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

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 w

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

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 wil

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 create

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

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: james.malackowski@jsheld.com 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

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:W

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 compou

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

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’ 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’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’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’m the General Counsel for Brands, Marketing Properties, Licensing, and Anti-Counterfeiting at Nestlé. And you’re listening to IP Fridays. Rolf Claessen: Today’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’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’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 “Navigating Brand Restrictions.” 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 restrictio

Bio of Tina Dorr Bio of Loretta Freeman In the latest episode of the IP Friday’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&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’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’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&M University, and a JD from the William Mitchell College of Law. Kenneth Suzan: Welcome, Tina and Loretta, to the IP Friday’s podcast. Tina Dorr: Thanks, Ken. Thanks for having us. Loretta Freeman: Thank you. Thanks so much. Kenneth Suzan: So let’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’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’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’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’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’s either a second or third career, right? But that’s certainly true for me because I really didn’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’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, “Wow, this is something else I can do.” 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’s just so complex. I mean, there’s just so many things that you can do and see as an IP attorney because IP law is so varied. There’s just a lot of things that you can do, either on the patent prosecution side or the litigation side; there’s just a whole gamut there. And so I would just say, even if you don’t have a technical background, if you’re not in the sciences, if you don’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’re gonna jump now into the substance of today’s podcast, which is in the area of patent marking and virtual patent marking. I know we’ve touched upon this topic in another podcast episode, but we’re gonna go deeper into those issues. We’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’s not something that’s required by patent owners at all. It’s optional, but by statute, it’s something that gives patent owners the option to provide what’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

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’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’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’ve created guides, webinars, and training materials that are accessible to everyone. Additionally, we’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’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’s important to have a comprehensive IP strategy that covers all aspects of protection and enforcement. Rolf Claessen: Thank you, Michelle. It’s been a pleasure talking with you. Your insights and expertise are incredibly valuable to our listeners. Michelle Sara King: Thank you, Rolf. I’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’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’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’ 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’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’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’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’s educational materials to assist law enforcement in fighting intellectual property crimes. Welcome Angelo to the IP Friday’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’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’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’s a great question, Ken. And I don’t want to date myself. And I don’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’ve got bigger and faster ships, containerized cargo, air cargo, express consignment cargo. And so what’s happened is that in one way or another, it’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’s dealing with and how it’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’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’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’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’s value? You know, it’s all relative. If they have a thousand counterfeit watches, well, they’re only worth a penny each, right? They’re gonna value them very low or phone cases or any manner of good can be undervalued. So that’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’ve got people using the system to evade duty. You’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’re gonna look at in the de minimis arena, 1.3 to 1.5 billion packages entering the US. Wow, that’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’ve got that many packages, you can’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’ve been tracking? Well, now we’ve talked about it in terms of skipping out on duty. We’ve talked about it in terms of trying to smuggle counterfeit goods into the country. Unfortunately, it’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’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’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’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’s gonna continue to be the case until it’s brought under control, until the

In this interview with Rolf Claessen on the IP Fridays podcast, João Negrão, the executive director of the EUIPO, discussed the office’s recent developments and future plans. Negrão highlighted the conclusion of the consultation phase for the EUIPO’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’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’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’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’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’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’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’s efforts to improve the IP system, embrace new competencies and technologies, and support stakeholders through effective implementation and international cooperation. Key Takeaways: EUIPO’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’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’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’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’ve used since the EUIPO’s establishment in 1994. We support the commission and legislators with our expertise and then implement their decisions. We’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’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’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 medi

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!  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 “first to file” 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’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’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’s international affairs manager. Welcome George, Sandy, and Zoey to the IP Friday’s podcast. Thank you.  Great, so let’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’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’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’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’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’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. T