yes. It depends on whether the training qualifies as commercial text and data mining. If it does, then the copyright owner has the right to opt out of the exception. They can simply say “no,” and then their works must not be used for training purposes. This opt-out right was introduced to encourage the development of a licensing market. If you can say no, then you can also ask for a fee in exchange for a license. The problem, however, is transparency. You don’t really know whether your work has been used, because text and data mining happens invisibly. There’s no trace in your work showing whether it was part of an AI training dataset. The EU AI Act has introduced some transparency obligations. For example, AI providers must publish a summary of the works used for training. This summary must be meaningful — meaning it should be sufficient to form the basis of a claim in court, for example. Currently, several working groups are preparing a code of practice and a standard template for such summaries. These processes are led by the European Commission. As for your second question — can AI be a “creator”? I would say: not in itself. A work generated entirely by AI is not a copyright-protected work in our current legal system. But a work created with the help of AI — where a human uses the AI tool in a creative way — can still qualify for copyright protection. It depends on the degree of human input. And can AI-generated output infringe copyright? Possibly — if the output is more or less identical to a copyrighted work. Even if the algorithm says it was a coincidence, if the result is substantially the same as an existing work, it might still be considered infringement. Should AI-generated works themselves be protected by copyright or related rights? Our position is: not at this point. We don’t see a need to incentivize investment in AI-generated content by granting copyright. The bigger question, however, is: How do we ensure fair remuneration for human creators in the digital and AI age? Rolf Claessen: I think there has been an official opinion by the government regarding the remuneration of creators — for streaming or private copies. Can you summarize the main findings and suggestions from this official opinion? J. Christian Wichard: It hasn’t been published yet — but it will be published in the coming weeks. We’ve received the report recently, and we are currently preparing it for publication. This expert opinion, which we commissioned, deals with two central questions. The first part concerns the remuneration of creators in the platform economy — particularly in relation to streaming. That covers all sectors except music, because a separate study on music was already commissioned by the Federal Commissioner for Culture and Media. The second part of the opinion deals with the remuneration system for private copying — which is authorized under German law. We have a fairly elaborate system in place, which dates back to the late 1960s and early 1970s, and has been reformed several times. The question was: Does this system still work as intended? I won’t go into the details of the results yet — but the good news is that there’s no need for a fundamental overhaul. The core elements of the system can remain in place. That said, the opinion does include some suggestions to improve transparency — for example, who receives how much, how value is calculated, and what constitutes adequate remuneration. It also includes proposals for increasing efficiency within the system. Rolf Claessen: Do you have an idea when the report will be publicly available? J. Christian Wichard: We’ve just requested authorization for publication. Normally, our political leadership is rather quick with granting that authorization. So it could happen within the next two weeks — just in time for the summer, maybe as reading material by the pool. Rolf Claessen: And we’re recording this in mid-July — so by the time this podcast is published, the report might already be available. If so, I will include a link in the description below this episode. J. Christian Wichard: I’ll send you a note once it’s published. Rolf Claessen: That would be great. It has been really great to have you as a guest in this interview, and I’m very grateful that you took the time. It’s not often that I have the chance to meet someone who has helped shape the IP landscape in Germany and Europe as much as you have. So, thank you very much. J. Christian Wichard: Just to say: I’m not doing this alone, of course. We have very qualified colleagues here in the Ministry who are in charge of copyright, patent law, trademark law, and fair competition. I’m not the only one working on these issues. Rolf Claessen: Of course. But you oversee the efforts — and your insight has been very valuable. Thank you so much again. J. Christian Wichard: Thank you for having me. It was a pleasure.

I am Rolf Claessen and my co-host Ken Suzan and I are welcoming you to episode 164 of our podcast IP Fridays! Today’s interview guests are Arthur Rothrock and Nicholas Sarokhanian. My co-host Ken Suzan talks with them about AI tools for IP lawyers. Arthur Rothrock https://www.linkedin.com/in/rothrocka/ Nicholas Sarokhanian https://btlaw.com/en/people/nicholas-sarokhanian Podcast: The Litigator’s Path – https://podcasts.apple.com/us/podcast/the-litigators-path/id1765423485 Podcast: Minds & Machines – https://podcasts.apple.com/us/podcast/minds-machines-navigating-ai-and-the-law/id1801779390 U.S. Copyright Office, Report on Copyright and Artificial Intelligence https://www.copyright.gov/ai Before we jump into the interview, we have news for you! The USPTO is discontinuing Accelerated Examination program for utility applications. The USPTO is currently facing staff-related challenges including a hiring freeze, which seems to just have ended, return-to-office mandates, and potential attrition due to these policies. These issues seem to impact employee morale, potentially increasing the backlog of unexamined patents, and creating uncertainty about the future of the agency. The USPTO has experienced a significant leadership vacuum following abrupt emails earlier this February encouraging early retirement of all Federal employees, and an unusual level direct outside communication and control of employees from OPM/DOGE. The first office action pendency for patents increased from 19.9 months in 2024 to 23.4 months in May 2025. On 19 June the CJEU opened oral argument in the “Oktoberfest” trademark dispute. Munich is defending its EU mark against the EUIPO, and the coming judgment could redefine the protectability of geographic event titles. On 18 June the EPO’s Enlarged Board in G 1/24 confirmed that claims are the starting point of examination, yet description and drawings must always be consulted for the  interpretation of the claims, bringing EPO practice closer to UPC jurisprudence. Meanwhile representatives of all 39 EPC member states met the EPO in Reykjavík to discuss IP-backed financing tools aimed at giving research-intensive SMEs better access to capital. Since 11 June, the EPO has also been offering its “Deep Tech Finder” as an iOS and Android app. The application links patent data with the financial metrics of European start-ups and facilitates cooperation between mid-sized companies, investors, and universities. In this episode of IP Fridays, co-host Ken Suzan welcomes two distinguished guests to explore one of the most dynamic and fast-moving topics in the legal field: Artificial Intelligence (AI) tools for IP lawyers. Arthur Rothrock, co-founder and CEO of Legion, and Nicholas Sarokhanian, Chair of the Artificial Intelligence Practice at Barnes & Thornburg LLP, join the podcast to discuss how AI is transforming the way intellectual property lawyers work—today and in the near future. Meet the Guests Arthur Rothrock is the founder of Legion, a legal tech startup offering an AI-powered litigation support platform. It helps attorneys draft pleadings, discovery responses, motions, and other legal documents. Arthur is also the host of the Legal Entrepreneur Podcast and brings a strong background in legal innovation. Nicholas Sarokhanian leads the AI Practice Group at Barnes & Thornburg and is based in Minneapolis. He is a recognized thought leader on generative AI, large language models (LLMs), and the broader legal implications of these technologies. Nick also hosts the Minds and Machines Podcast, where he regularly shares insights into the evolving digital landscape. Key Talking Points from the Interview 1. The Rise of Generative AI in LawNick explains how generative AI tools like GPT are already being adopted by major law firms. These tools are not meant to replace attorneys, but rather to augment their work by streamlining drafting tasks, enabling more efficient legal research, and improving turnaround time for clients. 2. From Experimentation to IntegrationArthur emphasizes the importance of integrating AI not just as a novelty, but as a core part of legal workflows. His platform, Legion, allows lawyers to quickly generate work product that can be reviewed, refined, and filed—saving hours of manual work without compromising quality. 3. Use Cases for IP LawyersBoth speakers explore practical examples for trademark and patent lawyers. These include: Drafting cease-and-desist letters Preparing office action responses Assisting with prior art searches Creating internal knowledge databases Translating complex legal issues for clients 4. Ethical and Professional ResponsibilityA major theme in the conversation is how lawyers can responsibly use AI. Nick cautions against over-reliance and emphasizes the need for human oversight. Accuracy, client confidentiality, and compliance with ethical duties remain critical. Arthur adds that lawyers must be trained to ask the right questions and apply sound judgment when using AI-generated output. 5. The Future of Legal WorkThe guests agree that AI will not replace IP lawyers, but IP lawyers using AI will likely outpace those who don’t. As generative tools evolve, attorneys who embrace and understand them will be better equipped to deliver faster, more strategic value to their clients. 6. Tips for Getting StartedNick suggests that lawyers start small by experimenting with legal-specific AI tools in low-risk scenarios. Arthur recommends being intentional about which parts of the practice to automate and continually reassessing the tool’s value through feedback loops. Final Thoughts This episode provides a practical, experience-based look at how AI is reshaping the intellectual property profession. Whether you’re a solo practitioner, part of a boutique firm, or in-house counsel at a tech company, this discussion offers insights you can use today. You can listen to the full episode and access additional resources, including a recording of the webinar and a written summary of the key takeaways, on our website or your favorite podcast platform. Here is the transcript: Kenneth Suzan: Our guest today on the IP Fridays podcast are Arthur Rothrock and Nicholas Sarakhanian. And our topic is AI tools for lawyers. Arthur is the co-founder and CEO of Legion, an AI-powered litigation support platform which enables users to draft pleadings, discovery, motions, and other legal documents. Arthur is also the host of the Legal Entrepreneur podcast. He holds a BA from Indiana University of Pennsylvania and a JD from Santa Clara University School of Law. Nick is the chair of the artificial intelligence practice at Barnes and Thornburg LLP and is based in Minneapolis, Minnesota. Nick is dedicated to remaining at the forefront of emerging legal issues related to generative AI, large language models or LLMs, and the evolving digital landscape. Nick is also the host of the podcast Minds and Machines. A thought leader in this space, Nick frequently writes and presents on AI-related issues and guides his clients through the labyrinth of opportunities and challenges inherent in today’s transformative technological ecosystem. Nick holds a BA from Virginia Tech and a JD from Baylor University School of Law. Welcome Arthur and Nick to the IP Fridays podcast. Arthur Rothrock: Thank you for having us. I’m really excited to be here and to do this with Nick. Nicholas Sarokhanian: Yeah, thank you so much. And what a great intro. You made me sound far more interesting and important than I think I am. So thank you for that. That’s great. Kenneth Suzan: Excellent. Welcome both to the podcast. We’ll start out with Arthur. Arthur, tell us about your AI litigation support platform known as Legion. How does it work? Arthur Rothrock: Sure. So Legion uses AI to draft fully formatted pleadings, discovery, and motions in minutes. Eventually, we’ll become a litigation operating system by offering case analytics, automatic deadline tracking, billing, eDiscovery—all that good stuff. But for now, we’re laser-focused on nailing the most tedious and time-consuming drafting parts of litigation. This is all possible because Legion is built from the ground up with AI instead of being an existing platform with AI bolted on. For example, Legion has context awareness of every document that is uploaded, allowing it to suggest relevant drafting tasks. The drafting process uses a mix of advanced models, prompt engineering, and my experience as a litigator. We treat AI like a scalpel, not a sledgehammer. Kenneth Suzan: Arthur, what jurisdictions does Legion currently apply to? Arthur Rothrock: Right now, Legion is focused on U.S. federal court litigation, but we’re expanding into state courts and are exploring international applications. Smaller firms and solo practitioners have been the fastest adopters—they’re excited about how this levels the playing field. In-house teams are more cautious but curious. Kenneth Suzan: What motivated you exactly to create Legion? Arthur Rothrock: It started from a place of frustration. I saw firsthand how expensive and time-consuming litigation is, especially for people with limited resources. One woman had a clear defamation case but couldn’t afford the $100,000 it would cost to get to trial. That stuck with me. I wanted to build something that could help people like her access justice without going bankrupt. AI can dramatically reduce drafting time and litigation costs. Kenneth Suzan: Nick, is AI a fad? Or is this something that is here to stay? Nicholas Sarokhanian: It’s absolutely here to stay. Maybe in 2022 or early 2023, some thought it was a passing trend, but the pace of development since then has made it clear this is permanent. As others have said: the AI we have now is the worst we’ll ever have—it’s only getting better. Yes, it will change workflows and increase demand for elite legal minds who can go beyond what AI can do. But it will also democratize access to legal tools. Those who adapt will benefit most. Kenneth Suzan: Arthur, how is AI improving efficiency in litigation preparation? Arthur Rothrock: It speeds up almost everything. Drafting takes a tenth of the time. Reviewing deposition transcripts, finding that obscure case you used years ago—AI handles that efficiently. It all adds up to huge gains in productivity. Kenneth Suzan: Nick, what are your thoughts about Arthur’s position? Would you use an AI litigation support platform? Nicholas Sarokhanian: I already do. I’ve been using generative AI since late 2022, personally and professionally. When firm policies and client consent allow, I use it in litigation too. It’s not magical, but it’s incredibly useful. For instance, I recently had a legal AI tool generate a discovery tracker spreadsheet from a PDF with over 80 objections. It did it in a minute. That saved hours of associate or paralegal time. It’s not perfect, but it’s a fantastic head start. Kenneth Suzan: Now, there are limitations. Arthur, how do AI tools still struggle and require human oversight? Arthur Rothrock: The big issue is hallucination—AI making things up. Lawyers are getting sanctioned for citing fake cases. Long and complex tasks are still a problem unless broken down. Tools like retrieval-augmented generation (RAG) aren’t foolproof, and success often depends on user skill. AI agents are improving, but they still need supervision. AI can’t yet replace human judgment in seeing the bigger legal picture. For now, and probably for a long time, a lawyer must be in the loop. Kenneth Suzan: Nick, your thoughts on the hallucination issue? Nicholas Sarokhanian: It’s inherent in how large language models work—they make predictions based on probability. That means sometimes they get it wrong. Improvements are happening quickly, but hallucinations remain a real issue. My advice to young lawyers: don’t be the cat lawyer. Learn the tools on low-risk tasks, like personal life stuff. Get comfortable before using it in client work. And always double-check the output, especially citations. Even big firms make mistakes. Ethically, lawyers are expected to be competent with technology, so you can’t just ignore it. Kenneth Suzan: We’re almost out of time. Arthur, can you comment on real-world time and cost savings? Arthur Rothrock: Sure. A 15-page complaint might take 15 hours to draft, costing $7,500. Legion can do it in a few minutes for $150, plus an hour of review—so $650. Motions to compel, which usually cost $15,000 in attorney time, can be done for under $1,000 with Legion. Even with general AI tools, if you’re savvy, you can cut time by two-thirds. AI is best when you already understand the subject—it’s a great drafting assistant, but shouldn’t be your source of truth. Kenneth Suzan: Well said. Arthur, Nick—thank you so much for spending time with us today on the IP Fridays podcast. This has been truly fascinating. Nicholas Sarokhanian: Yeah, thanks for having us. Kenneth Suzan: Thank you.

My Co-Host Ken Suzan and I are welcoming you to episode 163 of our podcast IP Fridays! Today’s interview guest is Lucy Wojcik, who is Chief Intellectual Property Counsel at OCADO GROUP PLC, and we talk about cross-border patent litigation, in-house organization of IP teams, agile IP and much more! Lucy has just been inducted into the IP hall of fame. But before we jump into this very interesting interview, I have some news for you. On May 22, the European Commission released its biennial report on the protection and enforcement of intellectual property rights in third countries. The report identifies countries where IP deficiencies cause significant economic harm to EU interests. China remains a top priority, followed by India and Türkiye. The accompanying Counterfeit and Piracy Watch List details trends in counterfeiting and piracy, listing problematic websites and marketplaces. In May, the Trump administration dismissed Shira Perlmutter, the top U.S. copyright official, shortly after removing Librarian of Congress Carla Hayden. These actions followed the Copyright Office’s report expressing concerns about using copyrighted content to train AI systems. The dismissals have sparked significant backlash from the copyright community. The UK government’s proposal to amend copyright laws to benefit AI developers has faced criticism. The plan would allow tech firms to use copyrighted content unless creators opt out, a mechanism deemed impractical by industry stakeholders like Sony Music. Critics argue that such changes could jeopardize investments and disrupt existing licensing negotiations. In May 2025, the U.S. Patent and Trademark Office (USPTO) rejected Tesla’s attempt to trademark the term “Robotaxi” for its vehicles, citing that the term is too generic and merely descriptive. The USPTO issued a “nonfinal office action,” providing Tesla with a three-month window to respond before the application is potentially abandoned. A separate application by Tesla to trademark “Robotaxi” for its upcoming ride-hailing service remains under examination. Additionally, Tesla’s efforts to trademark “Cybercab” have been delayed due to conflicts with existing trademarks containing the word “Cyber.” On May 9, 2025, the WHO and the Medicines Patent Pool (MPP) announced a sublicensing deal with Nigeria’s Codix Bio to locally produce rapid diagnostic tests using SD Biosensor technology. The agreement, part of WHO’s Health Technology Access Programme, aims to improve access to affordable diagnostics in low- and middle-income countries, initially targeting HIV and adaptable for other diseases and future health emergencies. Now, let’s jump into the interview with Lucy Wojcik! From Consultant to Chief IP Counsel: How Lucy Wojcik Built Ocado’s IP Powerhouse In the latest episode of IP Fridays, I had the pleasure of speaking with Lucy Wojcik, Chief IP Counsel at Ocado Group PLC, who shared her remarkable journey from external consultant to head of one of the most dynamic in-house IP teams in Europe. Recently inducted into the IP Hall of Fame and awarded “In-House IP Leader of the Year” by Managing IP, Lucy offered deep insights into how to build a scalable, resilient IP strategy inside a fast-growing tech company. A Career Built on Curiosity and Timing Lucy began her journey with Ocado in 2014, initially working just one day a month as an external consultant. It didn’t take long before she realized the company’s immense innovation potential. Gradually increasing her involvement, she joined full-time two and a half years later as Ocado’s first Head of IP. Today, she leads a team of 11–12 people, reflecting not only the company’s growth but also its expanding innovation pipeline in robotics, automation, and AI-driven logistics. IP Strategy in a Complex Business Model Ocado’s business model is unique: while the company operates its own online grocery platform in the UK, it also licenses its proprietary logistics and automation systems to other grocery retailers internationally. This dual role—as both operator and service provider—demands a sophisticated and forward-thinking IP strategy. According to Lucy, about 40% of Ocado’s patent portfolio protects technologies actively in use, with the remainder covering speculative innovations and future business directions. Some speculative patents filed as early as 2015 have since become core to the company’s latest commercial offerings. Orchestrating One of the Largest IP Litigations in Europe One of the most impressive parts of Lucy’s story is her leadership during Ocado’s multi-jurisdictional litigation against AutoStore. Beginning in October 2020, this sprawling legal battle involved more than 150 lawyers across forums such as the US International Trade Commission, the UK High Court, the EPO, and courts in Germany and Israel. At its peak, Ocado faced 28 EPO oppositions and simultaneous proceedings in numerous jurisdictions. Lucy candidly described the experience as “the world’s biggest project management challenge.” She served as the linchpin between Ocado’s executive team and its external counsel, ensuring a tightly coordinated response across legal, technical, and commercial teams. Her team developed simple tools—like one-slide patent summaries with visual elements—that proved essential in communicating complex legal developments to non-IP stakeholders across the business. Embedding IP into Agile Engineering Workflows One of Lucy’s most forward-looking approaches is how she embedded her team into Ocado’s agile engineering culture. Rather than acting as gatekeepers who respond to invention disclosures, the IP team participates in sprint planning, stand-ups, and engineering away-days. This integration allows the team to identify and protect innovations in real-time—even if it means occasionally filing imperfect or early-stage patents. Lucy sees this as a worthwhile trade-off for ensuring IP is deeply connected to the business’s fast-paced product development. A Culture of Practical IP Leadership Throughout the interview, Lucy emphasized the importance of delivering IP value that aligns with business reality. Her mantra: “Do the best you can in the moment with the resources you have.” Whether it’s advising on NDAs, coaching engineers on what they can say at conferences, or managing overlapping international filings, Lucy’s philosophy is grounded in practical, context-aware decision-making. Advice to In-House Counsel: Know Your Audience Lucy closed the conversation with timeless advice for IP professionals working in-house: always tailor your communication to the recipient. Whether writing to the CFO, CEO, or a junior engineer, it’s essential to consider what that person needs to know—and to deliver it clearly. She even introduced a practice borrowed from engineering culture: the “TL;DDR” (Too Long; Didn’t Read) summary at the top of her emails, followed by deeper analysis below. Lucy Wojcik’s journey is not just about managing patents—it’s about aligning IP with business strategy, empowering engineering teams, and leading under pressure. Her experience is a masterclass in modern in-house IP leadership. Rolf Claessen: Today’s interview guest is Lucy Wojcik. If you don’t know her, she’s the Chief IP Counsel at Ocado Group. She was recently inducted into the IP Hall of Fame and is also a member of the IAM Strategy 300. She was awarded “In-House IP Leader of the Year” by Managing IP. Thank you very much for being on IP Fridays, Lucy. Lucy Wojcik: It’s a pleasure. Nice to talk to you. Rolf Claessen: You lead quite a large IP team. Maybe you can tell us first how you got there. What was your role at the beginning, and how did you become Chief IP Counsel? Lucy Wojcik: It’s quite an interesting story. I sometimes call it the longest job interview in history. I started as a consultant in January 2014 for just one day a month. Over time, I realized there was a great team with lots of innovation and opportunity, so I gradually increased my involvement. After two and a half years, I officially joined as Head of IP—the first person in that role. Over time, I grew the team to around 11 or 12 people, especially as we faced significant litigation and an increase in R&D activity. I was named Chief IP Counsel in April 2021. Rolf Claessen: Let’s talk about your patent portfolio. It’s very diverse—autonomous vehicles, robotic arms, software. Can you give us an overview? Lucy Wojcik: The portfolio mirrors what the company does. Around 40% protects our active work—robots, software, methods. Some of it is speculative, and sometimes that pays off. For example, a speculative filing from 2015 turned out to be vital for a major new piece of equipment. We also invest in other ventures, like a 3D printing company or vertical farming, and our IP strategy reflects that diversity. Rolf Claessen: Ocado also licenses its systems to other retailers, who might be seen as competitors. How do you manage that? Lucy Wojcik: Ocado Retail operates only in the UK, in a joint venture with Marks & Spencer. Outside the UK, we are a systems provider. It avoids direct competition and allows us to test and showcase innovations in the UK before offering them abroad. Our retail operations also help us understand our partners’ challenges. Rolf Claessen: You’ve become well known for managing large-scale litigation. Can you walk us through that? Lucy Wojcik: We had extensive litigation with AutoStore, which started in October 2020. It involved cases in the US, UK, EPO, Germany, Israel, and even the UPC. At the peak, we were handling 28 oppositions at the EPO and coordinating over 100 legal professionals globally. My role was project management—connecting external counsel with internal stakeholders and ensuring a coherent strategy across jurisdictions. Rolf Claessen: How did you manage such complexity? Lucy Wojcik: Early on, we created one-slide summaries for each patent, which helped communicate internally. It’s about translating legal risk into business terms—especially when communicating with 5,000 employees who aren’t IP experts. Rolf Claessen: I was surprised to hear that your IP team works closely with engineers using agile methods, sprints, and scrums. That’s unusual for IP departments. Lucy Wojcik: Yes! We are deeply embedded in the tech teams. We join their meetings and sprints, which lets us identify protectable inventions early—even if that means filing provisional or imperfect patents. It’s not always efficient from a classic IP perspective, but it makes our work relevant and timely. Rolf Claessen: You’ve said that your role is about delivering the best IP value given commercial realities. Can you elaborate? Lucy Wojcik: In-house work is about context. You never have all the resources or time you’d like. Sometimes a “good enough” patent is all that’s needed to enable a commercial move. We try not to let IP slow things down—we offer practical solutions instead. Rolf Claessen: What’s your most important advice for in-house IP professionals? Lucy Wojcik: Always think about your audience. Tailor your communication. I often use the TL;DR method—”Too Long; Didn’t Read”—with key points at the top of an email, followed by analysis. Different stakeholders need different things: the CFO wants to know the cost, the CEO wants strategy, and engineers want to know what they can and can’t do. Rolf Claessen: What’s one thing you wish outside counsel would do differently? Lucy Wojcik: Honestly, I’ve had great experiences. But early in my time at Ocado, I was frustrated by firms charging for travel time. It might be better for law firms to take a long-term view, especially with smaller clients—build trust first, revenue later. And always be honest about your capacity and fit. Rolf Claessen: Thank you so much for this fascinating and wide-ranging conversation! I’m sure our listeners will find a lot of inspiration in your story. Lucy Wojcik: Thank you for having me. It was a pleasure.

My co-host Ken Suzan and I are welcoming you to episode 162 of our podcast IP Fridays! Today’s interview guests are Debbie Hoffman and Anna Mouland and my co-host Ken Suzan talks with them about bequeathing bitcoin, so what happens to cryptocurrency after death? “Bequeathing Bitcoin, Storing and Transferring Cryptocurrency Upon Death” published in the November/December 2024 issue of the American Bar Association Probate & Property Magazine  URL: https://issuu.com/rptelaw/docs/2024-aba-rpte-v38-06-november-december-issue/s/59716998 Debbie Hoffman https://www.linkedin.com/in/debbiekhoffman  Anna Mouland https://www.linkedin.com/in/annam44 https://bequest.com Before we jump into this interview, I have news for you! My book “Marken. Recht. Einfach.“ (which can be translated into something like trademarks in laymen’s terms) entered the bestseller charts of manager magazine in Germany for business books on rank 8! I am very proud and thankful for all the support by so many people, who made this happen! First I want to talk about two recent decisions by the Munich Local Division of the Unified Patent Court (UPC), where the court issued Anti-Anti-Suit Injunctions (AASIs) to prevent defendants from seeking legal orders in U.S. courts that would block European patent enforcement actions. In these cases, the patent holders owned standard-essential patents (SEPs) and had initiated infringement proceedings in Germany. The defendants attempted to obtain U.S. court orders—known as Anti-Suit Injunctions (ASIs)—to halt these European proceedings. The UPC responded by issuing AASIs, thereby prohibiting the defendants from pursuing such U.S. court orders. The court justified its decisions by emphasizing the need to protect the patent holders’ rights to legal recourse under European law and the EU Charter of Fundamental Rights. It also highlighted the urgency of the matter and proceeded without a prior hearing to prevent potential counteractions in the U.S. courts. These rulings align with existing German case law and underscore the UPC’s commitment to safeguarding the integrity of European patent enforcement. For laypersons, an Anti-Anti-Suit Injunction (AASI) is a legal measure used to counteract an Anti-Suit Injunction (ASI). An ASI is a court order that prevents a party from initiating or continuing legal proceedings in another jurisdiction. In this context, U.S. courts issued ASIs to stop European patent enforcement actions. In response, the European court issued AASIs to prevent the defendants from obtaining or enforcing those U.S. court orders, thereby ensuring that European legal proceedings could continue without interference from foreign courts.​ The president of the EPO has submitted his opinion regarding the case G 1 /24 pending before the Enlarged Board of Appeals of the European Patent Office. The President’s submission supports the view that interveners should have full party status, including the right to bring forward new arguments and requests, as long as this does not put other parties at a procedural disadvantage. This case could clarify important aspects of procedural law at the EPO, especially concerning third-party involvement in opposition and appeal proceedings. I just found out in Reuters that Chinese automaker Geely plans to open its pool of battery safety patents to the entire auto industry, the company said at a media event at the Shanghai auto show last Wednesday. Geely said it has obtained more than 1,500 safety patents.  

I am Rolf Claessen and my co-host Ken Suzan and I are welcoming you to episode 161 of our podcast IP Fridays! Today’s guest is António Campinos, who is the president of the European Patent Office. We talk about the Draghi report, patent quality, the Unified Patent Court, AI, validation in non-European countries and many other topics! But before we jump into this interview, I have news for you: Our podcast IP Fridays has been named as one of the best intellectual property podcasts in the world by FeedSpot! You can find the link in the shownotes. The European Patent Office has published the Patent Index 2024. The US, Germany and Japan are the strongest patent filers at the European Patent Office, followed by China, South Korea and France. The biggest three patent filers are all from Asia, namely Samsung, Huawei and LG. The strongest US filer is Qualcomm in fourth place and the biggest German filer is Siemens at 6th place. Now for an unusual decision of a patent judge: magistrate Judge Valerie Figueredo of the US District Court for the Southern District of New York has ordered a patent litigator Bill Ramey to pay the attorney fees of the opponent Google. She said that the attorney “failed to conduct an adequate pre-suit investigation that would have uncovered information demonstrating that the patent-infringement claim lacked merit and also ‘unreasonably continued pursuing’ the claim despite notice from the defendant that the claim lacked a colorable basis,”. Google was represented by Barnes & Thornburg. The EUIPO has published CP15 Common Communication “Comparison of goods and services: treatment of terms lacking clarity and precision and common interpretation of Canon criteria and other factors”. It enhances consistency in the comparison of goods and services across the EU. Terms lacking clarity and precision must not be excluded from the outset but should be interpreted based on their natural and literal meaning, considering the Nice Classification. Such terms cannot be interpreted in a way that benefits the trade mark owner. If identical or synonymous unclear terms appear in both the earlier and the contested mark, they are deemed identical. Additionally, a single factor—such as intended purpose, relevant public, or distribution channels—may be sufficient to establish similarity. By introducing common definitions and interpretations of key comparison criteria, CP15 promotes transparency, legal certainty, and harmonized decision-making among IP offices. I have published a book “Marken. Recht. Einfach.” With the publisher Frankfurter Allgemeine Buch on 5th March 2025. Today I learned that I my book entered the bestselling list of manger magazine for business books at 8th place! I am very grateful for all who have helped me with this huge success! And now let us jump into the interview with António Campinos! In this episode of IP Fridays, Rolf Claessen interviewed António Campinos, who has been the President of the European Patent Office since July 1, 2018, and was previously the head of the European Union Intellectual Property Office (EUIPO). The first topic centered around the Draghi Report, which Campinos described as a much-needed wake-up call for Europe. He emphasized that the report underlined the continent’s innovation gap in comparison to global powers such as the United States and China. One of the critical messages of the Draghi Report, according to Campinos, is that Europe is hindered by excessive regulation, which weakens its internal market and impairs its ability to compete economically. He noted that although Europe has produced more startups than the US over the past five years, many of these startups eventually relocate to the US due to the lack of sufficient scale-up funding and a highly fragmented internal market. This fragmentation brings bureaucratic complexity, which especially impacts micro-entities and startups. Campinos argued that, to maintain its welfare model and remain competitive, Europe must become more productive by investing not just more, but smarter in innovation. Campinos continued by pointing out that while Europe leads in certain technological areas—such as transportation, mechanical engineering, chemistry, and clean technologies (especially hydrogen, power grids, and plastics recycling)—it lags behind in others. Batteries, for instance, remain a major area of concern where Asia is leading. In AI, although patent filings have grown significantly in Europe, the US and China are still far ahead. Similar gaps were observed in biotech and pharmaceuticals. He stressed that if Europe wishes to accelerate its innovation trajectory, it must both increase and improve the efficiency of its innovation investments. Rolf then asked how the European patent system could help mitigate fragmentation and complexity. Campinos responded with two perspectives. From a legal standpoint, the EPO launched a convergence program in collaboration with its member states to harmonize legal practices across Europe. This includes standardizing approaches in the granting process for computer-implemented inventions and AI-related patents. He argued that harmonized practices significantly reduce administrative burdens, particularly for SMEs and research institutions. The second and more strategic angle focused on improving data accessibility and usability. Campinos emphasized the importance of converting raw data into actionable knowledge and business intelligence. The EPO has made patent data available through tools like Espacenet, which saw over 18 million visits in the past year. The EPO is now investing in advanced technologies like large language models and natural language processing to make this data more readable and accessible. A notable example is the new “Technology Intelligence Platform,” which allows users—whether researchers, businesses, or policymakers—to explore innovation trends, leading companies, and technology landscapes without requiring prior expertise. Rolf brought up the unitary patent and the Unified Patent Court (UPC), asking about the insights gained since its launch. Campinos called it a “huge success,” citing over 50,000 requests for unitary protection and more than 700 court decisions delivered within six months. He highlighted that the system was deliberately designed to be attractive to smaller entities. Data shows that one-third of unitary patent requests came from SMEs and individual inventors, with half of these SMEs choosing the unitary effect after grant—figures that outpace participation in traditional European patents. He expressed hope that more EU member states would soon join the system, encouraged by the success and efficiency of the UPC. Ultimately, he suggested that political will could extend the system’s reach even beyond the EU. Reflecting on the long road to establishing the UPC, Campinos acknowledged past mistakes, particularly the lack of early stakeholder involvement. He believes the key lesson is the importance of listening to and working with all stakeholders—including industry, judges, and professionals—early in the process. Applying this lesson to current topics like standard-essential patents (SEPs) and supplementary protection certificates (SPCs), Campinos supported the European Commission’s decision to withdraw its SEP proposal, which he said had been widely criticized. However, he still sees the need for measures to improve transparency and licensing practices in SEPs, and he noted that any SPC reform should involve the jurisdiction of the UPC. The conversation then shifted to digital transformation and AI. Campinos stated that the primary challenge for any organization, including the EPO, is simplification. Digital tools must support simplified legal and administrative processes, otherwise, transformation efforts fail. He emphasized the importance of change management and the need to adopt an iterative development mindset with minimally viable products that evolve over time. With regard to AI specifically, the EPO maintains a “human-in-the-loop” approach, ensuring that all final decisions are made by humans, even when AI tools are used in the process. Rolf raised the issue of maintaining quality amid high user expectations and a growing volume of work. Campinos highlighted the EPO’s objective strengths: a highly skilled workforce of over 4,000 examiners, access to the world’s largest collection of patent and non-patent literature, and powerful search tools. One unique feature of the EPO’s process is the preliminary opinion on patentability included in the search report, typically delivered within six months. This early insight helps applicants secure funding and plan business strategies. Campinos also mentioned that the EPO has strengthened its quality control processes, expanded user consultations through stakeholder panels (SQUAPs), and introduced pragmatic quality assessments involving external patent attorneys and internal examiners. On the topic of applicant engagement, Rolf noted that informal in-person meetings with examiners had been helpful in the past and asked whether such interactions might return. Campinos responded that while all meetings are formally structured, the EPO has made extensive efforts to engage applicants through one-on-one meetings, company visits (virtual, in-person, or hybrid), and even company-led training sessions. A new initiative will send EPO teams to trade fairs to meet with multiple companies, including competitors, to learn about emerging technologies and collect feedback on the EPO’s processes and services. The discussion turned global as Rolf asked about the EPO’s efforts to meet the needs of international users. Campinos described the growth of validation agreements, which allow EPO patents to be recognized in non-member countries. From just 1.6 million global filings 15 years ago, the number has grown to over 3 million in 2023. The EPO now has agreements with six countries outside Europe, with Laos and Costa Rica recently joining. Together with its member states, the EPO’s validation system now covers a market of 720 million consumers. Campinos expressed optimism that further expansion in Latin America is likely in the future. In closing, Rolf asked Campinos for a message to users, innovators, and policymakers. Campinos responded by reaffirming the EPO’s commitment to delivering the highest-quality services and products. He acknowledged that mistakes may happen but emphasized that the office learns from them. To policymakers, he echoed a quote from Michel Barnier: “We have to understand before we act,” underlining the need for thoughtful, evidence-based policymaking in intellectual property matters. The interview concluded with mutual thanks and an appreciation of the opportunity to reflect on the EPO’s work, its role in the innovation ecosystem, and the future of patent law in Europe and beyond.

My co-host Ken Suzan and I are welcoming you to episode 160 of the IP Fridays podcast! Today`s interview guest is James E. Malackowski, the founder of Ocean Tomo, in my view the first successful patent auction venue. We talk about monetization and auctioning patents, use of blockchain technology for IP and especially for licensing, the economics of data rights and much more. But before we jump into this interview, I have news for you: The EUIPO and the EPO just released a new study ““Intellectual Property Rights and Firm Performance in the European Union.” on how intellectual property rights (IPRs) boost business performance in the EU. It looks at trade marks, designs, and patents, and shows that companies owning IPRs earn more revenue per employee and pay higher wages. Small and medium-sized enterprises benefit the most, with a 44% increase in revenue per employee compared to firms without IPRs. Yet, fewer than 10% of SMEs use registered IPRs—showing big untapped potential. https://www.euipo.europa.eu/de/news/observatory/epo-and-euipo-study-highlights-the-impact-of-intellectual-property-rights-on-firm-performance-in-the-eu The USPTO has unveiled a new strategy to guide the responsible development of artificial intelligence. This plan aims to clarify patent rules for AI inventions, foster public-private collaboration, and address ethical considerations like transparency and fairness. By creating clear guidelines and balanced regulations, the USPTO hopes to empower innovators and bring more AI-driven solutions to market. This strategy underscores the growing impact of AI on all industries and highlights the USPTO’s commitment to shaping the future of innovation. https://www.uspto.gov/subscription-center/2025/uspto-announces-new-artificial-intelligence-strategy-empower-responsible The European Patent Office (EPO) has introduced a new investor-mapping initiative to strengthen Europe’s innovation ecosystem. By identifying key investors, the project aims to bridge the gap between invention and market, helping inventors and businesses find the right funding and partners. The report introduces a new metric, the Technology Investor Score (TIS), which is the proportion of companies in an investor’s portfolio that have filed patent applications. This effort is designed to boost Europe’s competitiveness and foster greater collaboration across industries, research institutions, and venture capital. https://www.epo.org/en/news-events/news/bridging-gap-mapping-investors-strengthen-europes-innovation-ecosystem In this episode of IP Fridays, I speak with James E. Malackowski, an intellectual property (IP) pioneer best known for founding Ocean Tomo. James shares how Ocean Tomo introduced the world’s first large-scale public auctions for patents, trademarks, and copyrights. He also explains how these auctions helped create market-based “price discovery” for IP assets—something that had never been done so openly before. Beyond auctions, James discusses strategies for CEOs of mid-sized tech companies to extract real value from their R&D and patents. He emphasizes the importance of planning ahead, understanding your own portfolio, and making IP a regular topic at the board level. We also talk about why early, strategic patent filings can protect your company from missing out when others file first. Another major topic is the potential of blockchain technology for patent licensing. James outlines how blockchain can offer an immutable and transparent way to package and transfer patent rights—potentially even creating an “IP coin” to finance innovation. He notes that while blockchain is already starting to be used in data rights, it could reshape the entire licensing landscape by allowing more efficient trading and tracking of IP. We also cover the idea of the complete economic chain for IP licensing, which means recognizing everyone’s contribution from the first supplier all the way to the final product manufacturer. James says it may be more efficient to handle royalties and costs at the beginning rather than chasing every link in the chain later. Finally, we explore how the merger with J.S. Held has expanded Ocean Tomo’s services. With over 500 in-house engineers, J.S. Held brings deep technical expertise to help Ocean Tomo’s clients in areas such as valuation, expert witness services, litigation support, and more. Key Topics How Ocean Tomo’s patent auctions changed the market Strategies for CEOs to plan and manage their patent portfolios Blockchain’s role in creating more transparent and tradable licensing rights The “complete economic chain” concept for fair and efficient IP royalties Why data rights and new marketplaces for data are becoming more important Ocean Tomo’s expanded offerings and partnership with J.S. Held Connect with James Email: [email protected] Website: www.oceantomo.com (or www.jsheld.com) Enjoy the episode, and let us know your thoughts on these emerging trends in the IP world! Jim Malackowski: Hello everyone, my name is Jim Malackowski. I am the co-founder and senior managing director of Ocean Tomo, and I’m thrilled to be here on IP Fridays. Rolf Claessen: Today’s interview guest is James Malackowski, the co-founder and senior managing director of Ocean Tomo, a part of J.S. Held. Before founding Ocean Tomo over 21 years ago in 2003, Jim had several positions in the IP field. He holds a degree in business administration from Notre Dame in Indiana, and in 2022, Jim was inducted into the IP Hall of Fame. Thank you very much for being on our IP Fridays podcast, Jim. Jim Malackowski: Rolf, thank you for having me. I’m excited for the conversation. Rolf Claessen: Alright. So, I already mentioned that you are the founder of Ocean Tomo, and you introduced the world to the first public auctions of patents, trademarks, and copyrights. In my personal recollection, it was the first patent auction site that really worked on a larger scale. I think there were some tries before that, but no one really succeeded. So, tell me more about the story behind Ocean Tomo and why you think it was successful. Jim Malackowski: Sure, and Rolf, your question is actually a question within a question. Let me tell you about Ocean Tomo, and then let’s talk specifically about the auction, because that itself is a really interesting story. With respect to the firm, the history of Ocean Tomo is really very similar to the history of my career. So, we can trace our activities back to the Court of Appeals for the Federal Circuit in the United States changing and forming a new way of looking at intellectual property back in the 1980s. Jim Malackowski: I started my career as an accountant shortly thereafter and opportunistically happened to work on calculating damages for patent infringement litigation. I was the first in a very small team to do that straight out of college. Because I worked on the first assignment, they gave me the second. After the second, the third, and then I was declared a member of a small expert team as a result. So, I spent the early part of my career, the first three years, doing nothing but looking at intellectual property in a litigated situation. Jim Malackowski: In the late 1980s, a client came back and asked me to value a patent, not for the courtroom, but for a business transaction. I can remember that day well. I literally ran down the hall to the senior partner’s office talking about my first piece of revenue credit. His answer was no. He said it’s not something that we do. It wasn’t something covered by the accounting standards or their insurance. So, a week after my 25th birthday, I left the firm. Four of my peers came with me, and we started what was the first-ever intellectual property dispute accounting and valuation boutique. We got lucky. That firm grew from five people, later partnered with private equity, and ended up selling nearly 300 people in the late 1990s. Jim Malackowski: After that, I went to work at one of the investment houses that had invested in us and really had my eyes opened to the power and impact of intangible assets and intellectual property, particularly as it relates to investment decisions. I worked on that for two years. Then, when the non-compete was over from the sale, literally to the day, we started Ocean Tomo in 2003. My history has been an amalgamation of those experiences. Jim Malackowski: Your question also asked about the auction, which is one of our favorite chapters within the firm in the early 2000s. One of my partners at that time, our vice chairman, was a very serious car collector. As we were explaining to him the frustration we had of selling patents as a broker, he basically said to me, “Jim, why do you make it so hard? Why don’t you try to sell patents like Sotheby’s would sell art, or like Gooding & Company sells cars? Publish a catalog, pick a date, hire an auctioneer, and let the buyers determine the market.” Jim Malackowski: That idea stuck with me. Within six months, we had our first auction in San Francisco in 2006. We published a fancy catalog, hired a British-accented auctioneer experienced in antiques and automobiles, and assembled 80 lots of patents for sale. That day, more than 400 people showed up, including CIPO’s, former directors of patent offices worldwide, and a large media presence. When the auction started, the room went silent—it was the first time anyone understood what manageable patent portfolios were worth. Up to that point, patent sales weren’t disclosed, and this was true price discovery. Jim Malackowski: At that first auction, we sold about a third of the catalog for several million dollars. In the years that followed, we sold over $100 million on the auction floor. That event was a game-changer in recognizing intellectual property and patent value. Rolf Claessen: Fascinating. So, what do you think attracted those 400 people to that first auction? Jim Malackowski: There were three reasons: First, it was price discovery—they wanted to know what these patents would sell for. Second, it was a market-building networking opportunity, as dedicated IP brokerage and valuation conferences didn’t exist back then. And third, fear—fear that a patent that could impact their business might sell, and they’d miss the chance to acquire it. Rolf Claessen: Very interesting. And it’s always a recurring question: How much is a patent worth? Many of my clients, especially medium-sized companies with maybe 500 to 1,000 employees, ask me, “We’ve filed all these patents—how much are they worth?” My response is often that the value of a patent is what someone is willing to pay for it. Do you agree? Jim Malackowski: Absolutely. The worth of patents can be evaluated in two ways. First, how do they help you build value in your business? If you’re able to raise capital or introduce products with unique features that maintain a proprietary position, there’s obvious value. Second, how do they create value for others? If others are using your intellectual property to generate revenue or capture market share, then it’s valuable to them. Ideally, those situations lead to win-win transactions where value is shared. Rolf Claessen: That’s a great point. Now, imagine you’re the CEO of a medium-sized, tech-driven company. What would you tell yourself to maximize the value of your research and patents? Jim Malackowski: Great question. Let’s break it down into three levels. At the highest level: Plan for it. Failing to plan is planning to fail, and that applies to intellectual property. I recommend designating someone on your board or advisory team to oversee IP. This ensures it becomes a regular part of board discussions and elevates the role of intangibles in your company strategy. Jim Malackowski: Next, develop a strategic IP plan. For us, that starts with a landscape analysis—understanding what you own and what your competitors own. Then, determine your principles: Are you willing to out-license, enforce, or in-license? Are you managing IP holistically across the business or within divisions? Once you know these principles, you can align your IP strategy with your business plan. Finally, educate your team about the importance of IP. Share your plan with the board, the C-suite, and even the broader organization so everyone understands the role of intellectual property in supporting the business. Rolf Claessen: That’s incredibly helpful. Now, let’s shift to new technologies like blockchain. I believe blockchain has great potential for patent licensing. Can you explain why blockchain is suitable and why it’s not widely used yet? Jim Malackowski: I agree that blockchain holds tremendous potential for IP, including patents, copyrights, data, and trade secrets. Blockchain is efficient, transparent, and immutable, making it ideal for documenting and packaging IP for transfer. For example, it allows you to wrap trade secrets or know-how into a blockchain container, ensuring everyone understands its scope and creation date. Jim Malackowski: Blockchain also enables valuation, balance sheet recognition, and secondary trading. Imagine licensing a patent wrapped in blockchain data—you could later sell that right to a third party. While adoption has been slow, it’s starting to gain traction, especially in data rights. Blockchain tools are now being used to codify, package, and transact data, and I believe we’ll see similar developments in patents. Rolf Claessen: That’s exciting. You mentioned earlier the idea of a blockchain-based IP coin. Could you elaborate on that? Jim Malackowski: Sure. An IP coin could function as a cryptocurrency secured by patents. For example, you could create a portfolio-backed cryptocurrency where each token represents a specific IP right. This could be used for financing, with patents serving as collateral. While we’re not there yet, it’s an area we continue to explore. Rolf Claessen: Interesting. But the legal framework for blockchain-based licensing seems outdated, at least here in Germany. Do you think the law will adapt? Jim Malackowski: It will have to. One exciting concept is using blockchain to unitize IP rights. For example, if a patent portfolio covers automotive technology, you could create a million unit license rights using blockchain. A manufacturer could buy 100,000 units today and sell unused rights to a competitor later. This approach benefits patent owners because they get paid upfront while allowing buyers flexibility. Blockchain makes this possible by enabling transportable, easily tradeable rights. Rolf Claessen: That’s a compelling vision. Before we move on, you mentioned the idea of considering the complete economic chain for IP licensing. What does that mean? Jim Malackowski: It’s about ensuring value is recognized and royalties are shared across the entire supply chain, from the original innovator to the final product manufacturer. Today, patent owners often have to approach each link in the chain separately, which is inefficient. A better approach would involve assigning royalties at the start and passing them along the chain in a clear, explicit way. This would reduce litigation and uncertainty while ensuring everyone is fairly compensated. Rolf Claessen: That makes sense. Now, let’s switch to data rights, another emerging topic. You’ve mentioned the need for a market for data rights. Can you explain what you mean by that? Jim Malackowski: Sure. Data rights can be viewed from two perspectives: personal and business. On a personal level, we often give apps permission to collect our data without receiving any compensation. There’s an opportunity to create a market that recognizes the value of individual data. Jim Malackowski: On the business side, there’s already an active market for data—like mailing lists or data sets used for AI and machine learning. Blockchain and other tools can make these markets more efficient by enabling secure, transparent transactions. We’re excited to see these markets evolve. Rolf Claessen: That’s a fascinating area to watch. Finally, Ocean Tomo is now part of J.S. Held. What services do you offer beyond auctions? Jim Malackowski: Ocean Tomo has always been known for different things by different people. Lawyers know us for litigation expertise, while others associate us with valuation or auctions. Today, as part of J.S. Held, we’ve expanded our offerings. We have four main practice areas: opinion services for litigation, management consulting for IP strategy and valuation, investment banking for transactions, and technical services like patent analytics and reverse engineering. Jim Malackowski: The partnership with J.S. Held has been transformative. With over 500 engineers on their team, we can now tap into deep technical expertise for any industry or technology. It’s been a very effective collaboration. Rolf Claessen: That’s fantastic. If listeners want to connect with you or learn more, what’s the best way to reach you? Jim Malackowski: They can email me directly at [email protected] or visit our website, where they’ll find an option to connect with us. We’re always happy to brainstorm and see how we can help. Rolf Claessen: Jim, thank you so much for this excellent interview. We covered so many exciting topics, and I’ve really enjoyed our conversation. It was a pleasure having you on IP Fridays. Jim Malackowski: Thank you, Rolf. It’s been a pleasure, and I look forward to doing this again.

My co-host Ken Suzan and I are welcoming you to the last edition #159 of IP Fridays in the year 2024 before the holiday season. We wish you all happy holidays and a successful year 2025! Our interview guest Ricardo Amigo is an IP lawyer in Argentina and will give us an update of the recent changes of the trademark law including the new Patagonia issue, the new trademark opposition procedure and much more. You can find the profiles of Ricardo here: https://bertonmoreno.com.ar/ricardo-e-amigo-en https://www.linkedin.com/in/ricardo-e-amigo-2b97467 Before we jump into this interview, I have news for you! First of all, my book “Marken. Recht. Einfach.” (translated into trademark law made simple) on trademarks will be published in March 2025. Many entrepreneurs and decision-makers feel overwhelmed by trademark law and make unnecessarily expensive mistakes – often out of ignorance. I am changing that with my book. I explain trademark law to the readers in an understandable way, without legalese, and show the readers how to recognize risks at an early stage and how to protect and enforce their trademarks securely. My knowledge from over 20 years of experience in this field will help the readers to make the right decisions with confidence. The link to the book is in the show notes (https://amzn.to/3D6IDKe, affiliate link). The European Patent Office has released its updated Guidelines for Examination, set to take effect on March 1, 2025. These revisions incorporate recent legal developments, user feedback, and the latest case law to ensure greater clarity and consistency in patent examination. By refining procedures and clarifying key points, the EPO aims to improve user experience and enhance the quality of granted patents. Users are encouraged to review the changes, as the Guidelines serve as an essential reference for navigating the European patent system. The United States Patent and Trademark Office (USPTO) has announced changes to its patent-related fees, effective January 19. These updates will impact various patent-related services, including filing, search, examination, and maintenance fees. The adjustments aim to reflect current cost recovery requirements and continue supporting the high quality of the U.S. patent system. Stakeholders should review the new fee schedule to ensure compliance and budget accordingly for upcoming filings and maintenance activities. The European Union Intellectual Property Office (EUIPO) has released a new report on the state of online piracy and copyright infringement in Europe, revealing that while overall piracy rates have declined, challenges persist. In particular, TV content accounts for half of all digital piracy, with viewers tuning into illegal TV content five times per month. To address these issues, the report emphasizes the importance of ongoing enforcement efforts, consumer education, and the availability of legal, affordable, and high-quality content. It also highlights the need for international collaboration to protect creators’ rights and nurture a healthy digital content market. Now let us jump into the interview with Ricardo Amigo with his update on the IP laws in Argentina! In this episode of the IP Friday’s podcast, intellectual property expert Ricardo Amigo, a partner at the Berton Moreno IP law firm in Buenos Aires, Argentina, provided insights into significant developments and best practices in Argentine trademark law. With over three decades of experience in IP, Amigo advises both local and international clients across a wide spectrum of industries. His areas of expertise include trademarks—both prosecution and litigation—as well as copyrights, industrial models, designs, patents, genetically modified organisms, biotechnology, and entertainment law. He is actively involved in professional associations such as the International Trademark Association, including its famous and well-known marks committee, and has academic credentials from the University of Buenos Aires and the Franklin Pierce Law Center’s IP Summer Institute. A central topic of the interview focused on a recent decision by the Argentine government to seek recognition of the term “patagonia” as an emblem under Article 6ter of the Paris Convention. The World Intellectual Property Organization’s recognition of this emblem, granted on September 30, 2023, has broad implications for trademark owners. In practice, since that date the Argentine trademark office has been rejecting all new applications containing the word “patagonia,” regardless of whether the applicant already owns a related mark. This situation puts established rights holders in a difficult position, with the only viable remedy being to challenge the decision in court. Amigo believes that, eventually, judicial rulings may force the Argentine trademark office to reconsider its stance, but warns that such a legal battle could span several years. Beyond these recent developments, Amigo emphasized the importance of thorough preparation before seeking trademark protection in Argentina. He recommends conducting comprehensive searches—identical, phonetic, and online—prior to filing an application. Many trademarks remain unregistered but are in active use, sometimes only on social media, so researching both official registries and the broader internet is crucial. Although unregistered trademarks may sometimes be enforced through the courts, the Argentine IP system, as an attribution-based one, places far more weight on registered marks. Securing a trademark registration ensures a stronger position when it comes to enforcement and can significantly improve the chances of obtaining injunctions against infringers. Amigo also discussed how the trademark opposition system in Argentina changed in 2018. Historically, an opposition would block the registration and require the applicant to pursue negotiations, mediation, and potentially lengthy court proceedings. Under the revised system, the burden has shifted more to the opponent. After a brief negotiation window, the opponent must ratify and provide additional arguments to the trademark office, leading to an administrative ruling rather than an immediate judicial case. This structural shift helps deter ill-founded oppositions and speeds up resolution times. In terms of maintaining rights, trademark owners in Argentina must declare use of their marks every five years and upon renewal. While the trademark office does not routinely verify the veracity of such declarations, use is essential for sustaining protection. Amigo also noted that the law now allows for partial cancellations: trademarks can be canceled for non-use of specific goods or services, although related goods may be considered a valid defense if the mark is used for them. Well-known trademarks, although not formally categorized in Argentine law, have long enjoyed judicial protection. Courts recognize and safeguard famous marks against unauthorized registrations or use, even if they are not registered. Nevertheless, Amigo recommends that owners of well-known marks should not rely solely on fame. Registering and using marks in the relevant classes of goods and services provides a stronger foundation for enforcement, whether through negotiations or legal actions. In summary, Amigo’s guidance for foreign and local businesses includes conducting careful pre-filing research, ensuring timely use and maintenance of marks, and understanding the complexities of Argentina’s evolving legal landscape. His advice underscores the importance of proactive IP strategies, from diligent searches to securing rights through registration, thereby providing trademark owners with a more secure footing in the Argentine market. Here is the transcript: Kenneth Suzan:Our guest today on the IP Friday’s podcast is Ricardo Amigo. Ricardo is a partner at the Berton Moreno IP law firm located in Buenos Aires, Argentina, and has been working as a lawyer specializing in IP since 1989. Ricardo represents local and foreign clients alike in almost all industries and has broad experience in trademark law—both prosecution and litigation—as well as copyrights, industrial models and designs, patents, genetically modified organisms, biotechnology, and entertainment law issues. He is a member of the International Trademark Association, including its famous and well-known marks committee, the Argentine Association of Industrial Property Agents, and the Coligio Publico de Abigados de la Capital Federal. Ricardo graduated as a lawyer from the University of Buenos Aires in 1994 and attended the Intellectual Property Summer Institute at Franklin Pierce Law Center in 1996. Welcome, Ricardo, to the IP Friday’s podcast. Ricardo Amigo:Thank you, Ken. Thank you very much for inviting me. Kenneth Suzan:Excellent, Ricardo. So I’ve heard there have been some recent developments in trademark law in Argentina in the last year. Can you share some information with our listeners? Ricardo Amigo:Yes, sure. The most relevant new issue that affects trademark rights in Argentina is that the Argentine government applied in 2023 for the term “patagonia” as an emblem under Article 6ter of the Paris Convention. On September 30, 2023, the World Intellectual Property Organization recognized the emblem “patagonia” in favor of the Argentine government. This is a very big issue for many trademark owners in Argentina who have acquired rights over trademarks that include the term “patagonia.” Since the emblem’s recognition, the Argentine trademark office has been rejecting all new trademark applications including “patagonia.” Even if you already own a “patagonia” mark and try to file a new design or variation, it is automatically rejected. This situation is disturbing for trademark owners—local companies, Argentine individuals, US companies—basically everyone. We are dealing with acquired trademark rights here. Kenneth Suzan:Wow. Are there any legal remedies that trademark owners have so they can fight back, or do they have to live with this ruling? Ricardo Amigo:When the trademark office issues an official action rejecting a trademark with “patagonia,” you can file an answer with all the arguments at hand, including that you already have an acquired right. But the trademark office won’t consider these arguments and automatically rejects the application. The only legal remedy would be to go to court and seek to have the administrative ruling reversed. You would argue that it’s unconstitutional because you already have property rights recognized under the Argentine constitution. We don’t know how the first ruling will go, but eventually I believe judges may rule in favor of trademark owners, forcing the trademark office to change its stance. Kenneth Suzan:We’ll have to keep an eye on that. Do you think a ruling might come out in the next year or two? Ricardo Amigo:No, it will take longer. Complaints were filed in 2024, and I expect at least four years until the first instance ruling, with the potential for appeals all the way to the Supreme Court. We’re talking about at least seven or eight years until we have a final ruling. Unfortunately, that’s the current situation in Argentina. Kenneth Suzan:We’ll certainly monitor that. Let’s shift topics. What do you consider the main issues that a trademark owner should address when seeking protection in Argentina? Any best practices? Ricardo Amigo:First of all, don’t use an emblem as a trademark. For any foreign company seeking trademark protection, it’s crucial to conduct a search—at least an identical search in the class of interest, and if possible a full phonetic search. This helps you find both identical and confusingly similar marks. Given today’s importance of social media, I also recommend conducting an internet and social media search. Many trademarks in Argentina are used but not registered. You don’t want to apply for a mark, start using it, and then face a claim from a third party claiming prior unregistered use. So, searches in the registry and online are both very important. Kenneth Suzan:You have many years of experience with trademark enforcement. Is it important to obtain a registration in Argentina to enforce trademark rights there? Ricardo Amigo:Yes, Argentina uses an attribution system where ownership and the right to exclusive use are obtained through registration. Courts have protected unregistered marks based on notoriety and evidence of use, but having a registered mark puts you in a much stronger position to enforce your rights and obtain injunctions. Without registration, it’s much harder and you need to prove extensive use. Kenneth Suzan:The trademark opposition system in Argentina was modified a few years ago. What changes can you share with us? Ricardo Amigo:Before 2018, when an opposition was filed, the application was blocked. The applicant had to negotiate, attempt mediation, and, if unresolved, go to court. This put the burden on the applicant. Under the new system, after the opposition is filed, there is a brief negotiation period of 90 days. Then the opponent must ratify the opposition and provide additional arguments. If the opponent doesn’t ratify, the opposition falls. If they do, it leads to administrative proceedings before the trademark office rather than a court action. Both sides present arguments and evidence. If the trademark office rules against the applicant, they can appeal directly to the Court of Appeals. This system shifts the burden to the opponent and reduces ill-founded oppositions. It also speeds up the process compared to the old system. Kenneth Suzan:What about trademark renewals in Argentina? Do you have to declare or prove use to keep a registration alive? Ricardo Amigo:Yes. You must file an affidavit under oath declaring that the trademark was used in the last five years. The trademark office doesn’t examine the truth of the declaration, but you need this to renew. Also, you must file a mid-term declaration of use after five years of registration. This helps prevent cancellations for non-use and strengthens your position against third parties. Kenneth Suzan:Can a trademark be partially cancelled for lack of use? Ricardo Amigo:Yes, under the new law. Previously, a cancellation action cancelled the entire mark. Now, a third party with a legitimate interest can seek partial cancellation for certain goods or services. You can defend against this by proving use of related goods or services, even if not exactly those specified. Defining what counts as “related” is complex and case-specific. Kenneth Suzan:What about well-known brands? How are they protected in Argentina? Ricardo Amigo:Well-known brands are not specially categorized in the Argentine law, but courts have long recognized their protection. Even without prior registration, courts have granted rights to owners of famous marks when someone tries to register or use them without authorization. That said, it’s always better to register the trademark in the relevant classes before entering the market. Don’t rely solely on fame. Have your trademark registered to put yourself in a better position when dealing with potential infringers. Kenneth Suzan:Ricardo, thank you for sharing your insights into Argentine trademark law. We appreciate your time on the IP Friday’s podcast. Ricardo Amigo:Thank you very much, Ken.

You can find the profile of Prof. Martin Bader here: https://www.thi.de/en/persons/prof-dr-oec-hsg-martin-bader My co-host Ken Suzan and I are welcoming you to episode 158 of IP Fridays. Today’s interview guest is Prof. Martin Bader. In my view, he is THE expert when it comes to IP management and in particular patent management. He is consulting some of the top patent filers in the world and I can pick his brain today. But before we jump into the interview, I have news for you! For years, German retailers faced legal uncertainties when using the term “Black Friday” in promotions, as it was registered as a trademark. Unauthorized use risked costly cease-and-desist letters. However, after multiple legal challenges, the German Federal Court of Justice (BGH) confirmed that “Black Friday” is no longer protected as a trademark. This decision allows retailers to freely use the term in their marketing without fear of legal repercussions. On November 25, 2024, the German Patent and Trade Mark Office (DPMA) began participating in WIPO’s Digital Access Service (DAS) as a depositing office for patents and utility models. This allows applicants to request priority documents electronically through WIPO DAS, enabling secure and efficient sharing of these documents with participating IP offices worldwide. Applicants can request electronic priority documents for free using Form A 9164 or opt for paper copies at a fee. Upon processing, the DPMA provides a confidential access code for retrieval of the documents via DAS. On October 31, 2024, the European Commission fined Teva Pharmaceuticals €462.6 million for abusing its dominant market position to delay competition against its multiple sclerosis drug, Copaxone. The Commission determined that Teva misused the patent system by filing multiple divisional patents to extend Copaxone’s exclusivity and engaged in a systematic campaign to spread misleading information about a competing glatiramer acetate product, thereby hindering its market entry. This decision underscores the EU’s commitment to maintaining competitive markets in the pharmaceutical sector, ensuring affordable drug prices, and fostering innovation. The Unified Patent Court’s Düsseldorf Local Division ruled that Aarke AB’s “Carbonator Pro” infringed SodaStream Industries Ltd.’s European Patent EP 1 793 917, which pertains to a device for carbonating liquids with pressurized gas. The court interpreted the term “flask” in the patent claims broadly, encompassing Aarke’s design despite differences from SodaStream’s illustrations. Aarke’s defense, invoking the “Gillette defense”—asserting that their product mirrored prior art and thus couldn’t infringe a valid patent—was rejected, as Aarke hadn’t filed a counterclaim challenging the patent’s validity. Consequently, the court granted SodaStream a permanent injunction against Aarke’s product in seven UPC member states, reinforcing the importance of precise claim interpretation and the limitations of the Gillette defense in infringement-only proceedings. Gibson has issued a cease-and-desist letter to 16 Creative, the company behind the newly launched Trump Guitars, alleging that the design of their electric models infringes upon Gibson’s protected Les Paul body shape. The Trump-endorsed guitars, marketed as the “only guitar officially endorsed by President Donald J. Trump,” feature designs with slogans like “Make America Great Again” and are priced up to $11,500 for autographed versions. Gibson, known for vigorously protecting its intellectual property, has previously taken similar legal actions against other manufacturers to safeguard its iconic designs. Key Insights on IP Management: Interview with Prof. Dr. Martin Bader In a recent episode of IP Fridays, I had the pleasure of interviewing Prof. Dr. Martin Bader, an esteemed expert in intellectual property (IP) management and Professor of Technology and Management at the Technical University in Ingolstadt, Germany, as well as an Adjunct Professor at McGill University, Canada. Over his extensive career, Prof. Bader has consulted numerous companies, authored a standard book on patent management, and shared his expertise on navigating IP challenges in today’s dynamic business environment. Here are the key takeaways from our conversation: 1. The Growing Importance of Innovation for SMEs Prof. Bader emphasized that medium-sized enterprises (SMEs) are under increasing pressure to innovate. Customers are less willing to pay premium prices, and SMEs face fierce competition from global players, particularly from emerging markets like China and India. This situation is compounded by technological shifts, such as digitalization and artificial intelligence (AI), which require companies to rethink their value chains and adapt their IP strategies accordingly. For instance, SMEs in engineering must shift focus from traditional hardware protection to safeguarding services and software. Companies that fail to adapt risk losing ground to competitors who understand the new value drivers. 2. Overcoming the Challenges of IP Collection and Management One striking insight was the difficulty SMEs face in identifying and managing IP effectively. Prof. Bader noted that many potential inventors within companies don’t even realize the value of their innovations, especially in areas like software development or new business models. Without an IP-savvy management team, companies may miss out on critical opportunities. Large corporations often struggle with similar challenges, particularly in global organizations where identifying inventors across departments and geographies is daunting. Prof. Bader stressed the importance of fostering an internal culture that encourages innovation and supports IP awareness across all levels of the organization. 3. Lessons from 20 Years of Patent Management While the fundamentals of IP strategy have remained consistent—focusing on strategy, implementation, and execution—the dynamics of value creation have shifted dramatically. Prof. Bader highlighted that companies now need to integrate IP into agile project teams and adapt their processes to keep up with technological advancements, such as AI-driven innovations. He also warned against relying entirely on external law firms for IP management. While external advisors are valuable, companies must build internal IP competencies to effectively steer their strategies and ensure alignment with long-term goals. 4. Prof. Bader’s Top Three Tips for SMEs For medium-sized companies looking to improve their IP portfolios, Prof. Bader offered the following advice: Take IP seriously: Management must understand IP’s value, not just as a cost but as a strategic tool for mitigating risks and creating opportunities. Protect where value is created: Shift focus to protecting software, services, or systems rather than just traditional engineering outputs. Use a combination of formal and informal protection mechanisms to safeguard innovation comprehensively. Develop internal IP capabilities: Build a robust internal IP function with dedicated processes and resources. Avoid outsourcing everything; instead, balance internal and external efforts to maintain strategic control. 5. What Investors Look for in IP Investors and corporations evaluating startups place significant importance on IP. Prof. Bader pointed out that beyond having patents, the strength and relevance of those patents to the market and competitors are crucial. Investors also value teams with IP expertise and strategies that align with their business models. Startups without a strong understanding of their IP landscape may face challenges in attracting serious investment. Final Thoughts Prof. Bader’s insights underscore the evolving nature of IP management and the need for companies to stay proactive and adaptive. SMEs, in particular, must recognize the importance of IP as a driver of value creation and competitiveness. By building internal capabilities, focusing on where value is created, and aligning IP strategies with business goals, companies can position themselves for success in today’s fast-changing market. If you’d like to learn more or connect with Prof. Martin Bader, he’s available on LinkedIn. For the full interview, tune in to the latest episode of IP Fridays. Transcript: Dr. Rolf Claessen: Today’s interview guest is Professor Dr. Martin Bader. He is a Professor of Technology and Management and Entrepreneurship at the Technical University in Ingolstadt, Germany, and an Adjunct Professor at McGill University in Quebec, Canada. He is the founder of BGW IP in St. Gallen, Switzerland, and Chairman of the Supervisory Board of BGW Management Advisory Group in Switzerland. Before that, he held several industry positions at MTU, ABB, Siemens, and Infineon, where he served as Vice President and Chief IP Counsel. Most importantly, he is an expert in IP management. Thank you very much for being on the show. Prof. Martin Bader: Yeah, thank you for your invitation. Dr. Rolf Claessen: You are the expert, in my view, in patent management, and you are the author of the standard book on patent management, now in its fifth edition. For over 20 years, you’ve been distilling advisory and research insights into practical takeaways and consulting with many companies in this field. What are the top challenges for medium-sized technology-driven companies, let’s say with 500 employees, compared to the top challenges for large corporations? Prof. Martin Bader: Thank you for the introduction and the first question. The challenges for SMEs today are significant. One major challenge is innovation. European SMEs, in particular, are under pressure to remain innovative. Customers no longer want to pay top prices for top quality, which increases the need for these companies to innovate continuously. This challenge is compounded by technological changes, like digitalization, which forced many SMEs to rethink their value chains and adapt their IP strategies. For instance, a shift from protecting static machines to focusing on services and software has been a major change. Additionally, globalization has brought increased competition from emerging countries like China and India, adding further cost pressure, particularly for Swiss companies dealing with unfavorable currency exchange rates. Compared to large corporations, SMEs face a more significant struggle in maintaining a strong IP position while managing resources efficiently. This includes challenges in identifying inventions, particularly in new areas like digitalization, where traditional R&D methods might not capture the full spectrum of innovation happening in software or services. Dr. Rolf Claessen: What do you think about collecting ideas or new inventions—do you think it is more difficult for smaller companies or for large corporations? Prof. Martin Bader: I have a quote from a global corporation executive who said, “You don’t know how lucky you are if you know where your inventors are.” The challenge lies in finding inventors and inventions that may not be obvious, especially in areas like software development or new business models, where employees might not traditionally think of themselves as contributors to IP. This issue is compounded by a lack of IP-savvy management, which may miss out on opportunities in these emerging areas. Dr. Rolf Claessen: What are the topics that have remained the same in IP management over the past 20 years, and what has changed the most? Prof. Martin Bader: The foundational structure, based on the St. Gallen Management Model—strategy, conceptual, and implementation levels—has stayed consistent. However, the main change is that SMEs have become more familiar with basic IP tools, like patents, trademarks, and trade secrets. Yet, as value creation shifts from traditional engineering to software, services, and systems, SMEs need to adapt their IP strategies to these new realities. Companies also need to be proactive in integrating IP functions into agile project teams and ensuring they keep up with technological advancements, such as AI, which require both internal expertise and efficient use of external advisors. Dr. Rolf Claessen: What are your three most important tips for medium-sized companies to improve their IP portfolios and IP management? Prof. Martin Bader: First, take IP seriously. Management must understand both risks and opportunities, and not just view IP as a cost. Second, focus on protecting where value is truly created—this may now be in services or software rather than traditional engineering. Third, develop an internal IP function with proper processes and organizational structures. Avoid relying entirely on external law firms; instead, actively manage and steer outsourced activities to ensure they align with your company’s strategic goals. Dr. Rolf Claessen: Thank you for these insights. If listeners want to reach you, where can they find you? Prof. Martin Bader: The easiest way is via LinkedIn. You can find me under Martin Bader, and my email is also available there or via my affiliations. Dr. Rolf Claessen: Thank you very much for being on IP Fridays. Prof. Martin Bader: Thank you for the opportunity to share my thoughts.

https://www.bobross.com The iconic artist Bob Ross, known for his gentle demeanor and captivating landscapes, continues to inspire millions around the world. Behind the scenes, a dedicated team works tirelessly to protect his legacy and intellectual property (IP). In a recent interview on the IP Friday’s podcast, Joan Kowalski, President of Bob Ross, Inc., shed light on the challenges and strategies involved in safeguarding the valuable IP of Bob Ross. A Family Affair Joan’s journey with Bob Ross, Inc. began in 1988, a few years after she graduated from college. Her family’s relationship with Bob Ross dates back even further. Joan’s mother attended one of Bob’s painting classes in 1982 and was so impressed that she and Joan’s father partnered with Bob to form a company aimed at promoting his work. This partnership laid the foundation for what would become a global phenomenon. The Unique Challenge of Protecting a Person One of the primary challenges Joan highlighted is the difficulty of protecting the IP of a person rather than a static piece of art or literature. Bob Ross’s image, voice, catchphrases, and even his mannerisms are all integral parts of his brand. “When your intellectual property is a person… it’s a different ballgame,” Joan explained. Many people mistakenly believe that Bob Ross is a public domain figure, freely available for use. This misunderstanding complicates efforts to control how his image and likeness are used commercially. The Double-Edged Sword of the Internet The internet has amplified both the reach of Bob Ross’s work and the challenges of protecting it. While online platforms have introduced Bob to new generations, they have also made it easier for unauthorized use of his image and content. “The internet is both a gem and a curse,” Joan noted. Unauthorized merchandise, digital forgeries, and misuse of Bob’s image in ways that do not align with his values have proliferated online. To combat this, Bob Ross, Inc. employs professional monitoring services and relies on vigilant fans who report infringements. Selective Licensing and Brand Integrity Joan emphasized the importance of being selective with licensing agreements. Over-licensing can dilute the brand and make it harder to control IP use. Bob Ross, Inc. carefully chooses partners who align with Bob’s legacy and values. “Be a little bit choosy about who you give a license to… It just makes it easier to protect your assets,” Joan advised. Navigating New Technologies: NFTs and AI Emerging technologies like Non-Fungible Tokens (NFTs) and Artificial Intelligence (AI) present new IP challenges. Joan shared that the company was cautious about entering the NFT space, granting licenses only to a select few like Funko to maintain control and monitor the market effectively. Regarding AI, Joan expressed concern over AI-generated images and voices that mimic Bob Ross without authorization. The company is exploring ways to address these issues, often relying on the right of publicity laws to protect Bob’s likeness. Legal Protections and the Right of Publicity The right of publicity is a legal doctrine that protects a person’s image, name, and likeness from unauthorized commercial use. Joan mentioned the company’s reliance on this right to enforce IP protections, especially as it pertains to new laws like Tennessee’s “Elvis Act,” which prohibits the unauthorized use of a person’s likeness through AI. Advice for IP Protection Towards the end of the interview, Joan offered valuable advice for others looking to protect their IP: Be Selective with Licensing: Choose partners who respect your brand and have values aligned with yours. Professional Monitoring: Don’t attempt to monitor and protect your IP alone. Employ professional services that specialize in IP protection. Educate the Public: Work on informing fans and the general public about the importance of respecting IP laws, especially when it comes to individuals. Stay Informed on Legal Developments: Keep abreast of new laws and regulations that may affect your IP rights, especially with the rapid advancement of technology. Continuing Bob Ross’s Legacy Joan and the team at Bob Ross, Inc. remain committed to preserving the integrity of Bob’s work. Their efforts ensure that fans worldwide can continue to enjoy and be inspired by Bob Ross while respecting the legal protections that keep his legacy intact. “We’ve been at this for 40 years now. I think we’re doing pretty good,” Joan concluded with pride. The full transcript: Kenneth Suzan: Our guest today on the IP Friday’s podcast is Joan Kowalski. Joan is the president of Bob Ross, Inc. Bob Ross is a true icon in the art world. He is an American painter, art instructor, and both creator and host of the acclaimed television series, The Joy of Painting, which aired from 1983 through 1994 on public television, both in the United States and in other markets around the world. Kenneth Suzan: Joan started working for Bob Ross, Inc. in 1988, a few years after graduating from college. She answered 1-800 number phone calls, wrote letters, and processed mail orders with Jane Ross as her supervisor. Kenneth Suzan: On the official website for Bob Ross at bobross.com, Bob’s legacy is captured best. Quote, “He’s recognized everywhere as one of the most iconic and memorable personalities on public television, with his gentle approach and homespun humor. Bob Ross has taught, inspired, and entertained millions of people around the country and around the world.” Close quote. Kenneth Suzan: Branding, licensing, monitoring, and enforcement are front and center for Bob Ross, Inc. And I am pleased to have Joan Kowalski on our podcast today so we can get a clear picture on how this innovative company protects the valuable IP of Bob Ross worldwide. Kenneth Suzan: Welcome, Joan, to the IP Friday’s podcast. Joan Kowalski: Hi, Kenneth. Thank you for having me. Kenneth Suzan: Joan, can you tell our listeners a bit about your family, their relationship to Bob Ross, and how you became president of Bob Ross, Inc.? Joan Kowalski: I sure can. My mother took a painting class with Bob all the way back probably in 1982. She thought he was so remarkable that she went home at night and told my father, “I think I’ve stumbled on something. Let’s have dinner with him one night and talk to him.” And so they went to the local Waffle House because Bob loved eating breakfast for dinner. And they talked a little bit about what they could do to enhance his attendance in his classes. He was teaching up and down the East Coast pretty much. And they just sort of talked, and Bob told them some of his dreams and ideas. Joan Kowalski: And they decided to form a little company and promote Bob wherever they could. And the classes turned into a television series, turned into what you see today, couldn’t be more proud. Kenneth Suzan: Let’s dive right into the IP issues, Joan. What are some of the key issues that face your company with respect to protecting Bob Ross’s IP? Joan Kowalski: There are some challenges, certainly. Most notably when your intellectual property is a person as opposed to a piece of art or a storyline or a book or something like that. When you are protecting a person, it’s a different ballgame, sort of, first of all, in that most people don’t realize that you can protect a person—his image, his name, the way he speaks, his voice, his mannerisms, his little quotes that he uses. These are, in fact, all protectable, which I think the vast majority of the public don’t realize. And that, I would say, is our biggest challenge, is trying to sort of overcome the idea that he’s sort of a public domain figure or he’s something that is sort of free to everyone to use, that his family is the owner, those sorts of things. I think the biggest challenge being protecting a person. It’s called right of publicity, and not everybody understands it. Kenneth Suzan: What about the internet, Joan? How has the internet impacted brand protection? And what are some of the ways in which you monitor for infringing activity? Joan Kowalski: So the internet is both a gem, a treasure, and a curse, which is probably true of anybody that has the need to protect intellectual property. You can lose control as it just sort of morphs farther and farther away from the core, and it just sort of becomes its own thing that you then have to try and rein in, explain that this isn’t necessarily—because it’s on the internet, it’s not necessarily available to you for your product. And it doesn’t help also that Bob Ross being just such a gentle, wonderful man, that he still did have in place certain controls over the way that people would portray him, both in life and online. And it’s just hard—I would say, again, the public just doesn’t necessarily understand. And the internet just doesn’t wholly understand that it’s not just a free-for-all. Kenneth Suzan: What are some of the tools that you use to find out what’s going on? Do you work with services to monitor for infringement? Or do you yourself look at the internet? Or do you have fans that are writing to you? Or is it a combination of all of these things? Joan Kowalski: So I will tell you that we do use a monitoring organization. And we’ve given them all of our literally hundreds of trademark certificates that we’ve applied for and been granted from around the world. They’ve put all of that into their database, and they go to town. And they start just scrubbing the internet of infringements. And again, right of publicity was sort of a hard concept for us to explain, even to the monitoring system. But they are getting the hang of that as well. And I will tell you also that we get a lot of emails from fans that just want to make sure they know that we are ferocious in making sure that Bob is shown and identified in the best positive light. We get a lot of emails from them saying, “Such and such company is using Bob’s face, and I just don’t like it, and I don’t think you will either.” Our fans are like our little policemen. They know that the goal is to keep Bob as wonderful as he is. Kenneth Suzan: Now, I’ve seen a lot of merchandise in the last few years in my travels. I assume these were all mostly licensed products. What’s driving this trend? And can you comment on the need to protect IP? Joan Kowalski: Yes. So the reason for the sudden—maybe in the last, I’d say, five, six, seven years, you may have started noticing a lot of product, a lot of non-painting products like socks and sweaters and t-shirts and puzzles and that sort of thing. And that comes from, first and foremost, Bob experienced an enormous and just lovely resurgence when we allowed Twitch TV, which is a very—it’s something that the kids watch, Twitch TV. They play video games on it. Yes. And they were opening a new channel called Creative, and they wanted to do a Bob Ross marathon to open this channel seven-ish years ago. And it was a huge success, a huge success. And this just created—it didn’t really create Bob Ross fans. They had always been fans. They just didn’t know that half of their friends were already fans and half of their family were already fans. So it’s like fans identified each other with each other, and it just exploded. It just exploded. And in response to that, we did start doing finally what Bob had always wanted, which was to kind of become a household name. And so we started satisfying this younger generation with lots and lots of products that they could enjoy and collect. And today’s younger generation loves to collect things and show them off to their friends and that sort of thing. So that’s where—but then again, that’s where we realized the intellectual property, the images, the name, the voice, his little quotes, that sort of thing started leaving us, started floating out farther and farther from our arm’s reach. This is about the time also that we determined that we could not scour the internet by ourselves anymore, which we had been doing for years, but just in-house, but that we had to sort of find ways to reach out as far as the intellectual property was going to try and maintain. There are certain things that Bob really, really wanted and that sort of fit into this. The one thing that I can think of is he was very, very proud of his painting technique, and he didn’t really want his name being used for other painting techniques. He had worked hard to develop this wet-on-wet technique of his. And so that’s one thing that we were and still are having to really be careful of is that people aren’t using his name and face to show other forms of painting with teachers that are not certified. That sort of thing has really, really, really bothered Bob and made him worry that the technique of his would sort of fade away as more and more people started sort of using his image to describe and teach other methods of painting. So that’s one thing that we’re doing a lot of. The other thing is that because there are not a lot of Bob Ross original paintings for sale out in the wild, we’re now having to deal with forgeries, which is something a little bit new for us. But we’re working on that as well. It’s funny because people that aren’t really used to art and studying various artists—Bob’s fans, by and large, aren’t studying artists and going to museums and that sort of thing. Their approach to art is something they can do themselves. And normally, if they see a painting that’s got a tree in it, they just naturally assume that Bob painted it. And forgers are sort of taking advantage of that. They’ll take a painting that’s not a Bob Ross painting, but it’s a landscape, and they’ll forge his signature on there and try to sell it. So we’re having to work with our monitor and with our attorneys with that particular subject, which is awfully painful. And I think Bob would have been terrified to think that people were doing that. Kenneth Suzan: And another thing Bob probably would take issue at are these NFTs. I had read a few years ago that NFTs are an issue for your company. What do you do to protect against unauthorized NFTs bearing Bob’s work or his image? Joan Kowalski: So NFTs are a very interesting animal. Maybe three years ago, they were absolutely the biggest thing ever. And we were very careful to only license maybe two of our licensees with the ability to create one NFT. We were really—mostly for the ability to monitor, we weren’t going gung-ho with NFTs so that we could watch better. And so that we knew that if there were only these two—Funko was one of the companies that we licensed an NFT to—but that we could chase and monitor and make sure that it wasn’t going out of control. So we were very hesitant to sign on with NFT creators. And there were bunches that came to us. And we knew that NFTs, unless it was Funko’s, could be scrubbed from the internet. Now, the good news is—or maybe not good news—but the thing about NFTs is they have quieted down quite a bit now. And they really—our monitor, again, is just in all the NFT marketplaces daily. And they’ve only found one in a very long time that is using our intellectual property to create NFTs. So I think the reason that we were able to sort of maintain and protect in regards to NFTs is because we just didn’t give licenses out like—we had a tight control over the market. Yeah. Very tight control. And I’ll tell you why. It’s because I didn’t understand NFTs enough to feel comfortable to hand out licenses. It’s a silly reason, but I just could never wrap my head around the appeal or how they work and what they were. But boy, we got pressure like crazy. We got inquiries daily to get a license for NFTs. And we just held back on that. And I think in the end, mostly just to be able to control and to watch and be able to see clearly what is the infringement and what has to be studied and that sort of thing. Kenneth Suzan: Joan, let’s talk about AI because there’s not a day that goes by that I don’t hear something about AI. Are you worried about the threat of AI? Have you seen anything yet with respect to Bob’s image and likeness and voice? What are your plans in dealing with AI? Joan Kowalski: I think everybody’s a little nervous about AI. And it could also be because, again, I don’t think we have a full understanding of it. I only know that we’re being infringed on in regards to AI when I see it. Otherwise, I wouldn’t be able to explain it to you from the ground up because it’s just still very complicated in my mind. But again, with AI—and we are seeing some images that are being created of Bob. Lately, we’ve been seeing a lot of pictures of Bob looking like he’s been beat up and bleeding and black eyes and cuts on his face and that sort of thing. And that’s when I know that AI has been in play because it’s clearly not real, but it sure does look like him. So there is fear always in that way. It’s not like it used to be where you could just tell automatically that this was a picture that was taken from somewhere and used for something, end of story. But now with this, there’s—and again, I think it has to do with just not handing out licenses right and left and worrying about the consequences later. We’ve been approached by lots of entities that we’ve rejected a licensing opportunity just because the protection—the more you give out, the more you’re having to monitor and protect. So we’re a little bit choosy, and I think we’ll be the same where AI is concerned if it’s controllable. Again, I have to say that with us having the protective tool of right of publicity, it does help that it’s much more definable that the person, if used in commerce—and Bob had granted right of publicity to his company—that you can more quickly and easily identify AI fake voice sounds, fake signatures, fake faces, AI-generated sort of things that normally, if it’s a person and you’ve got right of publicity, it’s an easier go to attempt to protect and enforce and litigate if needed. Kenneth Suzan: Earlier this year, Joan, in March, the state of Tennessee signed into law the Ensuring, Likeness, Voice, and Image Security Act, or known as the Elvis Act, which is designed to protect musicians from the unauthorized use of artificial intelligence. In particular, this state law prohibits people from using AI from mimicking an individual’s voice without first obtaining their permission. Violation carries a Class A misdemeanor under Tennessee law, and civil actions can also be filed. Your thoughts about this new law? Joan Kowalski: I actually, when I heard about it, I freaked out a little bit because it’s almost identical to what it is that we’ve been able to protect through right of publicity. Voice—people don’t understand that your voice is still yours. It is protectable, depending on how you do that, whether the person is living or deceased. And it’s very close. I’ve read a little bit about it. And it’s just sort of very close to what we’re dealing with protecting Bob Ross, the full person. And I think that the idea that you don’t have to sort of splice away and explain using somebody’s voice or mimicking somebody’s voice is really the same as using somebody’s face or name. There isn’t any—if protected properly and if given the rights to the certain attributes of a human, it makes it just a lot easier moving forward. Kenneth Suzan: But with respect to the right of publicity, Joan, I understand back in 2018 that your company ran into a challenge with respect to the right of publicity. What was that challenge? And can you comment on how that was resolved? Joan Kowalski: We were challenged in 2018 simply because of, again, the public not understanding right of publicity. And by public, I mean that one of Bob’s family members didn’t understand Bob’s company and what he had set up within his corporation that would then carry us after his death into being able to, in his honor, commercialize his features, his being. And again, I think because of what I said at the top of the hour, it’s a hard concept unless you really understand it. So the family member just did sort of naturally assume that Bob being his relative and a lot of the public behind him thinking that these Bob Ross attributes would belong to Bob’s family. Now, the part that was missing was that Bob had already granted the rights of publicity to his company that he and three other partners—his wife and my parents—had already granted to the corporation back in the 1980s that he wanted and he knew. He knew that the company could do what he wanted once he died. And this is the reason that he granted these rights to the company so that we could continue. We’ve been at this for 40 years now. I think we’re doing pretty good. Do you agree? Kenneth Suzan: Oh, yes. No, I’ve been a fan of Bob Ross for many, many years. So it’s certainly an honor to talk with you. Joan Kowalski: That is wonderful. Kenneth Suzan: We’re coming up towards the end of our interview today. But I was wondering, can you provide to our listeners any best practices for protecting IP? What should they be doing? Are there things that you do regularly that you could share with them? Joan Kowalski: I would say I have two things, and I’m so glad you’re asking. The first thing being to be a little bit choosy about who you give a license to. And not because you do or don’t like the product, or do or don’t like the company, or whatever. But it just makes it easier to protect your assets when you are very diligent in who you give a license to. If you start sending licenses to everyone that inquires, it just gets farther and farther and farther away from you. The second thing I would suggest is don’t try to protect everything yourself. We did try to do that for years. And it just—something that goes out into the internet just multiplies like crazy. You need a professional monitor to help with that. Kenneth Suzan: Very, very important words of wisdom. Joan, I want to thank you so much for spending time with us today on the IP Friday’s podcast. This has been fascinating. And I thank you for your time today. Joan Kowalski: Thank you very much. I enjoyed it.

<img loading="lazy" decoding="async" width="800" height="800" src="https://www.ipfridays.com/wp-content/uploads/2024/09/1681848958993.jpeg" alt="Myrtha Hurtado Rivas - General Counsel Brands and Marketing Properties, Anti-Counterfeiting &amp; Licensing at Nestlé" class="wp-image-1394" srcset="https://www.ipfridays.com/wp-content/uploads/2024/09/1681848958993.jpeg 800w, https://www.ipfridays.com/wp-content/uploads/2024/09/1681848958993-300x300.jpeg 300w, https://www.ipfridays.com/wp-content/uploads/2024/09/1681848958993-150x150.jpeg 150w, https://www.ipfridays.com/wp-content/uploads/2024/09/1681848958993-768x768.jpeg 768w" sizes="auto, (max-width: 800px) 100vw, 800px" /> Navigating Brand Restrictions, Sustainability, AI, and Anti-Counterfeiting with Myrtha Hurtado Rivas of Nestlé On this episode of IP Fridays, I had the pleasure of interviewing Myrtha Hurtado Rivas, the General Counsel for Brands, Marketing Properties, Licensing, and Anti-Counterfeiting at Nestlé. Our conversation delved into several pressing issues in the field of intellectual property (IP), including brand restrictions, sustainability claims, artificial intelligence (AI), and anti-counterfeiting challenges. Here are the key takeaways from our engaging discussion: Brand Restrictions: Impact on Businesses and Consumer Choice Myrtha began by explaining brand restrictions, which are often implemented by governments to nudge consumers toward healthier or more environmentally friendly choices. These restrictions can take various forms, such as prohibiting certain branding, implementing traffic light labeling systems (e.g., for sugar or fat content), or even banning toys associated with products, like Kinder Eggs in certain countries. One of the biggest challenges of brand restrictions is the impact on consumer choice and business innovation. Myrtha pointed out that limitations on brand usage, including packaging and advertising, can sometimes inadvertently stifle consumer access to safer products and even hinder efforts to combat counterfeiting. During her recent moderation of a panel on brand restrictions at the International Trademark Association (INTA) annual meeting, Myrtha emphasized that these restrictions are not only a problem for brand owners but also limit consumers&#8217; freedom to make informed choices. Brand restrictions, when applied broadly, also pose challenges for IP professionals trying to maintain consistency across markets, especially in smaller countries where product variations could make it economically unviable to continue offering the same products. Sustainability and Green Claims: Defining the Difference We also discussed the increasingly important topic of sustainability claims and green claims. While these terms are often used interchangeably, there are distinctions—especially in the legal and regulatory frameworks emerging around them. In Europe, for instance, green claims are commonly discussed in the context of a new Green Claims Directive, which governs the kinds of statements companies can make about their environmental impact. Myrtha explained that sustainability claims generally cover a broader range of factors, from how products are manufactured to how waste is managed and how packaging is produced. However, there remains a lack of clarity and uniform regulation across jurisdictions, which can lead to confusion and even legal risks for companies making these claims. At Nestlé, sustainability claims are vetted carefully, and Myrtha’s team plays a central role in ensuring that any statements made are accurate, legally compliant, and aligned with business strategies. The collaboration between IP, marketing, and compliance teams is key in navigating this complex area. AI in Business: From Early Adoption to Everyday Use Nestlé has been a pioneer in using artificial intelligence (AI) in its business processes, especially within Myrtha&#8217;s legal and IP teams. Myrtha recounted how she has been using AI tools for years, starting with her time in the pharmaceutical industry, where AI was essential in clinical trials and data gathering. Today, AI tools like Copilot and Nest GPT (Nestlé’s internal AI system) are embedded in many of their day-to-day operations. These tools help with tasks such as negotiation support, summarizing emails, drafting contracts, and data analysis. Myrtha noted that AI significantly enhances efficiency and allows even junior team members to handle more complex tasks with greater accuracy. As a result, teams are better equipped to make business-focused decisions, with AI helping to ensure that the legal aspects are clear and easy to understand for non-lawyers. Anti-Counterfeiting: A Global and Growing Challenge One of the key areas of focus for Myrtha at Nestlé is the fight against counterfeiting, particularly in the food and beverage sectors. The rise in counterfeiting has been exacerbated by the economic downturn caused by both the COVID-19 pandemic and the ongoing Russia-Ukraine war, which has driven up the cost of raw materials and made consumers more price-sensitive. As a result, counterfeit products are thriving in the market, especially online. Myrtha highlighted several challenges related to anti-counterfeiting, including cross-border collaboration, privacy laws, and the difficulty of tracking counterfeit products across various online marketplaces. She also pointed out that counterfeiters have become increasingly sophisticated, often operating in countries where law enforcement is limited. In some cases, counterfeiters even use the same production facilities as legitimate manufacturers, making it harder to shut down these operations without affecting legitimate goods. Nestlé’s approach to counterfeiting is built on collaboration with governments, law enforcement, and other stakeholders. However, the company faces hurdles such as lenient punishments for counterfeiters and cultural acceptance of counterfeit goods in certain markets. Key Takeaways for Startups and SMEs on Anti-Counterfeiting Towards the end of our conversation, I asked Myrtha for her top three recommendations for businesses, especially startups and small-to-medium enterprises (SMEs), that are looking to protect themselves from counterfeiting. Here’s what she shared: Anti-counterfeiting is everyone’s responsibility: It’s not just the legal department’s role; the entire company, from the CEO down to the operational staff, needs to be on board with the strategy. Collaboration is key: Whether with competitors, consumers, or government authorities, businesses must work together to tackle the global counterfeit market effectively. Leverage your entire team: Often, junior team members, paralegals, and assistants play a crucial role in gathering data, monitoring activity, and supporting anti-counterfeiting efforts. Every member of the team should be trained and empowered to contribute. In conclusion, this interview with Myrtha Hurtado Rivas provided invaluable insights into how a global giant like Nestlé navigates complex IP challenges, from brand restrictions to anti-counterfeiting. Whether you&#8217;re a large corporation or a startup, these insights are applicable across industries and highlight the need for collaboration, transparency, and innovation in tackling today’s most pressing IP concerns. Myrtha Hurtado Rivas: Hi, this is Myrtha Hurtado Rivas. I&#8217;m the General Counsel for Brands, Marketing Properties, Licensing, and Anti-Counterfeiting at Nestlé. And you&#8217;re listening to IP Fridays. Rolf Claessen: Today&#8217;s interview guest is Myrtha Hurtado Rivas. She is the General Counsel, Brands and Marketing Properties, Licensing, and Anti-Counterfeiting at Nestlé. Thank you very much for being on the show. Myrtha Hurtado Rivas: My pleasure to be here. Rolf Claessen: So we both just attended the INTA annual meeting in Atlanta, where not only trademark professionals go, but basically all IP professionals gather there. It&#8217;s just the biggest meeting of all IP meetings, and also the patent and design people come there. You are on the Brand Restrictions Committee of INTA. And I first want to talk about that. So maybe first of all, can you briefly explain what brand restrictions are and how they are hurting businesses? Myrtha Hurtado Rivas: Sure. Thanks for raising that question. So brand restrictions essentially can take many different forms. But in essence, what it is, is that governments or authorities try to nudge consumers into making more healthy choices. So that can be either when they choose an infant formula, for instance, a product where some authorities are convinced that it’s better to breastfeed children instead of giving them infant formula. But it also can be, for instance, traffic lights on packaging with respect to maybe sweet foods where there is too much sugar, or too fatty products where the fat content is too high. And so you can have traffic lights, or you can have restrictions that forbid you from using certain brands on certain products. For instance, you can also forbid small toys from being sold together or gifted with a brand, like the Kinder Surprise Egg, which in some countries has been forbidden because you cannot incentivize the sale of a chocolate product by adding a toy to it. We also have restrictions in areas like fossil fuels, tobacco, pharmaceuticals, and alcohol. It&#8217;s pretty much everywhere where some authority wants to influence consumer behavior. Rolf Claessen: Okay. We all know, in Germany at least, the cigarette packaging with gruesome pictures on it. The government wants to scare people away from buying cigarettes. Some of the brand restrictions are very visual and impactful. But you were also a moderator on a panel about brand restrictions at the INTA meeting. The panel was called &#8220;Navigating Brand Restrictions.&#8221; What were your main takeaways from this panel? And what, in your opinion, are the most pressing issues at the moment? Myrtha Hurtado Rivas: The idea of the panel was to explain to INTA members why INTA had to publish a resolution with respect to the topic of trademark use versus advertising. Why is this relevant for brand restrictions? Because INTA has already been advocating against brand restrictions in general. But we are now being confronted with situations where authorities are trying to limit advertising, and advertising is not trademark use per se. There are jurisdictions that recognize the advertising function of a trademark, but there are many where this is not the case. INTA needed to clarify its stance to be able to advocate against restrictions on both trademark usage and advertising. During the panel, we discussed several examples, such as a proposed fossil fuel law in Canada and new WHO guidelines on infant formula. The takeaway was that brand restrictions limit not only businesses but also consumers&#8217; choices. In some cases, it may even limit safe choices for consumers because brands and packaging cannot communicate important differences in products. Rolf Claessen: Right. You mentioned infant formula. And maybe there are other products in Nestlé&#8217;s portfolio affected by these restrictions. What are the main challenges for you at Nestlé regarding brand restrictions? Myrtha Hurtado Rivas: Thank you. Obviously, what I’ll share is my personal view, not the company’s. At Nestlé, the challenges are similar to those faced by other companies. We have to carefully consider how we brand our products, especially when extending product lines. Some changes may be required in certain countries, and we need to stay ahead of what might happen in the future regarding restrictions. Our job is to advise the business to make decisions that will allow products to remain on the market, ensuring growth while also navigating these restrictions. We’re constantly balancing today’s restrictions with future business strategies. Rolf Claessen: You mentioned smaller countries. Could you give an example so people can better understand this challenge? Myrtha Hurtado Rivas: Sure. When I worked in pharma, there were big discussions about Ecuador. The Ecuadorian government wanted specific packaging for pharmaceuticals, which was different from neighboring countries. Ecuador is a small country, so pharmaceutical companies had to decide whether they would continue selling products there or increase prices because of the different packaging requirements. For life-saving medicines, price increases can be a sensitive issue. Rolf Claessen: Great example, thank you. Let&#8217;s switch topics to sustainability claims. Consumers want to know where products come from and how they’re produced. What are sustainability claims, and how are they different from green claims? Myrtha Hurtado Rivas: That’s a great question. In Europe, we have the Green Claims Directive, which gives an official framework for green claims. But sustainability claims tend to be broader. These are claims about how products are manufactured, how waste is handled, or the type of packaging used. It can also cover services, like the sustainability claims around air travel. The issue is that we don’t have a precise catalog of what is and isn’t allowed. At Nestlé, our IP team reviews sustainability claims to ensure they are accurate and compliant, which helps us stay connected to the business. Rolf Claessen: So you work closely with compliance and marketing on sustainability claims? Myrtha Hurtado Rivas: Exactly. We collaborate with compliance, marketing, and other departments to ensure that sustainability claims are legally sound. However, the challenge is the lack of a clear, uniform definition of sustainability and green claims across jurisdictions. Rolf Claessen: What are your concerns about sustainability claims in the future? Myrtha Hurtado Rivas: My main concern is the lack of consistent regulation. Many different authorities have the power to impose fines related to sustainability claims, from food safety authorities to advertising regulators. Monitoring the constantly evolving laws and regulations across more than 180 countries is a massive task. There’s also the growing concern that IP offices are starting to equate certain symbols, like a leaf on a logo, with sustainability or eco-friendliness, even when that may not be the case. This opens the door to more refusals of trademark registrations based on ambiguous interpretations. Rolf Claessen: Let&#8217;s shift to another topic—AI. I remember an interview where you talked about using AI five years ago. How does Nestlé use AI in its daily business? Myrtha Hurtado Rivas: Yes, I’ve been using AI for many years, starting in the pharmaceutical industry. Today, we use tools like Copilot for recording, transcribing, summarizing, and managing emails. We also have Nest GPT, our internal AI tool, which allows us to safely feed internal business information for analysis. AI is embedded in almost everything we do—from negotiations to contract drafting. It helps junior team members handle more complex tasks, allowing them to work more efficiently while being guided by AI. Rolf Claessen: That&#8217;s very impressive. You also mentioned using AI to summarize complex legal documents for non-lawyers. How has AI impacted your team? Myrtha Hurtado Rivas: AI has been a game-changer. It allows our junior lawyers to take on tasks that previously required senior lawyers, as AI tools can simplify legal opinions and make them easier for the business to understand. It’s a great tool for training and improving efficiency across the board. Rolf Claessen: Let’s now talk about anti-counterfeiting. Nestlé has a large portfolio of food and beverage products. What are the challenges you face in combating counterfeit products? Myrtha Hurtado Rivas: The biggest challenge today is the global economic crisis, which has led to an increase in the price of raw materials. This has created a fertile ground for counterfeiters, as consumers are looking for cheaper alternatives. Counterfeiters exploit this by offering fake products at lower prices, especially online. During COVID, we had good collaboration with authorities, and many platforms are now more cooperative. However, online marketplaces remain a significant challenge. Counterfeiters can quickly reappear under different names, and privacy laws sometimes prevent us from getting the information we need to take action. Rolf Claessen: You mentioned changing counterfeiting routes. Could you expand on that? Myrtha Hurtado Rivas: Yes, we’ve noticed new channels emerging to bring counterfeit products into markets where production is limited. In some cases, the same production facilities are used for both legitimate and counterfeit products, making it difficult to shut down these operations without disrupting legitimate goods. Rolf Claessen: Food and beverage counterfeiting seems particularly dangerous. Could you elaborate on the risks for consumers? Myrtha Hurtado Rivas: Absolutely. Counterfeit food products may not meet safety standards. They could contain harmful ingredients or be packaged in substandard materials that don’t preserve the product properly. Over time, consuming such products can pose serious health risks. Rolf Claessen: Thank you for those insights. As we wrap up, what are your top three recommendations for businesses, especially startups, looking to tackle counterfeiting? Myrtha Hurtado Rivas: First, anti-counterfeiting must be a company-wide effort. It’s not just a legal issue—everyone from the CEO to the operations team needs to be involved. Second, collaboration is key. You won’t solve the problem alone, so reach out to others in your industry, including competitors and authorities. Third, empower your entire team. Anti-counterfeiting requires everyone’s contribution, from paralegals to senior lawyers. It’s crucial to train all team members and involve them in the process. Rolf Claessen: Thank you so much, Myrtha. This has been a very insightful discussion, and I appreciate your time. Myrtha Hurtado Rivas: You’re very welcome, Rolf. It was my pleasure.

Bio of Tina Dorr Bio of Loretta Freeman In the latest episode of the IP Friday&#8217;s podcast, hosts Kenneth Suzan spoke with two distinguished intellectual property (IP) attorneys, Tina Dorr and Loretta Freeman, from Barnes and Thornburg LLP. The discussion provided valuable insights into patent law, focusing on the career paths of the guests, patent marking, virtual patent marking, and the implications of these practices for recovering monetary damages in infringement cases. Career Paths to Patent Law Both Tina and Loretta shared their unique journeys into the field of patent law, emphasizing that many patent attorneys enter the profession as a second or third career. Tina transitioned from a background in science to patent law, driven by a passion for solving business problems and helping clients achieve their goals through legal tools. Loretta, who started as a product development engineer at 3M, discovered her passion for IP while working with attorneys on patentability issues, eventually leading her to pursue a legal career in this field. Both emphasized the importance of a strong technical background for those interested in patent law, but also highlighted the diverse opportunities available in IP law, even for those without a science or engineering degree. Patent Marking and Virtual Patent Marking The conversation then delved into the crucial topic of patent marking, a practice that, while optional, can significantly impact a patent holder’s ability to recover damages in cases of infringement. Tina explained that proper patent marking provides constructive notice to the public that a product is patented, which can allow for the recovery of monetary damages from the date of infringement. She also discussed the legal requirements for both physical and virtual patent marking, emphasizing the importance of consistent and continuous marking to maximize potential damages. Loretta expanded on this by discussing the complexities of virtual patent marking, particularly for companies with large patent portfolios. She highlighted the cost-effectiveness and flexibility of virtual marking but warned of the challenges in maintaining accurate and up-to-date patent information on a dedicated website. Both guests stressed the importance of coordination between legal teams, R&amp;D, and management to ensure that patent marking is handled correctly, thereby reducing the risk of false marking and ensuring compliance with legal standards. Monetary Damages in Patent Infringement Cases The discussion also covered the types of monetary damages available in patent infringement cases, with Tina explaining the three main categories: reasonable royalties, lost profits, and triple (triple) damages. She noted that while calculating these damages can be complex, they can range from thousands to billions of dollars, depending on the case. The importance of proving willful infringement for obtaining triple damages was also highlighted, with Tina emphasizing the role of patent marking in demonstrating that an infringer had knowledge of the patent. Best Practices and Pitfalls Both Tina and Loretta offered practical advice on best practices for managing patent marking, particularly in the context of licensing and product transfers. They underscored the need for clear agreements on who is responsible for marking in licensing deals and the importance of maintaining accurate records to avoid pitfalls such as false marking. In conclusion, this episode of the IP Friday&#8217;s podcast provided a comprehensive look at the strategic importance of patent marking and the potential financial implications in IP law. The insights shared by Tina Dorr and Loretta Freeman are invaluable for businesses and legal professionals looking to navigate the complexities of patent law effectively. Kenneth Suzan: Our guests today on the IP Friday&#8217;s podcast are Tina Dorr and Loretta Freeman. Kenneth Suzan: Tina is a partner in the Atlanta Office of Barnes and Thornburg LLP. She represents clients in a wide range of technology areas, including chemical, material, life science, mechanical, aerospace, and semiconductor technologies, including those within batteries, as well as water treatment, fibers and textiles, pharmaceuticals, apparel, consumer products, nutritional supplements, food and beverage, and construction. Kenneth Suzan: Tina holds a BS in Biology summa cum laude from the University of Georgia, a PhD in Chemistry and Biochemistry from the Georgia Institute of Technology, and a JD cum laude from Georgia State University College of Law. Also joining us today from Barnes and Thornburg is Loretta Freeman. Loretta is a partner with the firm, and her practice involves virtually all aspects of intellectual property law with particular emphasis on domestic and international patent and trademark procurement. Kenneth Suzan: Her practice includes preparing and prosecuting patent applications in the mechanical arts, design patents, trademark applications, trade dress, and due diligence investigations. Kenneth Suzan: Loretta holds a BS in Chemical Engineering cum laude from Florida A&amp;M University, and a JD from the William Mitchell College of Law. Kenneth Suzan: Welcome, Tina and Loretta, to the IP Friday&#8217;s podcast. Tina Dorr: Thanks, Ken. Thanks for having us. Loretta Freeman: Thank you. Thanks so much. Kenneth Suzan: So let&#8217;s talk about your backgrounds and your paths to becoming patent attorneys. Any words of wisdom for those interested in following this path? Tina Dorr: Sure, I&#8217;ll start. Loretta Freeman: Go ahead, Tina. Tina Dorr: Okay, thanks, Loretta. So, as a patent attorney, almost everyone that becomes a patent attorney does so as a second or third career because I&#8217;m sure your listeners know that you have to have a technical background in a science or engineering field. And I would say that if you have a love for science or engineering, you have to do this job as a patent attorney every day. But you really have to also love reading and writing. You have to enjoy those things, and you also have to really enjoy—this is my favorite part of my job as a partner in a law firm—helping people and developing relationships with my clients. And that&#8217;s something that takes time and is not something that you have a chance to do very much when you first begin practicing as a junior attorney. You really have to learn how to write the patents, do the work, but ultimately, as you get further in your career, you get to truly become partners with your clients and help them advance their business goals. And we use legal tools that I learned in law school and along the way as an attorney, but really helping people solve their business problems is something that I truly, truly enjoy. And it&#8217;s the reason that I am happy that I transitioned from science to patent law. Kenneth Suzan: Loretta, what are your thoughts? Loretta Freeman: Yeah, my path to becoming a patent attorney was quite interesting. And I agree with you, Tina, that most of us who are probably practicing in this field, it&#8217;s either a second or third career, right? But that&#8217;s certainly true for me because I really didn&#8217;t have any knowledge of what intellectual property was when I was doing my undergraduate degree. No one really told me or gave me any information on what this field was at that time. I had no clue until I started working in the industry as a product development engineer at 3M. And working at a company like that, you get exposed to a lot of things. And one of the requirements as an engineer was you had to know the field in which you were developing products. And so we really had an obligation to understand the arts. And that&#8217;s where I got exposed to IP, sitting across the table with these attorneys, talking about what it was I was developing in the lab and what we were following on for patentability. It just became a real passion of mine. And I just said, &#8220;Wow, this is something else I can do.&#8221; And that was my path to becoming a patent attorney—going to law school to take this route. Loretta Freeman: And I think the advice I would just kind of tell people is, for me, practicing in this field is so awesome because not only do you continue to work with a team and inventors and being able to see a variety of things, it&#8217;s just so complex. I mean, there&#8217;s just so many things that you can do and see as an IP attorney because IP law is so varied. There&#8217;s just a lot of things that you can do, either on the patent prosecution side or the litigation side; there&#8217;s just a whole gamut there. And so I would just say, even if you don&#8217;t have a technical background, if you&#8217;re not in the sciences, if you don&#8217;t have an engineering degree, IP law is still a field that can be very exciting for you because you can do litigation. And a lot of folks would enjoy that as well, even without having the science background. So that was kind of my path to becoming a patent attorney—just being exposed to it as an engineer working for a major company. Kenneth Suzan: Well, thank you, Loretta and Tina, for sharing your backgrounds. We&#8217;re gonna jump now into the substance of today&#8217;s podcast, which is in the area of patent marking and virtual patent marking. I know we&#8217;ve touched upon this topic in another podcast episode, but we&#8217;re gonna go deeper into those issues. We&#8217;ll start with Tina today. Tina, what are the basic legal requirements for patent marking and virtual patent marking? Tina Dorr: Thanks, Ken. So, patent marking is optional. It&#8217;s not something that&#8217;s required by patent owners at all. It&#8217;s optional, but by statute, it&#8217;s something that gives patent owners the option to provide what&#8217;s called notice to the public of their patented products. And so by providing this notice, by marking products or virtually marking them, you provide this notice which allows you, if someone infringes your patent, to recover monetary damages for the infringement that go all the way back to that notice. So while you don&#8217;t have to provide this notice, the benefit is that if someone infringes your patent, you can collect damages. And so the statute says that there are two ways to do it. You can provide constructive notice by marking your product itself. And you can either say &#8220;patent&#8221; or &#8220;patent with the patent number&#8221; actually on the product. And that is what you want to do if at all possible—mark the product itself. Now, say that, for example, you have a cup with your company name on it and any other writing. If your product has any other writing on it, then the court&#8217;s gonna want you to actually provide that notice on the product itself if you&#8217;re using constructive notice by marking the product. Tina Dorr: Another way to provide notice is through letting a competitor or potential infringer know in writing. So if you don&#8217;t mark your products but you discover someone infringing your patent, you can send them a letter, give them the patent number or a copy of your patent. And that&#8217;s another way to provide notice. And then again, potential damages would go back to that if you didn&#8217;t mark your products to the timing or the date of that letter. Kenneth Suzan: Sure, sure. No, that&#8217;s very interesting. We&#8217;re gonna, along those lines, we&#8217;re gonna turn to Loretta. Loretta, what factors must be considered when determining whether to use virtual patent marking? Loretta Freeman: Yeah, determining whether to virtual mark and how to use virtual marking can be more complex than you think. And companies should definitely give this some serious thought, especially those companies with large patent portfolios and/or extensive product offerings. In some cases, the expense in marking the product may be disproportionate to the cost of the product itself. So it may be easier and more cost-effective to virtually mark. For example, just think about the expense that can come with modifying your labeling and packaging information or a manufacturing process to change mode tooling in order to reflect a change in the patent information. Loretta Freeman: Of course, there are other things that could be done if the patent marking is included in the tooling. Manufacturers can consider using removable inserts that have the patent marking information on them, which can be easily updated and replaced when needed, rather than having to make an entirely new tool. Loretta Freeman: So there are ways to make this more cost-effective, but you also have the likelihood of needing to scrap old packaging and labeling inventory as you&#8217;re trying to maintain accurate patent information. So it&#8217;s much easier to update a virtual marking website, and companies can avoid the expense and effort required to update and maintain patent information on products. So e-marking or virtual marking can definitely provide cost-effectiveness, flexibility, and transparency. But if you&#8217;re going to virtually mark, companies must ensure that their designated URL remains functional at all times, or you risk the public and potential infringers not being noticed that the products are patented. So the marking system may be a little burdensome to maintain. So you want to consider whether or not your company would be able to commit to keeping such a website updated with the patent information related to each product. Loretta Freeman: And back to what Tina was mentioning as far as marking on the product itself, the size of the product and whether you can physically mark directly on it should also be considered. Some patented parts may be so small that physical marking would be unfeasible or difficult to even read. And in these cases, you might consider virtually marking and perhaps virtually marking the packaging, which is acceptable only if marking the product cannot be done. And in some cases, there are patented products that are enclosed within a larger product and are never seen by the public, right? For example, products such as computer software, which require special considerations. You might want to indicate the patent during startup or include the information in the documentation of the software. You would also want to include the patent marking within links if the software is internet-based. So these are just some factors that you want to think about when you&#8217;re considering whether to virtually patent mark. Kenneth Suzan: Thank you, Loretta. Following on our discussion here, I want to talk about some best practices. What are some best practices for virtual patent marking, and what steps can patent owners and their counsel take to develop their virtual patent marking program? Loretta Freeman: I would say for corporations, I like to emphasize having the legal team work closely with management and R&amp;D engineers to identify which products actually fall under the protection of a particular patent. It is important that everyone understands the marking obligations to ensure full compliance with the rules. And so when you work closely together, you can avoid any confusion. And this also will maximize any potential damage awards in cases of infringement. So for sure, one best practice is to just work closely together with your team and making sure that you probably have everything identified. Another one I would just note is having a formal marking program in itself, right? It&#8217;s very important to maintain good records. And so having a formal marking program can help with that. And being sure to document its implementation when you actually start this marking program because you want to meet the substantially consistent and continuous aspect of the marking requirement. So having routine monitoring and updating of the URL website is key, as I mentioned earlier, to ensure all the information is accurate and up to date. And you want to indicate on the website when your patent listing was last updated so you can ensure the marking program is consistently followed by manufacturers or licensees, whomever. And so you want to make sure that you&#8217;re working closely with those individuals as well. Loretta Freeman: And another thing to consider is whether a single URL is appropriate, right? I mean, if your company has multiple divisions, perhaps consider whether a different URL should be used for each division or business unit or product family or product line. You might have multiple URLs to help with providing the product-to-patent association that&#8217;s required under the law. And it also may be very well helpful in making a divestiture. If there&#8217;s anything that were to come up in a particular business later, that could be easier for you down the road. Kenneth Suzan: Very, very useful. Yeah. Are there any other things that come to mind in this area? Loretta Freeman: I think from a patent owner&#8217;s perspective, I think just maintaining good records to show any changes that are made to the website, the dates that the changes were made, you want to make sure that you keep good records on that. Products, packaging, labeling—all that should be reviewed from time to time to ensure accuracy. Like, you want to make sure expired patents are removed. You want to make sure that new patents are included and that any patents listed do, in fact, cover the marked products. So having this routine audit program in place to monitor and update patent marking may help a manufacturer or company demonstrate that it did not have intent, which is a requirement for proving false marking, to falsely deceive the public and help to avoid penalties associated with false marking. Kenneth Suzan: Very good, Loretta. Very helpful and useful information. So now we&#8217;re gonna shift gears and talk about monetary damages. We&#8217;ll talk to Tina about that. So Tina, what types of benefits and potential damages could you gain from properly marking? Tina Dorr: Good question, Ken. And we&#8217;ve been talking about damages. And so damages—there are several types of damages that can be awarded, and these can be hundreds of thousands, millions, billions of dollars potentially. But the three main types are reasonable royalties, lost profits, and occasionally, triple damages. And reasonable royalties are—everyone&#8217;s probably heard this term—the fair market value of a license or a royalty for what your infringer would have paid you to use your patents. So to calculate this—and there are experts and companies that do this kind of thing—it&#8217;s very complex, it&#8217;s dependent on facts, but it also involves a lot of imagination because to calculate the reasonable royalty, the parties are supposed to go back in time and envision a potential amicable situation prior to any litigation, prior to any infringement, a licensing agreement. And they are to consider the licensing agreement that they would have reached based on factors at that time, such as their mindsets, financial situations, and other similar deals. Tina Dorr: Lost profits is the second type that I mentioned, which would compensate a patent owner for money that they would have made if not for the infringement. So this type of damage requires a showing that your business suffered losses because of the infringement. Tina Dorr: And then the last type is triple damages, and that&#8217;s triple money damages—if the defendant&#8217;s infringement was willful. So to prove—I think Loretta might&#8217;ve mentioned this—to prove that the infringement was willful, intentional, that they knew about the patent, you have to prove those two things: that the defendant knew about that patent (that&#8217;s why patent marking is important) and that they copied or tried to design around it so that it was intentional. And so that, of course, is gonna probably only come out during discovery where documents and emails are reviewed. Kenneth Suzan: Thank you, Tina. Now let&#8217;s also look at patent infringement. If you&#8217;re sued for patent infringement, what steps should you take to determine whether the plaintiff properly marked their patented goods to assess your risk for owing damages? Tina Dorr: Great question. Now, we&#8217;ve mentioned a few times that marking isn&#8217;t—or maybe I didn&#8217;t mention this earlier, I&#8217;m not sure if I did or not—but marking isn&#8217;t effective until substantially all of the patented products being sold are properly marked. So say that you&#8217;re selling some in Georgia and then you&#8217;re selling some in California and you&#8217;re only marking the products in Georgia for whatever reason. That is not substantially all the patented products. So if you receive a letter—a cease and desist letter, or a complaint for alleged patent infringement—the first thing you want to do, and you can do this informally (of course, this will be done in discovery as well), but you want to look and see that all of the products are consistently marked because if the patent owner has failed to consistently mark, it&#8217;s possible that the issue can be decided very early on in summary judgment. Kenneth Suzan: Mm-hmm. Kenneth Suzan: And Loretta, let&#8217;s talk about how virtual patent marking is being looked at in the federal courts. How are the federal courts treating virtual patent marking these days? Loretta Freeman: Yeah, I think one of the things—so I was looking at this question, and I really just wanted to focus on the liability for false marking, right? And just making people aware of this liability because marking a product with a patent that does not cover the product can create liability for false marking. And the courts really view that quite seriously, as well as marking a product with a patent number without consent from the patent owner or marking an unpatented product or marking a product &#8220;patent pending&#8221; when there is no patent pending, right? So there are certain liabilities that you can be at risk of if you do any of those things. And marking a product with an expired patent is no longer considered false marking. A very famous lawsuit involved false marking with expired patents, but the courts eventually found no violation of patent marking laws because there was no intent to deceive. And so Congress amended patent laws under the AIA in 2011 to exclude expired patents for false marking. In addition to this, false marking suits can no longer be filed by ordinary citizens. Only the government can pursue false marking claims, and as such, these suits have dropped off significantly. But I think having a routine audit program can help show that there was no deceptive intent. And so you can kind of move yourself away from these types of risks. Kenneth Suzan: Very, very helpful information indeed. Tina, if you sell or license a patent, who is responsible for marking? Tina Dorr: Great question. And this issue comes up all the time. So a significant problem can arise when products are sold or entire businesses are acquired or divested by a device maker and patent owner. And when a patent or patented device is transferred between entities, it is important in that deal to identify who has the responsibility to maintain the marking. Because courts are very clear that the law requires substantially all products to be marked and that, as Loretta mentioned, the marking is substantially consistent and continuous. And this holds true with licensing too. So if a patent owner licenses a patent to a licensee, in order to maintain that consistency in that licensing agreement, it needs to be clear who is going to maintain that mark. And there&#8217;s some tension there because, for example, if you&#8217;re licensing a patent, of course, the licensee may not wish to have that if it&#8217;s virtually marked with the patent owner&#8217;s URL website, which is probably going to have its name on that website. That licensee probably doesn&#8217;t want that patent owner—who could be a supplier competitor—on their product. But again, it&#8217;s really important that those deal lawyers are working closely with IP lawyers together to make it very clear who&#8217;s going to continue to and how that marking is going to continue to ensure that the marking is substantially consistent and continuous. Kenneth Suzan: Very, very good. So we&#8217;re coming up near the end of our podcast today. We have one final question that is for Loretta. Loretta, what are some pitfalls and uncertainties around virtual patent marking that you can share with our listeners? Loretta Freeman: I think, well, there could be a few things, but I want to highlight one for sure that we&#8217;ve talked about already. And it&#8217;s mostly around the difficulty of linking patents to products and making sure that you have that accurately when you virtually mark. It is so important to have your legal team working closely with your R&amp;D team and management to ensure that you are marking your product with patents that cover the product to provide constructive notice, which may allow collection of higher damages in infringements. I mean, it just really starts there, right? Incorrect patent marking can make a manufacturer liable for false marking. And ineffective patent marking requires routine monitoring and updating to ensure the marking is accurate. So you want to make sure that you have an effective marking system and routine to ensure that you don&#8217;t fall into these pitfalls of not having your website accurate and up to date and actually available for those that you&#8217;re trying to put on notice. Kenneth Suzan: Very, very helpful. Tina, do you have any comments on the pitfalls and uncertainties at all? Tina Dorr: Yeah, I&#8217;ll highlight again that, as Loretta mentioned, in many cases, the parties that are responsible for maintaining the virtual patent website and the virtual marking program are their marketing team, and they&#8217;re not working necessarily very closely with the innovation team or the R&amp;D team. And maybe they don&#8217;t understand the importance. And so I think having regular internal education—and this can come from outside counsel who are, I&#8217;m sure, happy to provide a 30-minute lunch and learn on why it&#8217;s important to maintain this website and maybe best practices and some of the things that Loretta mentioned to ensure that you&#8217;re accurately maintaining the site up to date—and why it&#8217;s important. I think understanding that &#8220;why&#8221; will really help drive and help make that virtual patent marking program robust and continuous. Kenneth Suzan: Excellent. Tina, Loretta, thank you so much for joining us today on the IP Friday&#8217;s podcast. This has been fantastic. And we will list in the show notes both of your firm bios if people want to get in touch with you. Thank you both once again. Tina Dorr: Thank you very much, Ken.

STOPfakes.gov Information pages of the German Patent and Trademark Office for SMEs Summary and Main Takeaways Episode Overview: This episode features an interview with Michelle Sara King, the intellectual property team lead and senior international trade specialist at the International Trade Administration in the U.S. Department of Commerce. The discussion centers on her role, the initiatives she leads, and advice for businesses on protecting intellectual property (IP) internationally. Main Takeaways: Role and Responsibilities: Michelle leads a team focused on protecting U.S. IP rights internationally. She has extensive experience in IP and international trade, contributing to improved IP enforcement globally. Key Initiatives: Stop Fakes Program: Educates businesses, especially SMEs, on protecting their IP. Provides resources, training, and support. International Collaboration: Works with global partners to enhance IP enforcement, involving negotiations, best practice sharing, and technical assistance. Challenges in IP Protection: Evolving IP Threats: New forms of IP theft and counterfeiting emerge with technological advancements, requiring constant updates in strategies. Complex International Cooperation: Varying levels of IP protection across countries necessitate continuous negotiation and diplomacy. Advice for Businesses: Proactivity: Register trademarks and patents in key markets, monitor for infringements, and act when necessary. Education: Utilize resources like the Stop Fakes program for best practices in IP protection. Professional Support: Engage experienced IP professionals for guidance and support. This episode highlights the critical work being done to protect intellectual property rights globally and provides practical advice for businesses to safeguard their IP assets. Rolf Claessen: Good afternoon. I am Rolf Claessen, and welcome to IP Fridays. Today, our special guest is Michelle Sara King, the intellectual property team lead, senior international trade specialist, and the Stop Fakes team lead at the International Trade Administration in the United States Department of Commerce. Michelle, welcome to the podcast. Michelle Sara King: Good afternoon. I am Michelle Sara King. I am the intellectual property team lead, the senior international trade specialist, and the Stop Fakes team lead at the International Trade Administration in the United States Department of Commerce. Happy to be here. Thanks, Rolf. Rolf Claessen: So tell us, what is the Stop Fakes program of the US government, and where does it come from? What is the main goal? Tell us more about it. Michelle Sara King: The Stop Fakes program was created by a presidential order in the Bush administration as an opportunity to provide outreach and education about intellectual property to businesses of all sizes as well as consumers. The name of the Stop Fakes program is a bit of a misnomer because it&#8217;s focused primarily on education, outreach, and engagement about intellectual property. It is not an enforcement mechanism per se, though we do provide opportunities and referrals for issues of enforcement. The Stop Fakes program is over ten years old and operates through a digital platform with a website, stopfakes.gov. We conduct outreach and engagement via virtual webinars, in-person roadshows, speaking at industry events, and specialized business consultations for businesses of all sizes, all at no charge. Our programs partner with various entities, including the US Export Assistance Centers, which operate in every state and are part of the International Trade Administration. The International Trade Administration was established over forty years ago by President Reagan as a key component of promoting and protecting US businesses internationally. Rolf Claessen: That&#8217;s very impressive. What are some of the major accomplishments of the Stop Fakes program? Michelle Sara King: One of our key accomplishments is the development of extensive resources and tools to help businesses protect their intellectual property. We&#8217;ve created guides, webinars, and training materials that are accessible to everyone. Additionally, we&#8217;ve held numerous events and consultations that have directly assisted businesses in safeguarding their IP. Another significant achievement is our collaboration with international partners to strengthen IP enforcement globally. This involves negotiating agreements, sharing best practices, and providing technical assistance to help other countries improve their IP systems. Rolf Claessen: Can you give us some examples of the kind of support and resources you offer to businesses? Michelle Sara King: Absolutely. We provide a range of resources, including IP toolkits tailored to specific industries, which outline best practices for protecting intellectual property. Our webinars cover various topics, such as how to register trademarks and patents in foreign markets, how to detect and respond to counterfeit goods, and strategies for enforcing IP rights. We also offer one-on-one consultations where businesses can get personalized advice and support from our team of experts. Rolf Claessen: What do you see as the biggest challenges in the field of intellectual property today? Michelle Sara King: One of the biggest challenges is the constantly evolving nature of IP threats. As technology advances, new forms of IP theft and counterfeiting emerge. Keeping up with these changes and developing effective strategies to combat them is a continuous challenge. Additionally, working with multiple countries with varying levels of IP protection and enforcement can be complex. It requires constant negotiation and diplomacy to achieve meaningful improvements. There&#8217;s also the challenge of raising awareness among businesses about the importance of protecting their IP and the steps they need to take to do so effectively. Rolf Claessen: Given these challenges, what advice would you give to businesses looking to protect their IP internationally? Michelle Sara King: First and foremost, businesses need to be proactive about protecting their IP. This means registering their trademarks and patents in key markets, monitoring for potential infringements, and taking action when necessary. Education is also crucial. Businesses should take advantage of the resources available to them, such as the Stop Fakes program, to learn about best practices for IP protection. Finally, working with experienced IP professionals can provide invaluable guidance and support. It&#8217;s important to have a comprehensive IP strategy that covers all aspects of protection and enforcement. Rolf Claessen: Thank you, Michelle. It&#8217;s been a pleasure talking with you. Your insights and expertise are incredibly valuable to our listeners. Michelle Sara King: Thank you, Rolf. I&#8217;m glad to have had the opportunity to share some of our work and hopefully provide some useful information to your audience. Rolf Claessen: That wraps up this episode of IP Fridays. Thank you for tuning in, and we&#8217;ll be back with more discussions on intellectual property soon.

Profile of Angelo Mazza Summary of the Most Important Points Introduction: Angelo Mazza, a partner at Gibney Anthony and Flaherty, LLP, is the guest on the IP Friday&#8217;s podcast. He specializes in brand protection and enforcement strategies and works extensively with law enforcement on intellectual property (IP) related crimes. Experience with US Customs and Border Protection (CBP): Angelo has over 30 years of experience training over 60,000 law enforcement officials, including US Customs, Border Protection, Immigration and Customs Enforcement, and the FBI. He started working with CBP in the early 1990s, training them on identifying various products and discussing enforcement-related matters. Evolving Threats and E-Commerce: The threats CBP faces have evolved significantly over time, with e-commerce being the biggest game-changer. The volume and type of cargo have increased, and CBP now deals with a much larger scale of goods, including counterfeit and illicit pharmaceuticals. De Minimis and Counterfeit Goods: The de minimis rule, which allows small-value parcels under $800 to pass duty-free, has been exploited by counterfeiters. This has led to a significant number of counterfeit goods entering the US, creating challenges for CBP in identifying and intercepting these goods. Customs&#8217; Efforts and Operations: CBP has become more aggressive in stopping counterfeit goods and illicit pharmaceuticals, conducting operations like Operation Artemis and Operation Apollo. These efforts have led to a decrease in IP seizures as resources focus more on significant threats like fentanyl. Role of Rights Holders: Rights holders can protect themselves by recording their trademarks with CBP, providing training to customs officials, and responding quickly to inquiries about suspicious packages. Live training is preferred for its direct engagement and effectiveness. Success Stories: Angelo shared success stories where CBP&#8217;s efforts, in collaboration with HSI, led to the seizure of millions of dollars worth of counterfeit goods and the shutdown of operations exploiting the de minimis rule. US Chamber&#8217;s Memorandum of Understanding (MOU) with CBP: The US Chamber has developed an MOU with CBP, allowing brands to share worldwide seizure information, which aids in risk assessment and targeting counterfeit goods. This collaboration includes the donation of technology tools to assist customs in identifying counterfeit products. Full Transcript Introduction: Our guest today on the IP Friday&#8217;s podcast is Angelo Mazza. Angelo is a partner with the law firm, Gibney Anthony and Flaherty, LLP, located in New York City. Angelo counsels clients in developing brand protection and enforcement strategies and works extensively with law enforcement on intellectual property related crimes. He has trained over 60,000 law enforcement officials, including US Customs and Border Protection, Immigration and Customs Enforcement, and the Federal Bureau of Investigation. For over 30 years, Angelo has provided training sessions for law enforcement at the federal, state, and local levels through the International Anti-Counterfeiting Coalition and its foundation. As the current director of US training, he is the driving force behind the IACC&#8217;s educational materials to assist law enforcement in fighting intellectual property crimes. Welcome Angelo to the IP Friday&#8217;s podcast. Experience with US Customs and Border Protection (CBP): Hi Ken, thanks for having me. Great introduction. I should read that more often. Excellent, and for our listeners purposes, Angelo and I have known each other for many years as I first started practicing law with the law firm, Gibney Anthony and Flaherty. So it&#8217;s great to be talking to you once again. Glad to be here, Ken. So Angelo, how did you get your start working so much with US Customs and Border Protection, otherwise known as CBP? Well, you know, Ken, it really is funny. You know how sometimes you fall into something? I kind of fell into it. I started doing the training with CBP back in the early 90s. We were going around training them, how to identify a variety of different products, discussing some of the issues we were facing. We would also work with local law enforcement as well in terms of the training. And that evolved over time more and more integrating with what Customs was doing, dealing more on not necessarily specific training, but more enforcement related matters. So now I do interact a lot with CBP on a regular basis. And it&#8217;s really fun and interesting. There are a lot of great people that work for the organization. Evolving Threats and E-Commerce: And how have the threats CBP faces evolved over time? What have you seen as the development over the years? Well, you know, that&#8217;s a great question, Ken. And I don&#8217;t want to date myself. And I don&#8217;t say I was there when the first clipper ships were coming across the ocean. But CBP was created as an agency, a revenue agency, right? It was part of US Treasury when it first started out. And the folks there would deal with the merchant ships coming in, imposing the taxes, checking the goods coming in. And it was a pretty straightforward operation. They were built to deal with one ship at a time over the years, you&#8217;ve got bigger and faster ships, containerized cargo, air cargo, express consignment cargo. And so what&#8217;s happened is that in one way or another, it&#8217;s been the volume and the type of cargo that they see that has increased tremendously from the 1780s up until today. And in fact, probably Ken, as you know, working in IP, the biggest game changer is going to be e-commerce. That impacts a lot of what CBP, the threats it&#8217;s dealing with and how it&#8217;s got to build its response. The response that was good 50 years ago is not gonna work today. De Minimis and Counterfeit Goods: Yeah. And what would you say is the biggest issue? If you had to stack all the issues up side by side, what would be the biggest issue today facing CBP? Let&#8217;s go back to e-commerce and its progeny, okay? And with that is de minimis. De minimis is a significant issue that customs is facing now. In fact, there have been a number of press releases and alerts that deal with this specific problem. So in order to help the listeners, the viewers understand this better, let&#8217;s take a step back and kind of understand what de minimis is and its impact on the customer. And its impact on the way customs works and the threats that it creates to the health and safety of the public in the US. So de minimis was created to be a catch-all for small value parcels. Now, these are parcels that come in. And at one point it was a $200 threshold. Anything below $200 would pass duty-free. Minor cursory looks at it. Several years ago, that value was increased to $800. So with $800, wow, that&#8217;s a, you can squeeze a lot more stuff in it. And the counterfeiters and the bad actors took advantage of this because for them, what&#8217;s value? You know, it&#8217;s all relative. If they have a thousand counterfeit watches, well, they&#8217;re only worth a penny each, right? They&#8217;re gonna value them very low or phone cases or any manner of good can be undervalued. So that&#8217;s been a problem. So they can shift significant quantities of goods by undervaluing. They can also bring in goods by mislabeling, misidentifying them. So the packages that come in many times may say stuff, gift, or be misidentified entirely. I know there was an example at JFK where items were labeled as low value synthetic diamonds, which of course caught the eye because some of the packages do get checked. Turns out it was a, I think five or $8,000 shipment of genuine diamonds. So obviously in that case, they were trying to evade the duty. So you&#8217;ve got people using the system to evade duty. You&#8217;ve got people using the system to ship in counterfeit goods. Why? Simply based on the volume of packages that e-commerce has created over time. Customs is looking at, I believe the number is for this fiscal year, they&#8217;re gonna look at in the de minimis arena, 1.3 to 1.5 billion packages entering the US. Wow, that&#8217;s a huge number. It is you at JFK alone, they see approximately 24% of that number. LAX sees 23%. A quarter billion, a quarter million packages each, at least in those facilities coming through. And these are small parcels. And obviously if you&#8217;ve got that many packages, you can&#8217;t look at them all. The best you can do is target and they do have risk analysis models, which will look at where the package is coming from, where are they going? Is it a particular region, a particular country? Are there known bad actors that they&#8217;ve been tracking? Well, now we&#8217;ve talked about it in terms of skipping out on duty. We&#8217;ve talked about it in terms of trying to smuggle counterfeit goods into the country. Unfortunately, it&#8217;s also a conduit for illicit pharmaceuticals. So the folks who bring you fentanyl have used this as a way to bring in finished fentanyl pills, finished product. They bring in the precursor chemicals. They bring in the pill presses to finish the product all through the de minimis environment. So over the past couple of years, customs has become much more aggressive in trying to stop this. They&#8217;ve had a couple of great operations, Operation Artemis, Operation Apollo, which really target the fentanyl product. So what does that mean for everybody else? Okay, so fentanyl is getting a lot of priority. It&#8217;s top of the list because of the significant harm it causes to public health and safety. IP is still a priority. Unfortunately, when you&#8217;re talking about things that can kill you just by touching a few grains of it versus a counterfeit phone case, then you can see why the numbers for IP seizures are gonna go down, which they have. There have been fewer because the energies have really been focused on the issue of fentanyl. And that&#8217;s gonna continue to be the case until it&#8217;s brought under control, until they can bring those numbers down. The other thing too that CBP is doing is they are reaching out to the trade community and particularly the customs brokers to remind them on those packages in which a broker is effectuating clearance that they have a responsibility to know their importer and to know the content of those packages to be clear when clearing them to explain what is in the packages, to make sure they are manifested properly because if not, then brokers will be penalized, including ultimately they could lose their licenses if they are committing fraud upon CBP for the entry of the product. Role of Rights Holders: Wow, with such a flood of goods, Angelo, what can rights holders do today to protect themselves in this environment? You know, Ken, it&#8217;s gonna be tough. There are no easy fixes to the way in which commerce has shifted to the online environment. People are very comfortable now ordering their goods, going to any site, maybe there are some, they stay away from their little doobies. But in many cases, they don&#8217;t think, don&#8217;t give it a second thought really, to go online and order and know that their goods are likely coming from a foreign country. So how can a brand try to help customs prevent entry of these goods? Well, obviously the first thing you need to do is record your trademarks. The IPR Enforcement Branch, IPR Enforcement Branch with CBP, they have an online portal, very straightforward to use, very low cost. If you&#8217;re a brand, there&#8217;s no reason not to record. It is, I believe, $180. The length of the recordation mirrors the length of the trademark. So if you&#8217;ve just gotten a new trademark, you&#8217;ve got that full time on it. If you&#8217;re coming up for renewal, then you will get the renewal period. It applies to copyright as well. What this does, and mind you, there are close, I think last time I looked close to 19,000 active recordations in the CBP portal in IPRIS. And they don&#8217;t get to all of them, but the fact that you put it in there, if they see something that is suspicious, they can look up the mark, they can find out who the contact is. You can upload materials to help identify the goods. They can reach out to you. They may follow up. They may be able to make a determination based on those goods. Now that&#8217;s the recordation process. You have to go beyond that though, because that can&#8217;t stand alone. That&#8217;s a great way to get on the radar. To start and be noticed. Then you&#8217;ve got to take some additional steps. That&#8217;s your first low cost step. Second one would be, think about training. Think about providing training to the folks at Customs. They are the front line at the ports at all the borders. So there are two ways to do that. That is either you can do it online. Customs has a method. You could look it up on their site, and it&#8217;ll take you through the steps on setting up the online training for officers, import specialists, fines and penalties folks, for them to be able to understand your product. Now, we like to do, as you mentioned, and that great reading of the bio, that live training is where it&#8217;s at. I think after having done both, I do think the live training is better. It&#8217;s better because you are directly engaging with the folks at US Customs on a personal level. They&#8217;re able to ask you a question in the moment. They&#8217;re able to handle the genuine and the counterfeit goods. And you&#8217;re able to explain any trends or issues that you&#8217;re seeing. And you can go around to the ports. As you mentioned, IECC does have a program where basically on a monthly basis, they will hit one or two ports. In fact, next week, unfortunately, after this broadcast airs, we&#8217;re going to have been in San Juan, St. Thomas and Atlanta to conduct training for the folks there. Each of those ports requested the training, and they&#8217;re very excited to find out more because there are goods going through all of them, counterfeit goods, which are then available either in a tourist economy setting or they&#8217;re coming in via air cargo. Now, the other thing that you can do, you&#8217;ve recorded your mark, you&#8217;ve done your training. Now, I mentioned before that there&#8217;s an opportunity that there is a chance that customs will actually reach out to you for verification about the goods. They may have the taint. Now, they can&#8217;t move to seizure unless they have a good reason to do so. And if that&#8217;s the case, then you need to respond to those inquiries very quickly. This isn&#8217;t, &#8220;Oh, I&#8217;ll put it off a week or two.&#8221; Customs is under certain time constraints in which they have to complete detention runs. They can do 30 days, but then if they&#8217;re going to perfect seizure, they need to move to that. And with the volume of goods, the quicker they get goods, either seized or released, then that&#8217;s what they have to do. We have a rule here where any time we receive a CBP inquiry for one of our clients, it&#8217;s a 24 hour or less turnaround. Even if it&#8217;s to the point of just being able to say, &#8220;We&#8217;ve gotten your inquiry, we&#8217;ve got to do some research, we will find it out, we&#8217;re going to get back to you,&#8221; then that&#8217;s what we&#8217;ll do. It&#8217;s important to acknowledge the work that Customs is doing and to reassure them that you&#8217;re on it, that you are going to back up the steps that you&#8217;ve taken with some concrete action. Now, remember, there&#8217;s one important thing, though, Ken, that comes into play. When you&#8217;re providing information to Customs, it should not be a determinative statement. So you cannot say, &#8220;The goods are counterfeit.&#8221; That&#8217;s not what you&#8217;re saying. You should say, &#8220;The goods are inconsistent,&#8221; because the determination as to the legitimacy or counterfeit nature of the goods has to be made by Customs after weighing the information in front of them and that has been provided. So it&#8217;s best to stay away from those determinative statements and the inconsistencies should be as to the products where they&#8217;ve sent you images or there are samples in some cases. It&#8217;s got to be specific to those, not generic statements, because those are easy to knock down. You want statements that apply to the product that you&#8217;re dealing with on screen or on hand. Success Stories: And, Angelo, if Customs finds a package that looks suspect, how does the brand owner find out about it? Do they get pictures emailed to them? Are they&#8211; or you get phone calls? What&#8217;s the process like? OK, good question. So based on the recordation, you have put your contact info in there or the person responsible to work with Customs. We have gotten calls. We have gotten inquiries via email that include images. And then we will sometimes be able to do it based on those images. Other times, we do request additional images of the item to assist in identifying. And sometimes we talk about it over the phone and we&#8217;re able to help them. We tell them what routes the goods typically follow or what different items accompany the good in transit. And that helps them make and to discern their decision. Sure. And also maybe even looking out to see who is the sender. Where is it coming from, right? Well, there are certain things they cannot disclose. And they&#8217;re not supposed to disclose the sender or recipient to the rights holder. Because the information they can disclose is limited. And that&#8217;s why we really focus on those images of the goods. And sometimes those images are fantastic. You can tell with great certainty what you&#8217;re looking at. And other times, those images are a little difficult to work with. So we have to make a second request. I always tell the folks at Customs, let&#8217;s make believe you&#8217;re taking pictures of your family. You want to see it. Well said. We&#8217;re getting near the end. I have two more questions. Could you share with me maybe one or two successes briefly that you&#8217;ve seen over the years? I think the successes we see in general come from when we&#8217;re able to take the information we receive after a seizure is perfected through the seizure notices. And we enter that in the database. We send a C and D. When we&#8217;re able to connect that info with a real world brick and mortar target, that is where it&#8217;s fantastic. We&#8217;ve had instances where CBP sees goods coming in on a constant basis. They make a referral to HSI. They, in turn, open up a case. We have&#8211; recently, there was a case that involved well over $15 million of our client&#8217;s product being sold by people who were doing small-time importations. This was in a mail facility environment. They were bringing in five, 10, never more than maybe 15 items at a time. But just think, they turned that over the years into $15 million worth of product. Another one that we count as success, customs was seeing goods coming in, going to a particular address in the Carolinas. They alerted HSI. HSI is a very important thing. They alerted HSI. HSI decided to make a controlled delivery. They thought they were going into a house that maybe just had a few items. They were doing mail fulfillment because they were advertising on Facebook. They ended up seizing well over $5 million worth of products on hand, including counterfeit pharmaceuticals, luxury goods, jewelry, a whole host of products. And we were able to find the seizure notices and were able to tell them that, yes, we had sent notice. These people were aware that what they were selling was, in fact, counterfeit. So those are the great cases. Those are what we try to build. We always try to work with law enforcement. That has the greatest impact and sends the strongest message to the counterfeiters that, at some point, we are going to find you. It may not be today or tomorrow, but we&#8217;re in this for the long game. US Chamber&#8217;s Memorandum of Understanding (MOU) with CBP: So last question for today, Angelo, is that the US chamber has a significant memorandum of understanding with CBP. Can you tell our listeners a little bit about that? OK. Well, Ken, one of the things&#8211; and this goes to some of the changes at CBP. I recall when I first started working with customs, the rights holders were in their silo. Customs was over here in their silo. And you didn&#8217;t mix. The grains did not mix at all. But what&#8217;s happened over the years, I think, based on the changing nature of trade and the need for additional resources, customs has become more amenable to working with industry or its representatives. So what that means in terms of the chamber, they have worked to develop an MOU where brands, rights holders, are able to share worldwide seizure information with CBP. That gets put into their risk assessment models. It gets evaluated. And this may open up, in fact, a whole new range of importers and exporters who they were unaware of previously. So from my understanding, it is leading to some beneficial effects where goods are being seized, being looked at, that were not previously because of the data the companies are providing. This also extends into the donation program where companies can provide their technology tools that can assist customs with identifying product, whether it be barcode readers, RFID readers, all types of different things that companies can be available to custom. I think CBP realizes that the brands do have some of the resources that are needed to simplify the process. I think, too now, customs is looking more at technology, especially the use of AI and identifying goods coming in. Their newest generation of X-ray machines that they use on packages uses AI to discern what is in those boxes based on the algorithms. I mean, some of this is so amazing and so incredible in terms of where we&#8217;re going to be in just a few years and the fight against counterfeits and CBP&#8217;s role in that. Angelo, times really are changing quickly, and I&#8217;m so grateful for the opportunity to speak with you today on the IP Friday&#8217;s podcast. Thanks again so much. Thank you, Ken. Thanks for having me. And if anyone has any questions, I&#8217;m always free to answer. Thank you. Thank you, Angelo.

In this interview with Rolf Claessen on the IP Fridays podcast, João Negrão, the executive director of the EUIPO, discussed the office&#8217;s recent developments and future plans. Negrão highlighted the conclusion of the consultation phase for the EUIPO&#8217;s 2030 Strategic Plan, emphasizing key areas such as financial sustainability, efficiency, effectiveness, and the integration of emerging technologies like artificial intelligence. He noted the challenges posed by political and economic volatility and the expansion of EUIPO&#8217;s competencies, including geographical indications. Negrão addressed the potential new role of the EUIPO in handling non-binding essentiality checks for standard essential patents (SEPs), should the proposed regulation be approved. He assured that the EUIPO would adapt to these new competencies using a project management approach. The interview also covered the EUIPO&#8217;s new mediation center for IP disputes, launched in November 2023. Negrão explained that while mediation and conciliation have been offered by the Boards of Appeal since 2011, the goal is to expand these services to first-instance proceedings to provide cost-effective and timely alternatives to traditional dispute resolution. Celebrating the EUIPO&#8217;s 30th anniversary, Negrão reflected on its growth from a small office to an organization with 1,200 staff members, protecting almost five million trademarks and designs. He cited significant achievements, including the establishment of the Observatory on IP Infringements. The conversation touched on the DesignEuropa Awards, now held annually, which recognize excellence in design across various categories, including industry, small and emerging companies, lifetime achievement, and young designers. These awards aim to promote the design system and celebrate outstanding work. You can apply here: https://www.euipo.europa.eu/en/designs/designeuropa-awards/how-to-apply Negrão discussed the EUIPO&#8217;s new competence in geographical indications for craft and industrial products, aimed at protecting local products, promoting quality recognition, and supporting local producers and regions in Europe. He also highlighted the EUIPO&#8217;s expanding international cooperation with countries like Ukraine, Moldova, and Georgia, aiming to harmonize IP systems globally and support European businesses by ensuring robust, predictable IP systems in these regions. Finally, Negrão outlined his personal goals for the EUIPO, emphasizing his desire to use his extensive experience to contribute to the office&#8217;s further development. He aims to focus on strategic planning, cooperation with national and international IP offices, and addressing issues such as IP infringements and the underrepresentation of women in the IP system. Overall, the interview underscored the EUIPO&#8217;s efforts to improve the IP system, embrace new competencies and technologies, and support stakeholders through effective implementation and international cooperation. Key Takeaways: EUIPO&#8217;s Strategic Plan: The consultation phase for the 2030 Strategic Plan closed recently. Key focus areas include financial sustainability, efficiency, effectiveness, and leveraging emerging technologies like artificial intelligence. The EUIPO aims to address challenges such as political and economic volatility and expanding competencies, including geographical indications. New Competencies and SEPs: The EUIPO may soon handle non-binding essentiality checks for standard essential patents (SEPs) if the proposed regulation is approved. João Negrão emphasized that the EUIPO will adapt and implement these new competencies using their established project management approach. Mediation Center: The EUIPO launched a new mediation center for IP disputes in November 2023. Mediation and conciliation have been offered by the Boards of Appeal since 2011. The aim is to expand these services to first-instance proceedings to provide cost-effective, timely alternatives to traditional dispute resolution. 30th Anniversary and Achievements: Celebrating its 30th anniversary, the EUIPO has grown from a small office to one with 1,200 staff members, protecting almost five million trademarks and designs. Significant achievements include the effective protection of IP rights and the establishment of the Observatory on IP Infringements. DesignEuropa Awards: The DesignEuropa Awards, now held annually, recognize excellence in design across several categories, including industry, small and emerging companies, lifetime achievement, and young designers. The awards aim to promote the design system and celebrate outstanding work in the field. Geographical Indications: The EUIPO has taken on the competence for geographical indications for craft and industrial products. This new IP right aims to protect local products, promote quality recognition, and support local producers and regions in Europe. International Cooperation: The EUIPO is expanding its international cooperation with countries like Ukraine, Moldova, and Georgia, aiming to harmonize IP systems globally. These efforts support European businesses by ensuring robust, predictable IP systems in these regions. Future Goals: João Negrão’s personal goal is to use his extensive experience to contribute to the EUIPO’s further development. The focus will be on strategic planning, cooperation with national and international IP offices, and addressing issues such as IP infringements and underrepresentation of women in the IP system. Overall, the interview highlighted the EUIPO’s ongoing efforts to improve the IP system, embrace new competencies and technologies, and support stakeholders through effective implementation and international cooperation. Here is a transcript: Rolf Claessen: Today&#8217;s interview guest is the executive director of the EUIPO, João Negrão. Before this role, he served as the president of the boards of appeal at the EUIPO. João has been with the EUIPO for 14 years after having worked at INPI, the National Institute of Industrial Property of Portugal, for nine years. Thank you very much for being here. João Negrão: Thank you very much for having me, Rolf. It&#8217;s a pleasure. Rolf Claessen: The consultation phase for the EUIPO Strategic Plan 2030 closed on February 16th. What are the main topics of the Strategic Plan, and what are the next steps? João Negrão: Yes, indeed. As you probably know, the EUIPO has developed incredibly since 1994. We are now celebrating our 30th anniversary. While we have many achievements to be proud of, there is always room for improvement. We&#8217;re interested in looking to the future to see where we can make positive changes. We face challenges, such as the current political and economic situation, which generates levels of uncertainty and volatility regarding the demand for trademarks, designs, and now geographical indications. Since we are a self-funded organization, we need to be very careful in planning our activities and implementing our budget. Financial sustainability, efficiency, and effectiveness are key topics within the new strategic plan. Emerging technologies, such as artificial intelligence, will also significantly impact our work and the IP system overall. We need to leverage these technologies to improve our efficiency and help our users apply for and receive better results in a timely manner. Another challenge is the expansion of the IP system in Europe, with new competencies being entrusted to the EUIPO, such as geographical indications. We need to implement these competencies excellently to continue providing high-quality services. Additionally, addressing IP infringements remains crucial, especially with the rise of new technologies and virtual goods. Rolf Claessen: Thank you for mentioning the new competencies of the EUIPO. I want to discuss a potential new competency. On April 27, 2023, the new commission published its proposal for a regulation on standard essential patents (SEPs). The European Parliament voted in favor on April 28. If the council approves, the EUIPO might handle non-binding essentiality checks for SEPs and mandatory mediation before litigation. Given that the EUIPO has limited experience with patents, how do you think the office can find enough experts with SEP experience, and how do you see this new development? João Negrão: We should follow the methodology we&#8217;ve used since the EUIPO&#8217;s establishment in 1994. We support the commission and legislators with our expertise and then implement their decisions. We&#8217;ve successfully taken on trademarks, designs, and now geographical indications. If entrusted with SEPs, we will use a project management approach to identify gaps and needs and act accordingly. It&#8217;s still early to say how this will unfold, but we will ensure effective implementation as always. Rolf Claessen: Approximately 95% of SEP-related licensing is settled through negotiation, with only a small percentage going to court. Given the existing guidelines from the European Court of Justice, why is there a need for additional regulation? João Negrão: The decision for additional regulation lies with the European Commission and legislators. Our role is to implement whatever they decide. We have full trust in their decisions and believe they will be beneficial for Europe. Rolf Claessen: Let&#8217;s switch topics. The EUIPO launched a new mediation center for IP in November last year. What has been your experience so far, and what benefits does this offer to IP owners compared to other entities like WIPO? João Negrão: The mediation center was indeed launched last November. However, the Boards of Appeal have offered mediation and conciliation since 2011, with positive but limited results. Expanding mediation to all proceedings at the EUIPO, including first instances, provides an additional, complementary way to resolve disputes. We plan to offer mediation actively after the cooling-off period in oppositions, ensuring that we add value without disrupting what already works well. Rolf Claessen: As a practitioner, when is mediation offered? Is it actively mentioned, or do parties have to decide themselves? João Negrão: Currently, in the Boards of Appeal, mediation is mentioned when an appeal is filed. For oppositions, we plan to offer it actively after the cooling-off period if no agreement is reached. This approach aims to add value without disturbing the existing, effective cooling-off system. Rolf Claessen: 2024 marks the 30th anniversary of the EUIPO. What have been the most important achievements of the past 30 years, and what can we expect in the future? João Negrão: Celebrating our 30th anniversary, we reflect on our journey from a small office to one with 1,200 staff members. We&#8217;ve provided effective protection for almost five million trademarks and designs, impacting innovation significantly. Looking forward, we will implement new competencies like geographical indications and continue to fight IP infringements through our observatory. Additionally, we will maintain our cooperation efforts to harmonize the IP system globally, supporting European businesses. Rolf Claessen: The EUIPO has been managing designs since 2003 and organizes the DesignEuropa Awards to promote talent and innovation. What are the award categories, and what are the criteria? João Negrão: The DesignEuropa Awards, now annual, recognize excellence in design across several categories: industry, small and emerging companies, lifetime achievement, and a new category for young designers. This event celebrates the remarkable work of designers in Europe and aims to engage the next generation. We see an increasing usage of the design system, indicating that our promotion efforts are effective. The awards will take place in Riga, Latvia, this year. Rolf Claessen: I will post a link to the DesignEuropa Awards application form in the show notes. Finally, what are your personal main goals for the EUIPO and for yourself in the coming years? João Negrão: My personal goal is to contribute to the EUIPO&#8217;s further development and ensure it continues playing a relevant role in the IP and innovation system. Drawing on my experience from various roles within national and international IP organizations, I aim to support the EUIPO in its next strategic cycle. Collaborating with talented colleagues at the EUIPO and in the broader IP community, I hope to effect positive change and improve the IP system for all stakeholders. Rolf Claessen: Thank you so much for the great interview and your time. I am very impressed. Thank you for being on IP Fridays. João Negrão: Thank you very much, Rolf. It was a pleasure.

Meet us for the 10th Anniversary in Atlanta in the 20th May 2024 at 6 pm! We only give away 20 tickets so it will be a very exclusive event! Reserve your ticket here! https://ipfridays.com/meetup

We are celebrating the 10th birthday of our podcast IP Fridays! Join us in Atlanta on Monday evening, the 20th May 2024 and meet us in person! Details will be posted on our website ipfridays.com and on social media! &nbsp;We had started the podcast at the 2014 INTA Annual Meeting in Hongkong so we thought it would be a good idea to celebrate the 10th anniversary also during an INTA Annual Meeting! In this episode of the IP Fridays podcast, we were joined by three experts from Wisdom International Patent and Law Office in Taiwan: founder George J.H. Huang, patent attorney Sandy Huang, and international affairs manager Zoe Kwong. The discussion began with an overview of the latest guidelines for computer software patents in Taiwan, which now require that the software significantly utilizes hardware resources to be eligible for patent protection. This marks a departure from older guidelines and incorporates elements from Japanese regulations. The experts also compared patent eligibility criteria between Taiwan and China, noting significant differences. In China, the focus is on using technical means to solve technical problems according to natural laws, which can often lead to challenges in proving the technical nature of inventions, particularly those that might be considered as business methods or mathematical rules. Moving to trademarks, it was noted that Taiwan operates under a &#8220;first to file&#8221; system and does not require evidence of use at the time of application. This is particularly important for overseas applicants to understand, as early filing can prevent issues with trademark squatting. Taiwan does not participate in the Madrid Protocol, so international applicants must file directly in Taiwan. Recent legislative updates were also covered, highlighting the new accelerated examination process for trademarks in Taiwan, which can significantly shorten the registration timeline. However, this process is best suited for clear-cut cases, as complex or disputed marks may still face lengthy examinations. The episode concluded with a look at changes to the trademark agent system in Taiwan, which now requires agents to pass an exam and undergo annual training to ensure they maintain a high standard of professional knowledge. Overall, the podcast provided a comprehensive look into the intellectual property landscape in Taiwan, offering key insights and strategic advice for navigating patent and trademark issues in the region. Here is the full transcript: We have three guests today on the IP Friday&#8217;s podcast from Wisdom International Patent and Law Office, a law firm located in Taiwan. They are Mr. George J.H. Huang, Ms. Sandy Huang, and Ms. Zoe Kwong. George J.H. Huang is the founder of Wisdom International Patent and Law Office. Having over 27 years of experience in the intellectual property field, George is skilled at handling patent, trademark, and design matters, from drafting and prosecution to cancellation opposition and other contentious work. George has also been individually ranked and recognized as a recommended individual in the IAM Patent 1000, the WTR 1000, and the Asia IP Rankings. He is the author of two Japanese books, Taiwan Trademark Practice Guide and Taiwan Patent Practice Guide, which are highly praised by in-house counsels and critics. Sandy Huang graduated from the National Taiwan University with a master&#8217;s degree in chemical engineering. She is a registered patent attorney and her practice focuses on patent drafting, prosecution, disputes, and invalidation in various countries, particularly in the areas of chemical engineering, mechanics, and semiconductors. Sandy also has extensive experience in patent search, freedom to operate analysis, and patent portfolio management. And finally, Zoe Kwong is the firm&#8217;s international affairs manager. Welcome George, Sandy, and Zoey to the IP Friday&#8217;s podcast. Thank you. &nbsp;Great, so let&#8217;s kick it off with our first question today. Could you introduce to our listeners the current regulations on the eligibility of computer software patents in Taiwan? Yes, sure. Our patent examination guidelines for computer software has been revised in 2021, and the criteria on determining eligibility, clarity, and invented staff was revised a lot. Regarding the eligibility, the old guidelines in Taiwan incorporated some regulations of EPO and USPTO, considering whether the invention is nothing more than the idea of doing that thing on a computer, which might be the old opinions of the USPTO before 2014, and whether there is further technical effect going beyond the normal physical interactions between the program and the computer. But the new guideline in Taiwan is very different now. It introduced Japanese regulations and determined whether the information processing via computer software is realized through the utilization of hardware resources. So under the current regulations in Taiwan, the most important part to comply with the eligibility requirements is to recite a substantial information processing in a claim, and state in a claim that the information processing is realized by the cooperation between computer software and hardware resources. And what about China? Can you comment on that? Does Taiwan and China use the same language, and are there similar regulations? Now, China&#8217;s regulation is quite different from Taiwan. China adopts a three-element test to determine whether the invention uses technical means to solve a technical problem and achieve the technical effects complying with the laws of nature. For example, if the invention itself solves a certain technical problem utilizing laws of nature, but not utilizing rules or methods set by human mental activities, and obtains technical effects other than effects produced by algorithm or business method itself, the invention meets the requirements of eligibility in China. But on the other hand, under current practice in China, whether the problem to be solved is technical is an important part. It is quite common that the patent examiner deems the problem to be solved is not technical. It is merely a business method or a math rule, and then directly considers the invention ineligible. So in China, it would be very important to emphasize why the problem to be solved is technical in the specification. Now, given that Taiwan and China have quite different regulations, what would be your suggestion for patent applicants if they wish to obtain patent rights in both Taiwan and China with one application? Can that be done? Oh yeah, in my opinion. Though the regulations in Taiwan and China are quite different, the concepts are actually similar. They both focus on whether the claimed invention utilizes hardware to execute software in order to solve a technical problem. So I will suggest the applicants to fully illustrate application scenarios and the technical problems present in the scenarios when drafting the specification. And applicants should also describe some examples in the specification to demonstrate how the algorithm is combined with various application scenarios and how to achieve technical effects after the combination. Then the technical means should also be emphasized in the claims. So the eligibility requirements in both of Taiwan and China may be fulfilled. And on the other hand, as we emphasize the technical means, technical problems and the technical effects a lot in the specification for the eligibility, it would also help a lot for the inventive step of the patent application in both of Taiwan and China. Let me ask you a practical question. Do you ever run into situations where you&#8217;re able to get a patent registered in Taiwan but not in China? Does that ever happen where you only get it in one country? So for our experience, we didn&#8217;t have that kind of experience since maybe the application might face some problems in China and they have to overcome more office actions in China. But yeah, maybe the claims obtained may be different from in Taiwan and China, but we can obtain the patent rights in both of China and all of Taiwan and China. Okay. Let&#8217;s switch gears a little bit and talk about trademarks, which is very near and dear to my heart. Are there any points to note for overseas applicants who would like to get a trademark registered in Taiwan? I think the very first thing would be Taiwan adopts a versatile file system, which is different from US. That trademark rights go to versatile use. We recommend that applicants should file a trademark application in Taiwan as soon as they decide on the brand strategy. Also, Taiwan is not a party to the Madrid protocol. However, applicants may claim rights of priority based on an earlier application filed in one of the WTO member status within six months. The second point to note would be trademark watching is quite important to foreign brand owners. Us applicants are not required to submit evidence of trademark use at a time of filing applications. It is possible that a third party register, a trademark that is identical or similar to yours. What&#8217;s more, it becomes more difficult to invalidate the trademark if the trademark registration is older than five years. Similar to many countries, there are three ways to remove the trademark registration at the Taiwan IP office, which are opposition, invalidation and the cancellation. The opposition period is three months after a trademark is registered. A request for invalidation filed within five years may rely on any grounds. And for non-use cancellation, it is possible to cancel a trademark that has not been used for three years. One of the biggest challenges is that brand owners sometimes discover the layer trademark were registered by squatters after five years. In that case, the brand owner must prove that the disputed mark was obtained in bad faith and the earlier trademark is a well-known trademark. Therefore, trademark watching would be helpful to brand owners to stay ahead of potential infringement. Yes, that is a very important point about trademark watching. I assume George, you do that for your clients. You regularly review trademark watch notices at your firm. Yes. Yeah. Now let me ask you a question about what we call the well-known trademark status. How does one actually obtain a well-known trademark status in Taiwan? And why is it important? I think first of all, there is no official well-known mark registry in Taiwan. If the trademark holder has not successfully proved their trademark is famous in Taiwan in previous proceedings, they will need to provide the evidence of use. From our past experience, we noticed that trademark owners have a difficult time improving their traumas are well-known in Taiwan. All they do not know what should be provided to the Taiwan IP office. The owner should provide sufficient and objective evidence to prove that the trademark has widespread reputation in Taiwan and has been generally recognized by relevant enterprises or consumers. Usually the Taiwan IP office would accept the invoices with time stamp and the trademark advertisements and the amount spent on advertisements and the promotions import and export the decorations. The product itself and et cetera. The key lies in the lens of time of the trademark being used in Taiwan and the amount of money spent on promotions, especially the lens of time is the most important. For example, we assist a food product brand to prove their unregistered trademark is famous by submitting evidence that they have been selling in Taiwan supermarkets for a few years and the participator in food export every year. At the end, we succeeded with successfully canceled the third party marks but for a brand, for a newer brand. The brand owner will need to submit stronger evidence to prove the large volume of the advertisement. So late the trademark has reached the level of being famous in such a short period of time. Thank you. &nbsp;Very interesting, George. Thank you very much for that information. Let&#8217;s talk about some of the recent changes in the law. Are there any new updates on Taiwan trademark laws and regulations that our listeners should know about? Yes, in fact, the Taiwan legislature just passed the amendments of the trademark act in May, 2023. So there are four major changes. The first is the introduction of accelerated examination for trademark applications. The second is the trademark agent management system. The third is the addition of conditions of when nominated fair use is considered non-inversion. And the fourth is simplifying customs detention process. So now trademark holder can determine whether there&#8217;s infringement based on the photos on the customs new online platform. Another updates would be starting from January, the IPO provides an option of electronic trademark and patent certificates. So now applicants may now opt for electronic certificates in Taiwan. Interesting. And what, tell me more about the newly introduced trademark accelerated examination. Is there anything that applicants need to do? What&#8217;s the process exactly? Oh, yes. So currently in Taiwan, it takes around eight months for the IB office to issue a first action. We actually have a fast track examination system in place starting from 2020. Although it&#8217;s free of charge and you need to fulfill certain documentary requirements. The examinations do take around five to six months with the fast track system. So it&#8217;s actually quite long. The new accelerated examination could effectively shorten the examination period to two months. In the new system, the applicant will need to pay an acceleration fee of 6,000 Taiwanese dollars, which is approximately 200 US dollars and submit reasons and evidence to prove that the applicant has urgent needs to obtain trademark rights. So if a company wishes to register the trademark ASAP, we highly recommend going for the accelerated examination. For example, the owner already discovered in printments in Taiwan, the owner is negotiating a licensing agreement, all the products will be launched in Taiwan very soon. However, it&#8217;s not always recommended to opt for accelerated examination. For example, if the descriptions of goods and services are too broad or unclear, the trademark applied for is a non-traditional trademark like a 3D trademark or color trademark, or the trademark is already in dispute. In such cases, the IPO would issue a notification after the applicant to respond. The application process would then take longer and the benefits from reduced examination period will be wasted. So the applicants may think of the pros and cons of applying for the accelerated examination in Taiwan. Very interesting to know about that new system. And I&#8217;m sure that will be helpful for many applicants who are trying to get their registrations issued quicker in Taiwan. So we&#8217;re gonna have our last question today. I were nearing the end of today&#8217;s podcast and that relates to the issue of being a trademark agent. Many foreign applicants do not realize that currently any person can be a trademark agent. What are the key differences in the new system? So in fact, the IPO now has no restrictions on individuals whom I practice before the IPO on trademark matters. At present, any individual with a local domicile address can represent trademark applicant resulting in accurate submissions. So this is very bad for an applicant and applicants too. The new acts finally introduces a trademark agent management system to ensure trademark practitioners who are equipped with professional knowledge of trademark shall apply for registration before the IB office. Under the new system, the trademark agent must have passed a trademark agent exam organized by the government and attend training sessions every year. The new system is expected to protect the interests of trademark applicants and right holders best. Very good. Well, I wanna thank you George, Sandy and Zoe for spending time with us today on the IP Friday podcast. Very interesting indeed. And thank you once again. Thank you. Thank you. Thank you very much. Find out more about Wisdom International Patent &amp; Law Office here https://www.wisdomlaw.com.tw/m/home.php https://www.wisdomlaw.com.tw/m/412-1596-12151.php?Lang=en

Clemens Heusch Interview with Vice President and Head of Global Litigation and Disputes at Nokia Clemens Heusch &#8211; Patent Battle Nokia vs. Oppo &#8211; Unified Patent Court &#8211; Standard Essential Patents at the EUIPO &#8211; Episode 150 &#8211; IP Fridays

Celeste Butera Challenges Enforcing Trademarks Online and Cybersquatting &#8211; Interview with Celeste Butera &#8211; UPC Caseload &#8211; USPTO AI Guidance &#8211; IP Fridays &#8211; Episode 149 Celeste Butera Profile

Interview With the Very Busy UPC Judge András Kupecz &#8211; Get the Perspective of a Judge at the Unified Patent Court &#8211; EU Lawmakers Vote for Rules Setting Up a Body at the EUIPO To Set SEP Royalty Rates – IP Fridays – Episode 148

Steven Adkins Interview With Steven Adkins &#8211; Using the ITC to Your Advantage &#8211; Section 337 Investigations &#8211; UPC Statistics &#8211; Episode 147 &#8211; IP Fridays Find more information about Steven Adkins here: https://btlaw.com/en/people/steve-adkins https://www.linkedin.com/in/steve-adkins-2228841a/

Interview With Mark Vallone &#8211; Chief Patent Counsel of IBM Americas &#8211; Patent Strategy &#8211; UPC &#8211; AI as an Inventor &#8211; Lessons Learned &#8211; Challenges &#8211; IP Fridays Podcast &#8211; Episode 146

Interview With Jeff Kichaven About Mediation in Intellectual Property &#8211; Trademarks YEWS of Kanye West &#8211; Decisions G1/22 and G2/22 of the EBA of the EPO &#8211; Trademarks for Virtual Goods Shot Down by the EUIPO &#8211; IP Fridays &#8211; Episode 145 You can find out more about Jeff Kichaven of Jeff Kichaven Commercial Mediation on his website and his LinkedIn profile.

April 13, 2022 &#8211; Alexandria, VA &#8211; Portrait of Kathi Vidal, Under Secretary of Commerce for Intellectual Property and Director of the United States Patent and Trademark Office (USPTO). (Photo by/Jay Premack) Interview With Under Secretary of Commerce for Intellectual Property and Director of the United States Patent and Trademark Office Kathi Vidal &#8211; IP Fridays &#8211; Episode 144

Interview with Former USPTO Director David Kappos &#8211; Patent Eligibility &#8211; Addressing Arguments of Patent Critics &#8211; The EUIPO Moving Into Patents &#8211; Episode 143 &#8211; IP Fridays

Interview with Michael Atleson of the FTC About Potential Online Harms Using AI and by Misleading Online Activities &#8211; Patent Quality at the EPO &#8211; Statistics of the UPC &#8211; Episode 142 &#8211; Podcast IP Fridays Article by Martin Wilming Productivity vs Quality at the EPO: A rare glimpse behind the curtain that&#8217;s worrying | FPC Review (patentlitigation.ch) Links and Websites mentioned in the interview with Michael Atleson https://www.ftc.gov/about-ftc/bureaus-offices/office-technology https://www.ftc.gov/business-guidance/blog/2023/05/luring-test-ai-engineering-consumer-trust https://www.ftc.gov/business-guidance/blog/2023/03/chatbots-deepfakes-voice-clones-ai-deception-sale https://www.ftc.gov/business-guidance/blog/2023/02/keep-your-ai-claims-check https://www.ftc.gov/business-guidance/blog/2021/04/aiming-truth-fairness-equity-your-companys-use-ai https://www.nytimes.com/2023/05/03/opinion/ai-lina-khan-ftc-technology.html https://www.ftc.gov/news-events/news/press-releases/2023/04/ftc-chair-khan-officials-doj-cfpb-eeoc-release-joint-statement-ai https://www.ftc.gov/reports/combatting-online-harms-through-innovation

Dr. Klaus Grabinski Interview with Klaus Grabinski &#8211; President of the Court of Appeal of the Unified Patent Court System &#8211; Episode 141 &#8211; Podcast IP Fridays Recommended article: Patent Infringement in Germany and Europe &#8211; a Detailed Guide (2023)

NFT Trademarks &#8211; AI Logo Search &#8211; Interview with Matthew Rubin &#8211; IP Fridays &#8211; Episode 140

Jomarie B. Fredericks Interview With INTA President Jomarie B. Fredericks &#8211; INTA Annual Meeting in Singapore &#8211; INTA Goals and Projects This Year &#8211; IP Fridays &#8211; Episode 139

Gabriele Mohsler Interview with Gabriele Mohsler &#8211; VP Patent Development at Ericsson &#8211; Industry Patent Quality Charter &#8211; Unified Patent Court &#8211; Protecting AI Inventions &#8211; Patent Pools &#8211; SEPs &#8211; IP Fridays &#8211; Episode 138 Linkedin Profile of Gabriele Mohsler Industry Patent Quality Charter Recommended article: Patent Infringement in Germany and Europe &#8211; a Detailed Guide (2023)

Daniel A. Scola, Jr. A Conversation with Daniel A. Scola, Jr. About Practical Trademark Tips and Strategies&nbsp;&#8211; Ken and Rolf Attending the INTA Annual Meeting Meet Us There &#8211; IP Fridays &#8211; Episode 137 Bio of Daniel A. Scola, Jr. LinkedIn

Ralf Uhrich Interview with Ralf Uhrich &#8211; Senior Patent Litigation Counsel of Google Overseeing All Patent Litigation for Google in Europe &#8211; USPTO Trademark Rules Update with Stacey Kalamaras &#8211; IP Fridays &#8211; Episode 136 Ralf Uhrich auf Linkedin https://www.linkedin.com/in/ralfuhrich/ USPTO Summary: https://www.uspto.gov/trademarks/laws/2020-modernization-act/new-response-deadline-applications Exam Guide: https://www.uspto.gov/sites/default/files/documents/TM-ExamGuide-2-22.pdf TMA: https://www.federalregister.gov/documents/2022/10/13/2022-22217/changes-to-implement-provisions-of-the-trademark-modernization-act-of-2020-delay-of-effective-date Stacey Kalamaras www.trademarkabilities.com

Jim Gastle and Grant Peters Virtual Patent Marking &#8211; Interview With Jim Gastle and Grant Peters &#8211; UPC Updates &#8211; Episode 135 &#8211; IP Fridays http://docker.kof.ethz.ch:8084/patent-explorer/ Presentation Virtual Patent Marking http://gastle.com/ https://btlaw.com/en/people/grant-peters Terrifio

Beat Weibel Industry Patent Quality Charter &#8211; Interview with Beat Weibel of Siemens &#8211; Unified Patent Court Updates Industry Patent Quality Charter Update: Industry Patent Quality Charter Recommended article: Patent Infringement in Germany and Europe &#8211; a Detailed Guide (2023)

Interview with Philipp von Kapff &#8211; Member of the Boards of Appeal at the EUIPO &#8211; Evergreening of Trademarks &#8211; Metaverse Trademarks &#8211; Scope of an Appeal &#8211; IP Fridays &#8211; Episode 133 Linkedin Profile of Philipp von Kapff JULES GENTS (fig.) / Joules (R 1123/2018-1) Decision The book Concise European Trademark Law

Juli Saitz Expert Interview on Damages and Royalties with Juli Saitz &#8211; EUIPO Initiviative Ideas Powered for Business &#8211; Episode 132 of IP Fridays Link to the Linkedin Profile of Juli Saitz Lin to Ideas Powered for Business by the EUIPO

Grant Peters The Metaverse and Intellectual Property &#8211; Interview with Grant Peters &#8211; IP Fridays &#8211; Episode 131 Find the profile of Grant Peters here

Dr. Hubertus Schacht Interview About the Nagoya Protocol &#8211; Implications for Enforcement of Patents and Patentability &#8211; Interview with Patent Judge Dr. Hubertus Schacht &#8211; Episode 130 &#8211; IP Fridays Please note that this interview only reflects the personal views of Dr. Hubertus Schacht and does not represent the legal opinion of the court. Hubertus Schacht, Erfinder oder Biopirat,&nbsp;GRUR&nbsp;2020, 133 Hubertus Schacht, 33 Biotechnology Report 115, Number 3, 2014 Vorte for the Inventor Award 2022: https://popular-prize.epo.org/

Filip De Corte SPCs for Crop Protection Products &#8211; Interview with Filip De Corte &#8211; SPCs and the UPC &#8211; EPO New Unitary Patent Guide &#8211; IP Fridays &#8211; Episode 129 Linkedin Profile of Filip De Corte Unitary Patent Guide of the EPO

Prof. Dr. Aloys Hüttermann The Unified Patent Court Will Open Doors &#8211; Everything You Need to Know &#8211; Interview with Aloys Hüttermann &#8211; IP Issues in Russia &#8211; IP Fridays &#8211; Episode 128 Profile of Prof. Dr. Aloys Hüttermann

Jason Blair Sound Trademarks &#8211; Interview with Jason Blair &#8211; China Clash Over Patent Licenses &#8211; AI Not Copyright Author &#8211; Episode 127 &#8211; IP Fridays

Beat Weibel Interview with Beat Weibel &#8211; Chief IP Counsel Siemens &#8211; Patent Quality &#8211; Patent Trolls &#8211; Unified Patent Court &#8211; Episode 126 &#8211; IP Fridays Podcast Recommended article: Patent Infringement in Germany and Europe &#8211; a Detailed Guide (2023)

Damien Riehl All the Music Project &#8211; Copyright Claims &#8211; Interview with Damien Riehl &#8211; Holiday Edition of IP Fridays &#8211; Episode 125 All the Music Website www.allthemusic.info Schola Diffusa Playlist