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

Episodios

• 
  Long-Arm Jurisdiction in Europe – Interview With the Mastermind Behind the BSH v. Electrolux Decision of the ECJ Dr. Ernst-Peter Heilein – His View on Follow-Up Cases Like Fujifilm, Regeneron, and Onesta – IP Fridays – Episode 177 31.07.2026 38m

  I am Rolf Claessen and my co-host Ken Suzan and I are welcoming you to episode 177 of our podcast IP Fridays! Today’s interview guest is Dr. Ernst-Peter Heilein, who is a German and European patent attorney, the founder of HEILEIN IP LAW, and a long-time IP leader at BSH Home Appliances. He is the mastermind behind the BSH v. Electrolux decision of the European Court of Justice about long-arm jurisdiction in Europe that has the whole patent world stirring in Europe at the moment! But before we jump into this fascinating interview, I have news for you! Emboline v. AorticLab (UPC Court of Appeal) The UPC Court of Appeal has clarified for the first time how a conditional revocation counterclaim should be handled, in a dispute over Emboline’s embolic protection patent EP 2 129 425 against AorticLab. A defendant can validly make its revocation counterclaim conditional on infringement being found first, meaning no ruling on the counterclaim is needed if the infringement claim fails, as the Munich Local Division had held. The Court of Appeal also closed a related gap: if the claimant appeals a non-infringement finding, the counterclaimant may conditionally appeal the unresolved counterclaim too. AorticLab missed its own appeal deadline and can now at best seek re-establishment of rights, while Emboline has already appealed the non-infringement finding. FujiFilm v. Kodak (UPC Court of Appeal) Following the closely watched long-arm jurisdiction ruling of June 2, the UPC Court of Appeal, chaired by Rian Kalden, has now granted FujiFilm an injunction against Kodak in a second proceeding. The Court upheld the limited printing plate patent and found that Kodak’s Sonora XTRA 3 plate infringes it. Kodak can no longer sell or use that plate in Germany. OpenAI v. EUIPO (General Court of the EU, T-555/25) The General Court’s Eighth Chamber dismissed OpenAI’s action against the EUIPO decision to partially cancel the OPENAI trademark. The partial refusal for classes 9, 42, and 45 rests decisively on Article 7(1)(c) EUTMR, the descriptiveness ground. For a significant part of the English-speaking public, “OPENAI” directly conveys that the goods or services are provided using freely accessible artificial intelligence. Dental Monitoring v. Align Technology (CAFC) On July 7, 2026, the Federal Circuit confirmed that AI and deep-learning patent claims covering dental image analysis are not patent-eligible under Section 101. Simply training a “deep learning device” on a specific dataset does not amount to a patent-eligible technical solution. Publisher v. Google (Munich I Regional Court) The Munich I Regional Court issued a preliminary injunction barring Google from spreading false factual claims about a publishing company in its AI Overviews. A search query combining the company’s name with the German term for “fraud scheme” had triggered an AI-generated summary containing entirely fabricated accusations of subscription traps. KPN v. Oppo (Federal Court of Justice, X ZR 103/24) On July 1, the Federal Court of Justice dismissed KPN’s appeal against the revocation of a central claim of its LTE patent EP 2 291 033. Oppo had successfully challenged the claim, leaving KPN’s infringement action against Oppo’s German distribution entity without a legal basis for now. BSH v. Electrolux: What the ECJ Ruling Means for Your Company’s Patent Enforcement Strategy A vacuum cleaner from 2001 has reshaped the European patent landscape. That sounds like an overstatement. It isn’t. For IP Fridays, I spoke with Dr. Ernst-Peter Heilein, founder of HEILEIN IP LAW and long-time Senior IP Leader at BSH Home Appliances. He guided the case BSH v. Electrolux from its first strategic idea all the way to the Grand Chamber of the European Court of Justice, a case that earned the 2025 Managing IP Award as “Europe Impact Case of the Year.” For managing directors, IP heads, and R&D leaders at German Mittelstand companies, this case is not a legal footnote. It changes where you can enforce your patents, and it changes where you yourself can be sued if your company operates across several European markets. That is what this article is about. Background: How a Patent Dispute Became an ECJ Case The invention dates back to 2001 and concerns a new vacuum cleaner technology. In 2006, BSH identified what it believed was an unauthorized use of that invention and contacted Electrolux to clarify the situation. The European patent was granted in 2009 and validated in a number of European countries. Nobody, Heilein says, could have imagined at the time that this matter would eventually reach the Grand Chamber of the European Court of Justice almost twenty years later. In late 2018, BSH successfully defended the patent through opposition and appeal proceedings before the European Patent Office. In 2019, the Higher Regional Court of Düsseldorf found that certain Electrolux vacuum cleaner models infringed the patent. A classic milestone win, the kind that occurs regularly in patent practice. Except the patent had been validated in many countries. Winning in Germany did not solve the enforcement problem everywhere else. Heilein describes the starting point in very concrete terms: how do you enforce a patent that exists in many countries without filing a separate lawsuit in every single one? And how do you prevent claims from becoming time-barred while you work that out? Running parallel proceedings in multiple countries is not just legally complex. It consumes time, personnel, and money that a mid-sized company rarely has in that quantity to spare. This is exactly where the real value of this case for you begins. From the outset, this was never an academic debate about jurisdiction. It was a question that every company holding rights in more than one country eventually faces: how do you enforce your rights efficiently without burning your budget on ten parallel proceedings? Brussels Ia Regulation: The Underrated Article 4 While searching for a solution, the BSH team came across Article 4 of the Brussels Ia Regulation. The underlying idea is simple: a person can generally be sued in the country where that person is based. In the BSH case, that pointed toward the Swedish home court, because Electrolux is headquartered in Stockholm. For a long time, this rule played no real role in patent practice. The widely held view was that cross-border patent litigation in Europe was effectively dead the moment a defendant challenged the validity of the patent. Anyone wanting to enforce a patent across several countries appeared to have no choice but to litigate country by country. Heilein and his team questioned that assumption instead of simply accepting it. This is the point I find most instructive: challenging accepted assumptions in your own field is often the difference between a standard solution and a strategic one. In 2020, the team decided to file the action in Sweden, aware that they were looking at a possibility, not a guarantee. Cross-Border Enforcement: The Three Questions Referred to Luxembourg After Electrolux challenged the validity of the patents, the Swedish home court declared itself not competent to hear the case. BSH appealed, and the Swedish Court of Appeal agreed to refer three questions to the European Court of Justice. The first question addressed the core problem: does a home court that would otherwise have jurisdiction over an infringement claim lose that jurisdiction simply because the defendant argues the patent is invalid? The second question concerned a feature common to many legal systems, including Germany’s, where infringement and validity are decided in separate proceedings. The third question originally concerned Turkey. Today, most people immediately think of the United Kingdom, and some even think of US patents. Originally, the question was simpler: do the same jurisdiction rules apply to patents from countries outside the European Union? The fact that the ECJ first assigned the case to a Chamber of seven judges and later referred it to the Grand Chamber of 15 judges already signaled how much weight the Court placed on these questions. The Judgment: What the ECJ Actually Decided A home court does not automatically lose jurisdiction simply because the defendant argues the patent is invalid. For many years, the opposite was widely assumed to be settled law. The ECJ made clear that this reading was too narrow. The court where the defendant is based can generally continue to hear the infringement case. One point matters for how you read this ruling: questions concerning the validity of a European patent still fall to the national courts of the country for which the patent was granted, as provided in Article 24(4) of the Brussels Ia Regulation. What is new is that the infringement case does not automatically collapse the moment validity is challenged. The home court keeps control of the overall proceeding. For patents from EU Member States, the home court does not automatically lose jurisdiction. It assesses the validity challenge. If it looks strong, the home court may stay the infringement case. If it looks weak, the home court may proceed. For patents from non-EU countries, the home court may stay the case if a validity proceeding is already pending there, drawing on Articles 33 and 34 of the Brussels Ia Regulation. The result is a considerably more flexible system than most observers expected . Patents from Outside the EU: Long-Arm Jurisdiction The part of the judgment with the greatest international reach concerns patents from countries outside the EU. The ECJ ruled that the special jurisdiction rule for patent validity generally does not apply to non-European patents. That means the general rule can apply instead, opening the door for infringement claims based on non-European patents to be brought before a home court where the defendant is based in the EU. Commentators quickly started calling this “long-arm jurisdiction.” One clarification matters here, because it tends to get lost in the public discussion: the ECJ did not say that a European home court can revoke or invalidate a foreign patent. That remains a matter for the authorities and courts of the country that granted it. What the ECJ said is that a European home court may assess the claims between the parties. That distinction is essential to how you should read this ruling. Consequences in Practice: Fujifilm, Regeneron, and Onesta Three recent cases show how quickly practice is already adapting to the new possibilities. Fujifilm v. Kodak: the Düsseldorf Local Division of the Unified Patent Court accepted jurisdiction over the UK part of a European patent even before the ECJ delivered its judgment, building on reasoning the Advocate General had already signaled in the BSH case. In June 2026, the UPC Court of Appeal further developed that approach based on the principles confirmed in BSH. Regeneron v. Formycon: the Munich home court applied the BSH framework and granted a Europe-wide injunction based on a European patent, one of the first examples of a national home court putting the BSH logic into practice. Onesta v. BMW: this case shows the debate has moved well beyond Europe. After Onesta attempted to assert two US patents before the Munich home court, BMW obtained an anti-suit injunction from a Texas federal court. Judge Albright took the view that US patents should generally be decided by US courts. The injunction was directed against Onesta, not against the Munich court, and Onesta has appealed the Texas decision. The Munich home court stayed the proceeding but did not reject its own jurisdiction. Whether a European home court can ultimately decide infringement claims based on US patents remains an open question, one that has turned from a European jurisdiction issue into an international jurisdiction conflict. What This Means for Your Company Heilein sums up twenty years of litigation in three lessons, and I share this assessment without reservation when advising my Mittelstand clients. First: patent enforcement has become more international. National litigation still matters, but companies should think across borders from the very beginning, not only once the first cease-and-desist letter has been sent. Second: choice of forum now carries real strategic weight. Where you bring a case can matter just as much as the legal arguments themselves. Third: long-term commitment pays off. Major developments rarely result from a single filing or a single hearing. They come from pursuing a clear strategy consistently over many years. For you as a managing director, R&D lead, or Head of IP at an innovative Mittelstand company, this translates into two concrete points. First, if you hold rights in several European countries and a competitor infringes them, you no longer necessarily have to fund five or six parallel national proceedings. A single action at the infringer’s home base can be the economically smarter option. Second, and this side of the ruling gets less attention in public discussion, if your company is based in Germany and operates across several countries, you can now be sued at your own home base over patent infringement claims tied to activities in other countries. That risk belongs in every freedom-to-operate analysis and in every assessment tied to acquisitions or market entry. Here is the full transcript of the interview: Host Today’s interview guest is Dr. Ernst-Peter Heilein. If you don’t know Ernst-Peter, he is a German and European patent attorney, the founder of HEILEIN IP LAW, and a long-time IP leader at BSH Home Appliances. Thank you for being on IP Fridays. Answer Yeah, great to be here! BLOCK 1 – THE PERSON BEHIND THE CASE Host When looking at your career, one thing stands out: you never really followed the traditional path of either private practice or industry. Er, how did your professional journey begin, actually? Answer My professional roots are actually in private practice. After qualifying as a Patent Attorney, I worked in private practice and fairly early founded my own law firm, which later became HEILEIN IP LAW. Host So you never completely left private practice behind? Answer Exactly. In 2005, I had the opportunity to take on additional responsibilities on the BSH side. There, I was able to build and lead a new unit within the IP organization. The team was responsible for patents in the small appliances business, as well as global design and trademark protection. At the same time, I helped build an international network of internal and external IP counsel and coordinated their work. Host That still sounds fairly like traditional IP work. When did international disputes become part of your career? Answer Over time, my focus gradually shifted from traditional IP protection to strategic enforcement. That included anti-counterfeiting activities, global trademark and design matters, and cross-border patent disputes. Host So your work became more about enforcing rights rather than simply obtaining and managing them, right? Answer Exactly. And that development eventually led me to play a strategic role in the case BSH Home Appliances versus Electrolux, a case that still accompanies me today. Host Looking back now — from private practice, to building an international IP organization, and eventually becoming involved in a case before the European Court of Justice — did you ever imagine that path? Answer No, not at all. Looking back, this combination of private practice, responsibilities on the business side, and international enforcement experience turned out to be very useful when our case eventually reached the European Court of Justice. BLOCK 2 – HOW IT ALL STARTED Host Yeah, talking about this case. The case BSH versus Electrolux started long before it reached the European Court of Justice. When did the story actually begin? Answer The story actually begins much earlier than most people would expect. The invention itself dates back to 2001 and concerns a new vacuum cleaner technology. In 2006, we identified what we believed to be an unauthorized use of the invention and contacted Electrolux to clarify the situation. The European patent in suit was granted in 2009 and validated in a number of European countries. At the time, nobody could have imagined that this would eventually lead to a decision of the European Court of Justice almost twenty years later. Host Wow, 20 years! That’s a long time. So, at first this was simply a normal patent dispute? Answer Yes, absolutely! After many years of opposition and appeal proceedings before the European Patent Office, we were finally able to defend the patent successfully in late 2018. Less than one year later, in the summer of 2019, the Higher Regional Court of Düsseldorf found that certain Electrolux vacuum cleaner models infringed the patent. Host Er, at that point, one might think, that the patent owner had achieved its goal, right? Answer That is what many people would think. But that judgment did not bring the dispute to an end. A new challenge emerged. The patent had been validated in many European countries. Winning in one country, like Germany, did not automatically solve the enforcement issue in all the other countries. Host What was the practical problem then? Answer We were facing a very simple question: How do we enforce a patent that exists in many countries? And how do we prevent claims from becoming time-barred without filing separate infringement actions in every single country? Doing that would not only be legally complex. It would also require a huge amount of time, effort, and money. Host That sounds less like a major legal question and more like a business problem. Answer Exactly. At the beginning, this was not an academic discussion about jurisdiction. It was a very practical business question. How can we enforce our rights efficiently without running parallel lawsuits all over Europe? That was the real challenge we were trying to solve. BLOCK 3 – THE IDEA OF A CENTRAL ACTION Host So, how did the idea of one central action emerge? Answer While looking for possible solutions, we came across Article 4 of the Brussels Ia Regulation. The idea behind that rule is very simple. In general, a person can be sued in the country where that person is based. In our case, that pointed us toward the Swedish home court because Electrolux is based in Stockholm. Host That sounds like a fairly ordinary jurisdiction rule. Answer Yes. And that was exactly what made it interesting. Article 4 is the general rule. The question was whether that rule could also be used for patent infringement claims covering several countries. Host Was that a common approach at the time? Answer No. Quite the opposite. Many people believed that cross-border patent litigation in Europe was effectively dead. Host That sounds rather dramatic. Why did people think that? Answer Because there was a widely held view that a central patent case could be stopped as soon as the defendant challenged the validity of the patent. As a result, many companies assumed they had no real choice but to litigate country by country. Host Yet you decided to look at the issue differently. Answer Yes. Sometimes it is worth taking a fresh look at accepted assumptions. We felt that Article 4 might play a much more important role than many people believed. Host So at that point, you already saw an opportunity, right? Answer Yes, we saw a possibility! Not a guarantee. But we believed there was a strong legal basis for bringing all claims before the Swedish home court. Host And that eventually led to the lawsuit being filed in Sweden, right? Answer Exactly. In 2020, we decided to file the action in Sweden. That followed our success before the European Patent Office in late 2018 and in the Düsseldorf infringement proceedings in 2019. At that stage, our objective was very practical. We were simply trying to find an efficient way to enforce rights that exist in many countries. Host At that point, you already think the case might end up before the European Court of Justice? Answer No. Not at all. We were focused on solving a business problem. The idea that the case would eventually reach the European Court of Justice came much later. BLOCK 4 – THE OBSTACLE: GAT v. LuK Host You mentioned that, er, many people believed cross-border patent litigation in Europe was no longer a realistic option. Why was that? Answer The main reason was an earlier decision of the European Court of Justice known as GAT versus LuK, decided in 2006. For many years, that decision was understood to mean that a home court could lose its ability to hear a patent infringement case as soon as the defendant challenged the validity of the patent. In practice, that understanding made many cross-border patent cases extremely difficult. As a result, many people believed that cross-border patent litigation was not effective. Host And yet you decided to follow exactly that path, right? Answer Yes. Sometimes it is worth questioning assumptions that have been accepted for many years. We believed that Article 4 of the Brussels Ia Regulation played a more important role than many people thought. That is why, in 2020, we decided to file the case in Sweden. Host And at that point, did you already realize that the case might eventually reach the European Court of Justice? Answer No. Not at all. Our goal was simply to find a practical solution to a real enforcement problem. The idea that this would eventually become a case before the European Court of Justice was far from our minds. BLOCK 5 – THE QUESTIONS REFERRED TO THE EUROPEAN COURT OF JUSTICE Host So, how did the case eventually reach the European Court of Justice then? Answer After we filed the lawsuit in Sweden in 2020, Electrolux challenged the validity of the patents. The Swedish home court then concluded that it could not hear the case and declared itself not competent to proceed. We appealed that decision, because the issues were important and affected far more than just our case. We suggested that several questions should be referred to the European Court of Justice. The Swedish Court of Appeal agreed and sent those questions to Luxembourg. Host So, what were these main questions? Answer At the heart of the case, there were three questions: First: if a home court has jurisdiction over a patent infringement case, does it lose that jurisdiction simply because the defendant argues that the patent is invalid? Second: Does it make a difference if the national legal system requires validity issues to be decided in a separate proceeding? And third: Do this jurisdiction rules also apply to patents from countries outside the European Union? Host The third question sounds particularly interesting. Answer Yes, at the time, the discussion in our case focused on Turkey. Today, many people immediately think about the United Kingdom, and some even think about US patents. But originally, the question was much simpler. We wanted to know, whether the same jurisdiction rules also apply when patents from non-European countries are involved. Host And, did you realize how important that third question might become? Answer No, certainly not to that extent. At the beginning, most of the discussion focused on the relationship between the different jurisdiction rules within Europe. Only later did it become clear that the European Court of Justice’s answers might have consequences far beyond the European Union. Host So, how did the European Court of Justice react then? Answer That was actually quite interesting. The European Court of Justice first heard the case before a Chamber of seven judges. Later, it referred the case to the Grand Chamber of 15 judges. That already showed that the European Court of Justice considered the issues to be important. And when the judgment finally came out, some of the answers were very different from what many observers had expected. BLOCK 6 – THE DECISION OF THE EUROPEAN COURT OF JUSTICE Host Let’s talk about the European Court of Justice’s answers. What was, in your view, the most important part of the decision? Answer The most important point was this: A home court does not automatically lose jurisdiction just because the defendant argues that the patent is invalid. For many years, many people believed exactly the opposite. The European Court of Justice made it clear that this understanding was too narrow. The home court where the defendant is based can generally continue to hear the infringement case. That is really the key message of the decision. Host Why is that so important? Answer Because it gives new momentum to cross-border patent enforcement in Europe. Before this decision, many people assumed that a defendant could effectively stop a central infringement case simply by challenging the validity of the patent. The European Court of Justice made clear that this is not automatically the case. Host Does that mean the home court hearing the infringement case will now also decide whether the patent is valid? Answer No, and that is a very important point. The European Court of Justice confirmed that questions about the validity of a European patent should still be decided by the national courts of the country for which the patent was granted, as provided for in Article 24(4) of the Brussels Ia Regulation. What is new, is that the infringement case does not automatically fall apart because of a validity challenge. The home court can keep control of the overall case. Host So, how does that work in practice? Answer The European Court of Justice gives the home court some flexibility. For patents from Member States of the European Union, the home court does not automatically lose its power if the defendant says the patent is invalid. The home court can look at the validity challenge. If it seems strong, the home court may stay the infringement case. If it seems weak, the home court may continue the infringement case. For patents from countries outside the European Union, the home court may also stay the case if there is already a validity case pending in that country. In such situations, Articles 33 and 34 of the Brussels Ia Regulation may apply. That creates a much more flexible system than many people expected. Host Er, we have discussed the implications for patents from Member States of the European Union, but a lot of attention has been given to another part of the decision, that we already talked about briefly, namely patents from countries outside the European Union. Answer Absolutely, and that may be the part of the judgment with the biggest international impact. Host Why? Answer Because the European Court of Justice decided that the special jurisdiction rule for patent validity does not generally apply to patents from non-European countries. In simple terms, that means the general rule can still apply. And that opens the possibility of bringing infringement cases based on non-European patents before the home court where the defendant is based in the European Union. Host That sounds like a very far-reaching statement. Answer It is. That is why many commentators started talking about what is often called “long-arm jurisdiction.” In other words, a European home court may, under certain circumstances, deal with infringement claims relating to patents from countries outside the European Union. Host So, many listeners may now wonder: Can a Swedish or a German home court really decide a dispute involving a British or Turkish patent? Answer Ah, we need to be careful here. The European Court of Justice did not say that a European home court can cancel or revoke a foreign patent. That remains a matter for the authorities and national courts of the country that granted the patent. What the European Court of Justice said is that a European home court may assess the claims between the parties in a dispute. That is an important distinction. Host Did you realize during the proceedings how important this part of the decision might become? Answer Not to this extent. We started with a very practical enforcement problem. Only later did it become clear that the European Court of Justice’s answers might have consequences far beyond the original case. Today, the decision is discussed not only in connection with Turkish patents, but also British patents and even possible claims involving US patents. Host If you had to summarize the decision in one sentence, and I know, this is a very difficult task, what would that sentence be? Answer The European Court of Justice did not re-invent cross-border patent enforcement in Europe. But after many years, it clearly gave it much more room to develop. BLOCK 7 – THE REACTION OF THE IP COMMUNITY Host So, how was the decision received after it was published? Answer Ah, the reaction was very strong. It quickly became clear that many people saw the decision as much more than just another patent case. Many articles and commentaries described it as an important development in European patent litigation. Host Did that surprise you? Answer To some extent, yes. Of course, we knew that the questions referred to the European Court of Justice were important. But I was surprised by how quickly the decision became a major topic of discussion across the European patent community. Host Er, you later presented the decision at several conferences yourself, right? Answer Yes. The discussion started right away. I had the opportunity to discuss and present the case at several conferences and events, including the annual VPP conference in Germany and the Ingolstadt Patent Symposium. I recently received an invitation to serve as a panel speaker on cross-border litigation at the AIPPI World Congress 2026 in Hamburg. What struck me most was that both internal and external IP counsel were trying to understand the practice consequences of the decision. Host So, what was the question you were asked most often? Answer Almost always the same one: How   far   does    this   decision   really   go? People wanted to know whether this was simply a correction of earlier case law or whether it marked the beginning of a new phase in cross-border patent enforcement. Host And what did you say? Answer I would describe it as: neither a revolution nor a minor adjustment. The European Court of Justice did not rewrite the system. But it clearly changed the balance between the different jurisdiction rules. That is why I believe the decision will continue to be discussed for many years, both in practice and in academia. Host Er, one year later, the case received the Managing IP Award as the “Europe Impact Case of the Year.” What did that recognition mean to you? Answer First of all, it was a great honor for everyone involved. But for me, the most important thing was the message behind the award. The award showed that the decision affects much more than the parties involved in the case. It has an impact on European patent practice as a whole. And it also shows that the underlying jurisdiction questions reach far beyond patent law. They are relevant whenever companies have to enforce rights across borders in an increasing international world. That is what makes this case special. Host You often describe this case as a team effort. Answer Absolutely. A case of this size is never the work of one person. Many people contributed over many years. On the BSH side, team members from different functions played an important role throughout the proceedings. And we worked closely with external advisors in several countries. So I see the award as recognition of a shared achievement rather than an individual success. Host Looking at the discussions today, would you say the debate is over? Answer Not at all. I actually think we are only at the beginning. There are still many practical questions that home courts will have to answer in the coming years. That is exactly why the decision remains so interesting. BLOCK 8 – WHAT DOES THE DECISION MEAN IN PRACTICE? Host Let’s move from legal theory to practical business implications. What does this decision mean for patent owners and companies? Answer In my view, the biggest change is strategic. Patent owners now have better opportunities to bring cross-border disputes together in one central proceeding. At the same time, companies need to be aware that they may face claims at their European headquarters covering activities in several countries. So the decision creates opportunities, but it also creates new risks. Host That sounds really like a significant shift; right? Answer I would call it a rebalancing rather than a revolution. The European Court of Justice did not create a completely new system. But it made clear that the general rule — suing a defendant where it is based — plays a much bigger role than many people had assumed. As a result, the court at the defendant’s home base becomes much more important strategically. Host In the patent community, people often talk about cases such as Fujifilm v. Kodak, or Regeneron v. Formycon or Onesta v. BMW. Why are those cases attracting so much attention now? Answer Because they show how quickly practice is already adapting to the new possibilities. Fujifilm was important because it was one of the first UPC cases to test the logic that was later confirmed in BSH. At that time, the BSH case was already pending before the European Court of Justice, and the Advocate General had expressed a view that pointed in that direction. Against that background, the Düsseldorf Local Division accepted jurisdiction over the UK part of a European patent even before the European Court of Justice delivered its judgment. In June 2026, based on the principles confirmed in BSH, the UPC Court of Appeal further developed that approach. Host And what happened in Regeneron v. Formycon ? Answer In the Regeneron case, the Munich home court applied the approach confirmed in BSH and granted a Europe-wide injunction based on a European patent. That was one of the first examples of a national home court using the BSH framework in practice. That demonstrates that the decision is not just an academic discussion. It already has practical consequences. Host And what about the Onesta case? Answer The Onesta case shows that the debate has moved beyond Europe. After Onesta attempted to assert two U.S. patents before the Munich home court, BMW obtained an anti-suit injunction from a Texas federal court. Judge Albright took the view that U.S. patents should generally be decided by U.S. courts. The Onesta case therefore illustrates that the limits of the BSH logic are now being tested internationally. Host Did that end the proceedings in Munich? Answer Not necessarily. What makes the case interesting is that the Texas injunction was directed against Onesta, not against the Munich home court. At the same time, Onesta appealed Judge Albright’s decision in the United States. The Munich home court therefore decided to stay the case for the time being. Importantly, however, the Munich home court did not reject its own jurisdiction. So, at least for the moment, the underlying question remains open. Host Can a European home court ultimately decide infringement claims based on U.S. patents? Answer That question has not yet been answered. But the case has already shown that such an attempt can trigger strong reactions outside Europe. In that sense, the debate has moved from a European jurisdiction question to an international jurisdiction conflict. Host For our audience of internal and external IP counsel, what are the main lessons from this decision? Answer For me, there are three key takeaways. First: Patent enforcement has become more international. National litigation remains important, but companies should think across borders from the very beginning. Second: The choice of forum is becoming more important. Where you bring a case may be just as important as the legal arguments themselves. And third: Long-term commitment matters. This case shows that major developments rarely happen because of a single filing or a single hearing. They usually result from pursuing a clear strategy consistently over many years. Host Do you think this decision will also influence the Unified Patent Court, the UPC? Answer Yes, I believe so. The decision fits into a broader trend toward more centralized patent litigation. Both, the UPC and the BSH decision are driven by the same idea: Handling cross-border disputes more efficiently and more consistently. What is interesting is that many of the questions were faced in BSH versus Electrolux are now reappearing in a new form before the UPC. Cases like Fujifilm versus Kodak show that the discussion about jurisdiction, scope, and cross-border effects is far from over. Institutions may be new. But the underlying challenge remains the same: How do we enforce patents effectively across borders? Host Some commentators even see this as a step toward a more independent European patent judiciary. Do you agree? Answer To some extent, yes. Professor Hanns Ullrich, who supervised my doctoral studies on the legal protection of a then new semiconductor technology many years ago, recently observed that the UPC is gradually developing its own European case law.[DH1]  I think that is — again — a very accurate observation. If you look at the developments since BSH and the first UPC decisions, you can see that European patent litigation is becoming more connected. National courts will remain important. But at the same time, we are seeing a more integrated European patent system taking shape. How far that development will go remains to be seen. Host Looking back on the entire journey — from a vacuum cleaner patent, through litigation in several countries, all the way to the European Court of Justice and an award-winning decision — what is your personal conclusion? Answer My main conclusion is that innovation needs effective legal protection. But it also requires the willingness to challenge established assumptions and explore new approaches. For me, the BSH versus Electrolux case shows that persistence, teamwork, a willingness to challenge accepted assumptions, and a long-term strategic view can sometimes lead to developments that go far beyond the original dispute. BLOCK 9 – THE PERSON BEHIND THE DECISION Host Ernst-Peter, today we have talked a lot about jurisdiction, patent enforcement, and European case law. When you look back at this journey, which has lasted almost twenty years, what impressed you most? Answer Probably the realization that major developments rarely follow a straight line. When we started thinking about the case, we were dealing with a very practical problem. Nobody said: Let’s create a landmark decision of the European Court of Justice. We were simply looking for a reasonable and practical solution for a company. The fact that this would eventually lead to a decision with Europe-wide impact was something nobody could foresee at the time. Host Were there moments when you thought the case might fail? Answer Of course. Whenever a case lasts many years, there will be setbacks, new questions, and unexpected developments. That is exactly why persistence is so important. In the end, success is often not about one filing or one hearing. It is about staying focused on a clear objective over a long period of time. Host You often talk about teamwork. Is that one of the main lessons from this case? Answer Absolutely. A case of this size requires commitment from many people and institutes over many years. On the BSH side, my role was to help maintain the strategic direction and long-term commitment that such a case requires. At the same time, experts from different functions within BSH contributed technical expertise, testing, documentation, and practical support throughout the proceedings. On the legal side, Roman Sedlmaier and his team at IP-Counsels Gigerich & Sedlmaier (IPCGS) helped develop the cross-border litigation strategy and the overall case architecture. Our Swedish litigation team then carried the arguments through all stages of the proceedings. Looking back, it was the combination of institutional commitment, technical expertise, strategic leadership, well-designed case architecture, and consistent execution that made the difference. Host One final question. What advice would you give to young internal or external IP counsel? Answer Stay curious: Don’t be afraid to question accepted assumptions. Be patient: Intellectual property is usually a marathon, not a sprint. And never forget that every patent dispute involves an invention, a business, and many people who have worked hard to bring that innovation to market. For me, that connection between technology, law, and strategy is what still makes this profession so fascinating today. Host Ernst-Peter, thank you very much for joining us today on IP Fridays. Answer Thank you. It was a pleasure to be here.
• 
  Creator Economy Law: What Every Creator Needs to Know About AI, Platforms, and Their Rights – Interview with Franklin Graves of Linkedin – IP Fridays Podcast – Episode 176 26.06.2026 36m

  My co-host Ken Suzan and I are welcoming you the episode 176 of the IP Fridays Podcast. Today’s interview guest is returning guest Franklin Graves, who is a senior counsel at Linkedin and teaching IP law at Emerson College. With my co-host Ken Suzan he is discussing how the law for creators has dramatically changed in the past years. Franklin Graves is expressing his personal views and not the views of Linkedin or Microsoft. He is talking about the paper “Upload Complete” before he joined Linkedin. Bio: https://www.linkedin.com/in/franklingraves/ Paper: https://papers.ssrn.com/sol3/papers.cfm?abstract_id=5271442 Website: https://creatoreconomylaw.com/ But before we jump into this interview, I have news for you! Richard Meade, a judge on the UK High Court and one of the most prominent figures in European patent law, was appointed Lord Justice of Appeal at the British Court of Appeal on June 12, 2026. Meade played a key role in numerous landmark British patent decisions, particularly in the area of standard-essential patents (SEPs) and FRAND licenses. In Insulet Corp. v. EOFlow Co., No. 2025-1807, the U.S. Court of Appeals for the Federal Circuit completely overturned the original $452 million judgment (which had already been reduced by the District Court to $59.4 million) in favor of Insulet. In its decision of June 2, 2026, in the case of Fujifilm v. Kodak, the UPC Board of Appeal provided comprehensive clarifications regarding so-called “long-arm jurisdiction”—that is, the question of whether the UPC can also rule on national patent claims outside the UPC territory (such as in the United Kingdom). In 14 guiding principles, the judges established specific procedural rules for various categories of cases. There is no automatic UPC jurisdiction over national patent claims outside the UPC territory. The Munich Regional Court has issued an arrest warrant against the managing director of Polytech Health & Aesthetics GmbH because he is alleged to have continued to exploit the Brazilian company Silimed’s patent for breast implants despite a preliminary injunction. A number of IT and automotive industry associations—which are among the most frequent users of Inter Partes Reviews (IPR) at the U.S. Patent and Trademark Office—have filed an amicus brief with the Supreme Court, urging the Court to grant Google’s certiorari petition. An attorney for a Las Vegas performer has asked a California federal judge to temporarily prohibit Taylor Swift from using “The Life of a Showgirl” as a trademark while the trademark lawsuit is pending. Swift’s attorney called the lawsuit baseless. And now let’s hear Ken discuss creator law with Franklin! AI, Platform Law, and the Creator Economy: What Businesses Need to Know Now Franklin Graves has spent his entire career watching digital content move through systems that most people never see. He started in marketing at a major music label right out of law school, then represented individual creators on YouTube in a pro bono capacity, then moved to the platform side at Eventbrite, and today works as Senior Product Counsel at LinkedIn, where he focuses on AI, data, and the regulatory questions that come with both. His recently published law review article, Upload Complete: An Introduction to Creator Economy Law, is the first academic paper to address the creator economy as a distinct legal field. In a recent episode of the IP Fridays podcast, he spoke with host Kenneth Suzan about responsible AI development, platform regulation, and what it actually means to own your audience in a world where the rules keep changing overnight. From Content Creator to Platform Lawyer The through-line in Graves’ career is a genuine understanding of how content moves from an idea in someone’s head to an audience on a screen. That experience, he argues, is precisely what in-house counsel needs right now. Lawyers working on AI and product development cannot afford to sit at a distance from the technology they are advising on. They need to use the tools, experience them as a creator or end user would, and understand the nuances of how a product actually operates before it reaches the public. Understanding the product first is the precondition for everything else. That philosophy translates directly into how he approaches responsible AI implementation. The landscape of AI standards is crowded: NIST frameworks, the EU AI Act, sector-specific guidance, and a growing body of industry-adopted best practices. The challenge for in-house counsel is not knowing that these standards exist. It is making them actionable for the engineering and product teams they support. Abstract principles need to become concrete controls and workflows. Graves offers one practical shortcut: most companies already have open source software review processes that involve the right stakeholders, the right sign-off levels, and the right security checks. Layering the specifics of generative AI or large language models onto those existing processes is far more efficient than building something new from scratch. A Fragmented Regulatory World The geopolitical dimension of AI regulation is something Graves thinks about constantly in his role at LinkedIn. The EU AI Act, shifting US executive orders, and country-specific approaches to data privacy have created a regulatory environment that can change the rules of the game without warning. His analogy is instructive: creators have long understood what it means to build a community on a platform they do not own. An algorithm change, a policy update, or a government ban can wipe out years of audience-building overnight. Businesses deploying AI tools globally now face a structurally similar problem. The response, for creators and for platforms alike, is to build resilience rather than rely on stability that may not last. TikTok is the clearest recent example. When the platform faced the prospect of being shut down in the United States on national security grounds, it triggered a broader conversation about platform dependence that had been building for years. Creators who had invested their entire business in one platform suddenly confronted the possibility that their audience could simply disappear. The lesson is not that platforms are bad. It is that concentration of any kind, whether it is your audience, your data pipeline, or your regulatory compliance strategy, creates fragility. What Is a Creator, Legally Speaking? One of the central contributions of Graves’ law review article is definitional. The terminology matters more than it might seem. When courts and regulators talk about creators without a shared understanding of what that word means, the resulting legal analysis tends to miss the mark. Graves draws a distinction between users who post content, creators who post with the intent to build an audience and eventually monetize it, and influencers, a subset of creators who are actively running a small business through their content. The difference is intent. A parent posting family photos on Facebook is a user. Someone building a subscription community around their professional expertise is running a business, and the legal framework that applies to them should reflect that. That distinction matters practically when it comes to liability. As more creators build their own platforms, whether through custom membership sites, open source tools like Ghost, or federated social networks, they take on obligations that previously fell to large platforms: content moderation policies, privacy notices, terms of service, and compliance with data regulations across multiple jurisdictions. A creator in Tennessee running a membership platform with subscribers in Germany is operating a global business, whether they think of themselves that way or not. Protecting Children Online: A Question Without a Clean Answer The tension between age verification and privacy is one of the more difficult problems in platform law right now. Australia, several European countries, and a growing number of US states have introduced or passed minimum age requirements for social media accounts. The technical challenge is real: verifying age online requires collecting identifying information, and collecting identifying information creates privacy risk, particularly for the young people the laws are designed to protect. Who should bear the responsibility for that verification is also unresolved. Is it the platform? The app store? The mobile operating system? Graves does not pretend there is a clean answer, but he points to the mobile layer as an underexplored option. The Apple App Store and Google Play Store already have significant leverage over which apps reach users on their devices. Whether that leverage should extend to age verification is a question that deserves more attention than it currently receives. The Right of Publicity in the Age of AI Voice cloning, digital replicas, and AI-generated synthetic media have pushed the right of publicity into territory that traditional IP law was not designed to cover. Trademark law, copyright law, and existing publicity rights each capture part of the problem but none of them covers it completely. The result, as Graves describes it, is a period of experimentation: lawyers filing trademarks on vocal sounds and phrases, states updating their publicity statutes to explicitly mention artificial intelligence, and entertainment unions negotiating over who controls a performance and any AI-generated iterations of it. Tennessee’s Elvis Act is a concrete example of the legislative response: the state updated its right of publicity law to include voice and to reference AI directly. Similar efforts are underway elsewhere. The underlying challenge is calibrating protection so that it gives creators and performers meaningful control over their likeness and voice without foreclosing the development of generative AI systems that depend on broad rights to process and learn from content. Somewhere between those two interests, a workable legal framework needs to emerge. The brand deal context may be where the issue becomes most immediately practical. When a brand partners with an influencer and the campaign involves generative AI in any form, the contract needs to address control explicitly. Who has final approval over how the influencer’s likeness or voice is used in AI-generated deliverables? What happens to those assets after the campaign ends? These are not hypothetical questions. They are contract drafting problems that any brand counsel or creator attorney should be addressing today. What Comes Next Graves is cautious about predictions, but his sense of direction is clear. The regulatory environment will continue to fragment before it converges. The right of publicity will be updated, imperfectly, in more jurisdictions. Creators will continue to move toward owning more of their infrastructure. And the lawyers who do this work best will be the ones who understand the technology well enough to translate it into practical, defensible decisions for the people they advise. Full Transcript: Ken Suzan: Thank you, Rolf. Our returning guest today is Franklin Graves. Franklin is the founder and editor of Creator Economy Law, a website and newsletter that educates creator economy professionals on the intersection of law and policy with the world of creators, brands, and platforms. Franklin also published the first law review article focused on the creator economy, Upload Complete, an introduction to creator economy law. He regularly appears across news and media outlets as a commentator and contributor with a focus on educating creators and raising awareness of all legal aspects of the creator economy. Franklin is based in Nashville, Tennessee. Ken Suzan: Franklin was invited to participate as one of the creators and creator economy professionals in the first ever White House creator economy conference. Franklin works full time as a product counsel at LinkedIn Corporation. As a member of the product and data team, he focuses on emerging issues in AI and data. Franklin previously held roles on the technology law group at HCA Healthcare, the commercial legal team at Eventbrite, and the business and legal affairs team at Naxos Music Group. Welcome back Franklin to the IP Fridays podcast. Franklin Graves: Thank you so much for having me. It is exciting to be back and reflecting over the last decade since I last joined and also the paper that I wrote that dives into this in more detail. So I really appreciate it. And yes, full disclosure, I currently work for LinkedIn, which is a subsidiary of Microsoft. I’m here in my personal capacity to talk about this, the paper I wrote before joining LinkedIn and all of that. So thank you so much for having me back. Ken Suzan: Excellent. So Franklin, since your last appearance on IP Fridays in 2017, your career has evolved significantly. You are now senior product counsel at LinkedIn focusing on AI and data. How has working inside a major tech platform changed your perspective on the legal frameworks governing digital content compared to when you were viewing it purely from the creator side? Franklin Graves: I appreciate that question because when I wrote the article, I did not work for LinkedIn. And I had been coming from a history in my career where I, right out of law school, worked for a record label like we talked about almost 10 years ago. And I was on the content creation side. I’ve represented a major distributor of classical music digitally at the time. And that was my first exposure to understanding how content was taken from the initial inception stage from creators and routed through all the various digital platforms that were at the time still evolving and even arguably still today continue to evolve. The early days of YouTube Music launching and then Apple Music launching, and then going through all the phases of high-res audio and everything that came after that. So that was an interesting perspective to start my career with. And then I went to Eventbrite, which is a ticketing platform, but was also focused on elevating event creators. They kind of took on that moniker of “Hey, we are event creators that we support.” And that was arguably my first exposure to the platform side, the tech platform side of it, because Eventbrite is a platform. And so then I evolved from there in my personal capacity, in a pro bono capacity representing individual creators across the YouTube space. And that’s what we talked about a little bit back when I first came on the podcast. Franklin Graves: Over the last decade, it’s been a chance to grow my own understanding of the creator economy. The terminology “creator economy” came around. And then now on the other side of it, having written the article and all that, and now being fully in-house at LinkedIn, I truly am experiencing a social media platform. LinkedIn is of course arguably way more than just the platform itself. There are so many different avenues to it, but it is a chance for me to understand what it is like working for a company that is operating the platform that people are distributing content on. There’s a user journey to content and all of that. So it’s definitely enhanced and given me a different perspective from a major tech platform side. And part of my role at LinkedIn is really heavily focused on understanding regulation and how that from an AI and data perspective impacts the company. And so I’ve been really leveling up my game over the last year and a half that I’ve been here, understanding mostly EU regulations, but also US regulations that are still in their infancy when it comes to AI. But really when it comes to privacy and data, those are pretty well established across the board. It’s been kind of a combination of what I learned at Eventbrite, because I went to Eventbrite when GDPR was going into effect. And so that was an eyes-wide-open moment of getting in the weeds with negotiating data processing agreements, understanding data transfers and cross-border data transfers and the like. So it’s been kind of an evolution as the laws and regulations have evolved. So has my career, so has my own understanding, so have the platforms’ responses to those laws and regulations. And I’m sure that probably resonates with a lot of your listeners who have also been growing their practice and their understanding as the laws and regulations in this realm have been evolving too. Ken Suzan: Yes, indeed. Now let’s switch gears and talk about AI. You advise on AI and data daily. As platforms integrate generative AI tools into their tech stacks, what are the most critical best practices in-house counsel should be adopting right now to embed responsible AI principles into product development? Franklin Graves: So as an attorney, one of my key roles is to understand the technology. Even representing creators and working for creator platforms, that’s something I’m constantly trying to do: put myself in the shoes of being a creator. And I think I talked about this last time I was on, but I come from a background where I was working for a major label doing marketing, video editing, social media work. And I was creating content. I understood the whole life cycle from the inception point of an idea to execution and then to the final delivery and distribution of that content to an audience within a major music label. And so part of that is the same thing that I think attorneys, especially in-house, should be doing: using the tools that the product and engineering teams are either developing in-house or partnering with third parties to develop, or a combination of the two. Using them, understanding them, using them as a creator would, using them as an end user or a client or customer would. And making sure that if you understand the product and understand the nuances of how it operates, and being a part of the iterations of that internally before it fully ramps, that really gives you a chance to understand: okay, we have a lot of responsible AI principles and standards and protocols that are in existence right now, whether it’s NIST, whether it’s based on the EU AI Act or anything and everything in between. It’s understanding how to apply those and bring those into a product and an engineering environment in a way that is practical and actionable for the people that you’re supporting, the stakeholders you’re supporting. So I think one of the critical best practices is, number one, understand the product or features that you’re supporting. Franklin Graves: And then understand how you as an attorney can use your expertise and understanding of responsible AI practices, whether it’s a regulatory standard or an industry-adopted standard or a hybrid of the two, to leverage those and implement those, break those down and make them into actionable controls and processes and flows that work within your existing infrastructure. That’s a lot of high-level talk, but that’s the general idea. One concrete example we talk about frequently is with open source AI. If you’re working with a product team or an engineering team that is taking an off-the-shelf open source model and bringing that in-house, a lot of times companies have pre-existing open source processes that cover the use of open source software or code. Piggyback on that. That’s the easiest quick win for attorneys: leveraging your existing open source processes to just build on top of that the AI flavor and layering. It’s not very much that you have to do, but the underlying process of the key stakeholders that need to be involved in the review, whether it’s security, whether it’s executive sign-off if it gets to that point, even export control considerations should already be part of your existing open source software process. So layering in on those existing processes the specifics of generative AI or large language models that you’re trying to bring in is a great way to put this into practice. Ken Suzan: Now looking at the geopolitical landscape that we currently have, we have the EU AI Act setting strict standards and shifting US executive orders. How should platforms and brands prepare for this fragmented regulatory environment when deploying AI tools to a global user base? Franklin Graves: It’s a great question. It’s something that is still evolving, I think is fair to say. I would equate it, as I do in the paper that I wrote, to how creators and arguably brands don’t own the platforms that they’re building their communities on. That spawned this concept of de-platforming or going into building your own platform, a decentralized platform of sorts, and owning your community. That gives you that control and takes away the level of instability that can come for creators trying to build a business on a platform they don’t own, they don’t control when certain updates happen, when algorithms change, when tools and functionalities either become available or go away completely. So it’s very similar to what we’ve been experiencing in a regulatory environment where we have geopolitical complexities, for lack of a better term, that can overnight seemingly disrupt the way in which a platform or even a multinational brand is able to connect and reach an audience or continue to leverage the user base that they’ve built. I think TikTok is a great example of that, where it became a national security concern and suddenly it was facing an executive order that required it to be effectively disabled in the US or completely owned and operated by a US entity. All the mechanics and technicalities of whether it’s actually possible and still have a global platform with a global user base is a whole different discussion. But that’s an example of very similar considerations that are now not just a discussion point at the creator level or the individual brand level, but also in a much broader context at a platform level as well. Ken Suzan: Franklin, let’s now shift gears and talk about your article. In your recently published journal article, Upload Complete, which we will have linked in our show notes, you advocate for a shift in terminology from internet creator law, a term used during our first podcast almost a decade ago, to creator economy law. Why is this distinction important and how does it change the way legal practitioners should view the ecosystem of creators, brands, and platforms? Franklin Graves: Oh yes, this is part of the reason why I wanted to write the article: to lay this foundation of understanding. Because at the time I’d written the article, the term creator economy and creator had really not appeared but for maybe once in an actual court decision. And it was kind of focused on influencers and this concept, and it was just not getting it right. And so it was also, as you mentioned, when we first spoke I was even using the term internet creators. And I think that was something that was common at the time. The “internet” portion as a qualifier has since dropped off. And now for purposes of the creator economy, the term creators refers to individuals, it can be small businesses, which is what we’ve seen from a regulatory standpoint, how these small businesses are being impacted by regulations. But essentially creators in the article I pin in the context of intent. What is the intent behind the person or the small business that is posting content, trying to build a community and form a community in a virtual environment? And then that can even spill over into real physical world environments. And so the intent is kind of what I look at. Franklin Graves: And I have a chart in the article that has a diagram showcasing the overlap of what I refer to as “users generating content.” It’s a play on the concept of user-generated content, UGC. Users generating content is that large bucket of anyone posting on a platform of some kind. And within that large bucket, that large circle, are smaller subsets. You have creators, you have brands. Those are really the two buckets you can put people into. Otherwise it’s like your grandmother or your parents posting content on Facebook or Instagram, and those are everyday users of a platform. The distinction to get into that subcategory of being a creator more so has been analyzing the intent behind the posting. Are you posting content to build an audience, to build a community, to eventually have a chance to monetize the following that you’re bringing in or sell services or something like that? Brands are posting for that reason. Creators are maybe posting for that same reason. But even within the creator category, there’s a subcategory of influencers that are trying to sell something, that are trying to build more than just an awareness of who they are, their influence. They are trying to do brand deals, partnership deals, upsells and all that, and start an actual small business aside from just the content itself that they’re creating. So that’s kind of the distinctions that I make in the paper. And that’s why it’s important to understand and lay that foundation, that anyone can post content online, but the intent, the why behind their posting that content, really does ultimately matter, especially when you’re looking at it from a court case or from a regulatory standpoint. Ken Suzan: Now, Franklin, we’re seeing unprecedented geopolitical activity around platform ownership. For example, the US legislation targeting TikTok and Brazil’s recent temporary ban of X. How do these macro-level battles impact the day-to-day livelihood of creators? And how can they legally and operationally protect themselves? Franklin Graves: So the shift that we’re seeing, and I alluded to this earlier in our conversation, is this concept of Web 3. And that term may or may not be really popular anymore, but that’s essentially what we’re looking at: a shift into a federated, decentralized operation of a platform. So instead of one owner, one company, one entity owning and operating the platform, it’s decentralized. Anyone can start up a server, and it’s interoperable, meaning anyone can plug and play and connect to that larger network. And it creates this unified social network experience. Within each operating node of that network, there can be your own decisions around content moderation, your own decisions around the hosting providers you use, where you’re operating out of, the terms and conditions that apply to that. But the flip side is that instead of creators posting and sharing in a closed environment run and controlled by a singular entity, you’re now experiencing a peer-to-peer type operation where your experience can change based on which server, which node, which user you’re engaging with. You might have content that’s acceptable in one area but not acceptable in another, and maybe it just doesn’t even show up in that other area. Franklin Graves: But from a liability standpoint, as creators start to build their own networks and communities, even outside of a concept like the fediverse, it’s even down to creators building their own communities through online courses, subscription membership-based platforms that they run on their own website. There’s open source software out there, even something called Ghost, where you have memberships. And that is a creator or a small business in the creator economy that is now taking on the obligations that would typically fall upon a platform. They need to take into consideration terms and conditions, privacy policies, legal aspects, and regulatory considerations for running a platform, especially in a global world. So it’s a lot of liability that then shifts over to those small businesses and even brands sometimes that are doing the same thing. Whether it is something as simple or complex as content moderation or all the way up to monetizing an audience, this new world where creators can spin up and run a platform all dovetails back to the concept of creators not feeling like they have control in reaching the audience and the community that they’re building on an individual platform. And so this really became more mainstream conversation with TikTok and the issues around it potentially being shut down in the US. That was kind of the mindset shift and eyes opening for many creators, especially within the influencer subset, of realizing: we need to make sure that we have a way to reach the audience we’ve built if the individual platform that we’ve committed to over the last year or three years or so is no longer available. We need a way to continue that relationship outside of that one platform controlling it. Ken Suzan: Franklin, we have a few minutes left and a number of topics. So I’m going to switch gears and talk about a few issues. First, a major emerging topic in your paper is the evolution of protecting kids online. With state-level age-gating laws like the CAADCA and the recent FTC updates to COPPA, how should platforms navigate the significant tension between strict age verification mandates and the privacy and First Amendment rights of their users? Franklin Graves: Man, that is a whole discussion to unravel. It is a consideration that we’re seeing happen again, going back to the geopolitical nature of everything. Countries like Australia and certain countries in Europe and now even individual states in the US are trying to look at ways, and some of them have already put into place minimum age requirements before you can even sign up for an account with a social media platform. One of the things I’d just highlight quickly here is that one of the tensions is around how you verify someone’s age online and still maintain the ability to be at least pseudonymous. How do you still have a level of privacy, autonomy, and protection when it comes to having to provide something like a driver’s license or have parental consent tied and connected to an account managed by a parent in a situation where maybe it’s not appropriate or not beneficial to the child in that manner? But then maybe there are counterbalancing factors that outweigh that. All of that comes down to the technicalities of how it’s actually implemented and maintaining the sense of openness and freedom that we’ve had on the internet to date. And then the other element there is, since a lot of the internet that we think of today is more so through mobile applications, is it something that the mobile operating system providers and app store providers should be thinking about? So whether that’s the Google Play Store or the Apple App Store, where does that initial age verification need to fall? Is it at the platform level? Is it the app store or mobile device management level or something else? Yeah, there’s a lot to discuss there. And a lot of the issues we’re seeing with how the internet is changing in terms of being able to browse a website without disclosing personal information that might not have been required before is largely stemming from a focus on protecting children online. Ken Suzan: It sounds like, Franklin, we could have another episode covering lots of issues connected with that one topic alone. Franklin Graves: I would absolutely agree with that. There’s a lot going on there. And again, it’s different across the world. And so I know you all have a global listener base. And so there’s a lot of nuances to that whole discussion too, that are worth exploring. Ken Suzan: Last question for today’s episode is regarding the right of publicity. With the explosion of AI-generated synthetic media, digital replicas, and voice cloning, the right of publicity is taking center stage. What are the biggest legal risks for brands partnering with influencers right now? And how can creators protect their most valuable asset, their likeness? Franklin Graves: That’s a great question. I think we’re seeing kind of a throwing-spaghetti-against-the-wall-to-see-what-sticks approach right now by a lot of different parties, whether it’s trademark attorneys, whether it’s general entertainment attorneys or whoever. For example, we’ve seen Taylor Swift filing trademarks to protect certain sounds of her voice and phrasing that she uses. It’s a difficult area because in the realm of generative AI with deep fakes and virtual avatars, that is where it gets tricky, because traditional IP laws are just not able to fully cover that spectrum. It’s a piecemeal approach, but even then it doesn’t fully cover it. So for example, I’m based in Tennessee and a couple of years ago we had the Elvis Act that updated our right of publicity law to add voice and to explicitly reference artificial intelligence. And so that’s the kind of effort we’re probably going to continue to see: efforts to develop some framework around protecting what is essentially a privacy right, in a manner that doesn’t restrict generative AI systems from continuing to develop and operate the way they’re operating now, while layering in those protections so that in the US at least a First Amendment right doesn’t necessarily get squashed, and those traditional well-recognized efforts to not overregulate a technology in its early stages are respected. Franklin Graves: And so I think a lot of what we’re seeing is just a need to update laws. The SAG-AFTRA debate and the strikes that happened around maintaining control of your performance and any iterations of that, or building upon that by a media company that might come later, it’s all on the table right now and still being discussed, still being worked out. I think in the short run, a lot of times if it’s in a brand deal, the key question is: if you are using generative AI to enhance in some way the final deliverable for the campaign, who has control over that? Who has final say and sign-off on how that likeness or that digital replica or that person’s voice is represented? And even outside of the brand space, we’ve seen actors like James Earl Jones signing over certain aspects like their voice and allowing it to continue to be used in these manners powered by generative AI as Darth Vader. And I think I saw something that Boy George was even starting up an AI company that allows musicians, the original recording artist, to rerecord new versions of their masters so that they don’t miss out on that revenue. It’s powered by generative AI, by taking their voice now, which is significantly different than it was back in the 80s, and using generative AI to make it sound closer to the original, but all based on their current performance. So I think it’s still an evolving area. And what’s interesting too is on the platform side, we’re seeing the early stages of platforms like Google starting to acknowledge and rely on the license grant contained in their terms of service for YouTube, which grants them broad rights to use the content to run their platform. So all that to be said, it’s still early stages. I’m very interested to see where we go from here in the future, especially from a global perspective as well. Ken Suzan: Franklin, I could spend hours talking to you about this. You’re such a knowledgeable person on these topics. Maybe in a few years, will we connect again and talk further on AI and all the things that are yet to be developed? Franklin Graves: Thank you. Yeah, it doesn’t have to be another decade. Maybe we can cut it to half a decade, given the pace at which technology is going now. Ken Suzan: Sounds good, Franklin. Thanks again for being on the IP Fridays podcast.
• 
  Non-technical Features For Assessing Inventive Step – Alternatives to the Problem Solution Approach – Emotional Perception AI Limited Case of the UK Supreme Court – Abbout vs. Sinocare UPC Case – Interview with Bruce Dearling – IP Fridays Podcast – Episode 175 29.05.2026 50m

  [powerpresss] My co-host Ken Suzan and I are welcoming you to episode 175 of our podcast IP Fridays! Today’s interview guest is Bruce Dearling, patent attorney and partner at Hepworth Browne in the UK, and we talk about how non-technical features must be considered when assessing inventive step of patents at least according to recent decisions of the UK supreme court and the Unified Patent Court.  Profile of Bruce Dearling UK Supreme Court Emotional Perception AI Limited UPC Abbot vs Sinocare But before we jump into this interesting interview, I have news for you: On May 20, 2026, the Swiss Federal Council adopted the fully revised Patent Ordinance, which will enter into force on January 1, 2027, together with the revised Patent Act. In the future, the Swiss Federal Institute of Intellectual Property will prepare a mandatory search report for each application; applicants can choose between a partially examined version and a full examination that assesses novelty and inventive step. The full examination costs an additional 300 Swiss francs, and renewal fees will increase by a total of eight percent over the 20-year term.  On May 19, 2026, Asus entered into a licensing agreement with the Wi-Fi multimode patent pool managed by Sisvel, thereby ending all ongoing infringement proceedings. Sisvel bundles standard-essential patents in the pool from, among others, Atlantia, ETRI, and Mitsubishi Electric. On May 18, 2026, the UPC Local Chamber in Düsseldorf rejected Align Technology’s application for a preliminary injunction against its Chinese competitor Angelalign. Angelalign may continue to sell its clear aligners within the UPC jurisdiction. Our partners Dirk Schulz, Ulrich Storz, and Wanze Zhang, together with Arnold Ruess, successfully represented Angelalign. The U.S. Patent and Trademark Office (USPTO) announced midweek that, since October of last year, it has invalidated or is seeking to invalidate approximately 10,500 trademark applications and registrations in eleven administrative orders. Reasons include forged attorney signatures and the fabrication of non-existent filing requirements. This stems from ongoing abuse of the U.S. trademark system, primarily by non-U.S. applicants, which can lead to conflicts with validly registered trademarks for legitimate businesses.  On May 12, 2026, the British Court of Appeal overturned a lower court decision that would have required Nokia to grant interim licenses for video coding patents. The court found that Nokia’s license offer to the Taiwanese manufacturers Acer and Asus had already been made on RAND terms. In May, the U.S. Department of Justice (DOJ) filed a brief in the ongoing Corteva v. Inari litigation, expressing antitrust concerns regarding certain patent practices in the field of plant breeding. This marks the first time the agency has actively intervened in a biopharmaceutical patent dispute with implications for seed innovations. Episode 175 of the IP Fridays podcast was a conversation I will not forget quickly. My guest Bruce Dearling, partner at Hepworth Brown in the UK and a patent attorney for 36 years, took a case through every level of the British court system up to the Supreme Court and, in doing so, fundamentally changed patent law for AI inventions in the UK. The case is called Emotional Perception, and its effects reach well beyond British borders. Below I summarize the key points from our conversation. The full episode is available at IP Fridays. A. What Is the Emotional Perception Case About? The underlying invention concerns artificial neural networks. Specifically, it relates to a method of closing what is called the semantic gap at the output of a neural network. That sounds abstract, but the idea is straightforward: a neural network always produces an output that does not fully correspond to what a human would actually expect or feel. Closing that gap brings the system closer to human perception and human expectations. Bruce Dearling drafted this application himself and filed it at the UK Intellectual Property Office (UKIPO). The Office rejected it as excluded subject matter, characterizing it as essentially a computer program as such. The legal basis for that rejection was the Aerotel decision from 2006. The case then went to the High Court, which found in favor of the applicant. The Court of Appeal reversed that decision. Then the UK Supreme Court stepped in and changed everything. B. The Aerotel Test and Its Flaws Since 2006, the Aerotel test had been the standard British method for assessing whether an invention falls within the excluded categories under patent law. It was a four-step approach: construe the claim, identify the actual contribution the invention makes to human knowledge, ask whether that contribution falls solely within excluded subject matter, and finally check whether the contribution is technical in nature. The problem Dearling described in our conversation is that Aerotel reverses the logical order of the analysis. You start with the contribution and only then ask about the exclusions under Article 52 EPC. The UK Supreme Court described Aerotel in its judgment as “unsound law” and overturned it. The EPO’s Technical Boards of Appeal had previously called Aerotel “disingenuous,” which at the time led to a public dispute between the British courts and the Boards. With the Emotional Perception ruling, that conflict has now been resolved in favor of harmonization with the EPO. C. What the UK Supreme Court Decided The Supreme Court made two central findings. First, the exclusion of computer programs “as such” is overcome as soon as a claim includes any piece of hardware. It does not matter whether that is a processor, a memory module, or any other component. The threshold is deliberately low. Dearling described this as the “any hardware” approach, which aligns fully with the EPO’s position following G1/19. Second, and in Dearling’s assessment the more important finding: when assessing inventive step, the invention must be considered as a whole. The Court introduced what it called an “intermediate step,” an analytical stage in which the interactions between all features of a claim are examined before the question of inventive step is addressed. Non-technical features cannot simply be struck out if they contribute to the overall technical effect of the invention. D. Inventive Step: The Intermediate Step This is the heart of the judgment. In EPO practice, Dearling said, it happens regularly that examiners strike through features they consider non-technical and thereby fail to assess the invention’s inventive step correctly. A recent Technical Board of Appeal decision, T 1249/22, already criticized this approach: a claim directed at a technical solution to a problem can be patentable even if the underlying problem is non-technical in nature. Dearling recalled a remark made by a Board of Appeal member at a hearing he attended years ago: “We understand that examining divisions can operate with a degree of mental laziness and that it’s too easy to throw too many things out of the basket when considering the issues of inventive step.” That quote stayed with him because it names a structural problem that the intermediate step now addresses directly. The British method for assessing inventive step is the Pozzoli test, which differs from the EPO’s problem-solution approach. The Supreme Court explicitly retained Pozzoli because the problem-solution approach, in its view, is structurally infected with hindsight reasoning: you already know the invention, you work backwards to formulate an objective technical problem, and then you ask whether it would have been obvious for the skilled person to arrive at precisely that solution. Dearling sees this as a source of unfairness toward genuine inventions. E. Alignment with the Unified Patent Court In April 2025, the Court of Appeal of the Unified Patent Court issued a decision in Abbott v. Sinocare (APP_000000901/2025, judgment of 17 April 2025). Dearling pointed out that this decision uses language and reasoning strikingly similar to the UK Supreme Court’s Emotional Perception ruling of February 2025. That is significant because the UPC is bound neither by UK courts nor by the EPO. The overlap suggests voluntary convergence. Dearling reported a conversation with a person close to the EPO, whom he did not name, who used the word “permissive” to describe the UK Supreme Court’s approach and indicated that the EPO might move toward it. Whether and how quickly that happens remains to be seen. What is clear is that the UPC, as the new European patent court, is setting its own standards, and the question of how to handle non-technical features in inventive step assessment is now being asked at multiple levels simultaneously. F. Implications for the EPO and Practice The EPO is not directly bound by the ruling. It is an administrative body, not a court. Dearling is nonetheless optimistic that change is coming. On one hand, external pressure is building: when the UK Supreme Court and the UPC articulate similar principles, convergence becomes hard to resist. On the other hand, Article 27.1 TRIPS requires all contracting states to make patents available in all fields of technology. Examiners routinely striking non-technical features from AI claims and rejecting them on that basis sits uncomfortably with that obligation. For the underlying application in the Emotional Perception case, the ruling has a pointed consequence. The Supreme Court did not grant the patent itself; it referred the matter back to the UKIPO for reconsideration under the intermediate step. The Office’s subsequent response was, in Dearling’s words, unconvincing. He suspects the Office is attempting to reintroduce the Aerotel test through the back door. As a last resort, he has not excluded a judicial review, a procedure that does not simply challenge the substantive decision but holds the Comptroller General of Patents to account for whether the Office is deliberately circumventing the Supreme Court’s direction on the intermediate step. That is, as Dearling put it, “a nuclear option,” but one he would not rule out if the evidence in the file already suggests the Office is in contempt of court. There is also an international dimension. Singapore’s Intellectual Property Office launched a public consultation shortly after the ruling, asking whether Singapore should adopt the Emotional Perception approach into national law. That is British soft power operating in real time within the Commonwealth. G. Three Takeaways for Patent Practitioners At the end of our conversation I asked Bruce Dearling to distill the most important practical points. His first takeaway: make sure the claim contains hardware. This applies not only to UK and European applications but is simply good drafting hygiene. Without hardware in the claim, the application remains exposed. The second takeaway concerns the description. Anyone filing an AI invention needs to explain clearly which function is achieved by which piece of hardware, circuit, or software. Not as boilerplate, but as a complete technical account that describes the real-world effects. Dearling’s experience is that practitioners who write the claim first and fill in the description afterward run into trouble. The third takeaway emerged from the conversation itself: how the EPO assesses inventive step for AI inventions is not a settled question. It is worth following the development of UPC case law and any shifts in EPO practice closely. Anyone advising on AI patent applications today needs to know these arguments. H. Conclusion The UK Supreme Court’s Emotional Perception ruling is not a British footnote. It has declared the Aerotel test dead, introduced the intermediate step that brings non-technical features back into the inventive step analysis, and set off a convergence movement that is already visible at the UPC and still pending at the EPO. For everyone working in AI patent practice, whether in prosecution, examination, or counseling, this ruling is required reading. Rolf Claessen: Our interview guest on IP Fridays podcast is Bruce Dearling. He has been in the IP field and a patent attorney for 36 years and is partner at Hepworth Brown in the UK. Thank you very much for being on the podcast. Bruce Dearling: My pleasure, Rolf. Thank you for inviting me. Rolf Claessen: All right. We just met at the INTA annual meeting in London. And you talked about the UK Supreme Court case where you were involved. And the core questions were whether non-technical features would be considered when assessing inventive step of patents. Can you briefly summarize this case? Bruce Dearling: It’s a bit more than that. It started — I actually wrote the case. And I prosecuted it through the patent office. The patent office rejected the case for being excluded subject matter. So pretty much the excluded subject matter provisions in the UK are nearly identical. They’re as near as practical to the language of the EPC, so those of the European Patent Office — Article 52.2. But again, they apply as such. The actual technology relates to artificial neural networks. And the invention related to a very clever way of what is termed closing the semantic gap at the output of the neural network. So that means that in a neural network, there is always a discrepancy between the output of the neural network in terms of what it’s telling you you should be thinking essentially, and what reality is. So if you can close the semantic gap, then you align the neural network or the artificial intelligence system to better reflect human knowledge or human reactions and human expectations. So that’s really what the invention is about. There’s no point in going into too much detail with it — that’s the way it is. It’s very clever. So the UKIPO rejected this because they said it was essentially a computer program excluded from patentability as such. And they used a decision which is called Aerotel, which has been around since 2006. And that decision has caused considerable consternation and tension between the EPO Technical Boards of Appeal and the UK courts. Aerotel was described as being essentially disingenuous by the EPO Technical Board of Appeal. And the UK courts pushed back and said, you don’t know what you’re talking about. So that’s where it fell apart. So that’s where they rejected it for essentially being a computer program as such, possibly with a bit of business methods thrown in as well. But let’s leave that for the time being. So the case then went to the High Court and at the High Court, we won. The judge said, actually, it’s not a computer program. Neural networks aren’t computers. They’re not programs themselves. There’s more to them than that. And the invention as claimed is not excluded from patentability as such. The UKIPO obviously weren’t very happy about that because they liked their Aerotel case and so they appealed it. And they appealed it on several grounds, including a new one, which was that it was a mathematical method. The Court of Appeal decided that the UKIPO was right and that we were wrong, so we lost the case. So we then went to the Supreme Court. Well, actually, they denied us an ability to go to the Supreme Court. The court said no appeal. We went — actually, no, I think there is a bigger issue here — because we realized, or I realized at that point, that the work that we were doing was much broader than this. It requires real consideration of what an invention is at a fundamental level. So not only exclusions, but how inventive step is applied. And these issues were built into the case from the very beginning. And they sort of — I wouldn’t say crept up on the court as we went through — but they became more and more prominent to the extent that ultimately, when we made an application to the Supreme Court, the Supreme Court went, yeah, we’ve got some issues here. We want to hear the full arguments on why this is not excluded from patentability, why Aerotel is potentially bad and how we more or less try to align ourselves with the European Patent Office. So that’s essentially what happened. And the Supreme Court hearing was last July. It took them the thick end of eight months to come out with a decision, which was issued in early February, at which point the entire legal landscape in the UK changed because they said we were right. The Patent Office doesn’t know what they’re talking about. Aerotel is bad. It’s unsound. That’s what they described it as — unsound law. It needs to be removed and we’re going to harmonize with the European Patent Office. So before I — I’m just going on a bit of a rant here, standing on my soapbox telling you what you already know. But the Aerotel test essentially was — it was a four-step test, past tense. So you firstly had to construe the claim. That’s pretty straightforward. Then you actually had to identify the actual contribution. This is what they said — identify the contribution. Really in this aspect, you’re asking what, as a matter of substance rather than form, the inventor has added to human knowledge. So that’s what they said the contribution was. And then they said, the next step in Aerotel was to ask, well, does that contribution fall solely within the excluded subject matter field or realm? And then they said, well, if you get through that question, then you check the actual contribution or the alleged contribution to see whether it’s technical in nature. So that’s the Aerotel test as it was. And what the Supreme Court in their unanimous final decision said was that Aerotel at best jumbles up the order. It reverses the logical order of the analysis by starting with the contributions and then addressing the Article 52 exclusions. And then finally it goes back to what the technical nature of the invention is about. So they really went, no, we don’t like any of this stuff. It’s bad, it’s stupid, it puts the cart before the horse. So, in the intervening period between finding the case and actually seeing it progress all the way to the Supreme Court, we obviously had the G1/19 decision from the EPO Enlarged Board. And they basically said that they are going to validate any hardware as the approach. And that’s essentially what the UK also went with. The UK Supreme Court said we’re going to say that the threshold of patentability — or the exclusion to patentability — is simply overcome by the inclusion in a claim of any piece of hardware, whether it’s a processor or a piece of memory or whatever. It doesn’t matter. Any hardware makes the invention a technical invention. So it’s a really low threshold to consider. And they then went, well, actually, if we now align and harmonize with the European Patent Office sensibly, then we need to look at how we assess inventive step, which is the other thing that we raised with the Supreme Court. In fact, we probably raised it at other times and in all the other instances as well, but it came to a head at the Supreme Court. So the Supreme Court then also went a bit further and said, well, actually, whilst we do like the global approach to assessing inventive step for all fields of technology — whether it’s chemistry or biotech or electronics or software or AI — we use a test called Pozzoli. So that isn’t problem-solution. We don’t like problem-solution. We think it’s not codified in the European Patent Office. It’s just a mechanism that the EPO has come up with to try to objectively assess inventive step. We don’t particularly think that’s appropriate. We like our approach called Pozzoli. That’s it. So we’re going to say with Pozzoli, however, in order to actually understand — particularly in the context of mixed inventions having technical and non-technical features — it’s necessary for the examiner to undertake the so-called intermediate step, where you have to look at the interactions between features within a claim. The invention is defined by the claim. That’s what the act says. That’s what everyone understands. It’s the invention defined by the claim. So you look at the claim features and then you have to understand the interactions that take place. And even if they are between technical and non-technical features, if they bring about an overall technical effect when you consider the invention as a whole, then your claim should be good and you can assess it for classical inventive step. So that’s really where we’re at. There’s a lot to unpack there already. It’s probably a podcast in its own right, but that’s the positive history of where we’re at. And I can keep going if you wish me to for a second and talk about why I think this is — we’ll just contrast it quickly with the problem-solution approach at the EPO and COMVIK. So for inventions in the computer-implemented field, they use COMVIK and the problem-solution approach. The Supreme Court said, as I said, they don’t like problem-solution. I think the problem-solution issue is that it is also inherently pre-baked with hindsight because you have to look at the invention and then step back and exclude those features which are common. And then you formulate a problem based on the function that the claim achieves. And then you’re asking whether or not it would be obvious for a skilled person to arrive at the claimed invention, having been given that hindsight-developed problem. So COMVIK is not great by any means. And we know from a practical perspective that examiners are only too willing to look at a claim and simply line through features which they believe are non-technical, whereas they don’t actually look at the interaction of those features in the context of the claim as a whole. There is also a decision — very recent one actually, about a year ago — T 1249/22, where the Technical Board of Appeal told the examiners and the examining division, you cannot do this. It’s okay to have a claim directed towards an invention in a non-technical field, as long as the invention is directed to a technical solution of that problem. I think it’s paragraphs 11 and 12 or 10 of that decision that are worth looking at. But they’re saying that in all fields of technology, it doesn’t matter as long as the technical solution is about technology — therefore, you should be able to obtain a patent as long as there is a realistic and appropriate technical effect. Be careful actually, Bruce — I don’t mean technical contribution, I mean technical effect. There’s a reason for that distinction. Rolf Claessen: The non-technical features are nevertheless used to assess inventive step in the UK now after this decision, right? Bruce Dearling: Yes, that is the intermediate step. The decision says you must look at the invention as a whole. It’s the important thing. There are a couple of issues that arise out of this. The first one is that you have to provide context for the invention. The Supreme Court never provided any specific guidance about how we deal with the intermediate step or what the exact test is, which is in some respects fine. It seems to be fairly clear that you just have to engage your gray matter — your neurons — to work out what is going on in the real world. And once you work out what’s going on in the real world, what the benefits are, then you look at whether or not the actual implementation of the invention fundamentally has a technical flavor to it, which is not just coding, not just simple coding, but it does something smarter. There’s a real technical impetus. There’s a technical effect. Now that actually brings me onto something I’ve postulated or said. I think the intermediate step will follow something like what I’ve termed the holistic character test, which essentially is: work out what’s going on in the real world. Then once you’ve worked out what’s actually being achieved, what the benefits are, what the invention’s concerned with, then you ask the question, how am I achieving it technically? And how is there a technical effect? How does the technical effect arise? That brings out a couple of issues. The first one is that it’s actually about the word “contribution” because it depends on how the word is used. So if you look at head note one in COMVIK, it uses the word “contribute” — how the non-technical feature contributes to the invention. So that’s an additive inclusive concept. The UK IPO historically, and arguably at the moment today whilst they’re trying to retrain their 400 examiners — which this has caused them to have to do — their idea of contribution is this backward-looking concept. So technical contribution and technical effect, I think — although we mix them up and interchange them — are distinct. Technical contribution: you’re looking backwards. Technical effect is what you look at when you look forward into what’s going on. So this is subtle — it’s really subtle, but it’s important. And once you realize that you are actually looking for the technical effects, then you’re on much safer ground. It’s much more objective in terms of the assessment. This might be somewhat contentious, because it’s the way I’m looking at this, but I’ve been working on this a long, long time and thinking about it for probably decades, worryingly so. So technical contribution and technical effects are probably not the same, where they are interchangeably used to mean the same thing within existing decisions. Rolf Claessen: And in the beginning you said, now that Aerotel is dead basically, it’s more harmonized with the EPO’s approach. But what I take from the discussion now is that maybe — especially in view of the problem-solution approach — it’s not fully harmonized with the EPO’s approach at the moment, right? Or did the UK Supreme Court get something wrong, or was that a desired outcome from your point of view that this is not so completely harmonized with the EPO? Bruce Dearling: Well, the EPO — the any-hardware solution is fully harmonized, no doubt. So it’s now a question of inventive step under Article 56 or Section 3 of the Act. The EPC nowhere mandates the use of problem-solution. And we know that there are many different ways of actually assessing inventive step, including the concrete elaboration test from last year and problem-of-invention approaches. So there are numerous ways of assessing inventive step. So the UK says, “Pozzoli — we like Pozzoli.” Interestingly, I had a discussion with someone I probably can’t mention. They’re saying that the UK approach may actually be more permissive now. It might even influence how the EPO operates. So they may move away from COMVIK towards more of a Pozzoli approach, which basically says this: You identify the notion of the skilled person — step one. You identify the common general knowledge of that skilled person — step one B. You identify the inventive concept of the claim in question, where you construe it if you can’t work out what it is. You then identify what the differences are. And then you ask the question, is it obvious to the skilled person, given knowledge of the common general knowledge? This is entirely not artificial because, as I said beforehand, when you look at problem-solution, you are formulating a problem by backtracking from what the claimed invention is to a situation where you say, well, these are the common features and I’m going to project a problem to try and solve. Now that is already tainted with hindsight reasoning. It’s not safe, it’s not thoroughly objective. There is an inherent problem with this which sees good inventions cast by the wayside. Although it’s a preferred mechanism, it’s not fully baked. There are situations where examiners are inherently lazy, or they just simply use something like the requirements specification argument, which is just factual. It just demonstrates that they can’t be bothered to actually argue it properly or think about what the invention is. Sorry to any examiners listening to this, but this is just my personal view, that sometimes there are problems. I’m reminded of a quote from an EPI hearing I was at a long time ago, where the Legal Board of Appeal member said: “We understand that examining divisions can operate with a degree of mental laziness and that it’s too easy to throw too many things out of the basket when considering the issues of inventive step.” Now that one has stayed with me because you think — did someone just say that? And the answer is yes, they did. But it just goes to show that there is some tension between the TBA and the examining divisions, and they don’t always get it right. Rolf Claessen: So there might be a small difference now between the UKIPO’s future approach of assessing inventive step and the EPO? Bruce Dearling: Yeah, it might do. But the other interesting thing here — and thank you for pointing this out, I hadn’t entirely caught up with it, I’ve been traveling beforehand and I missed some of the UPC case law. So the UPC case law — in, was it — yeah, we talked about that. Rolf Claessen: Yeah. There was a decision in April, Abbott versus Sinocare. Bruce Dearling: Yeah, 901 of 2025. So a Court of Appeal decision from the UPC. It was APP_000000901, I believe, 2025. Decision 17th of April, hearing 27th of March. The UPC is not bound by — it’s a court. The European Patent Office is not a court, it’s an agency that administers and looks after the administrative rule of law. So the fact that this decision came out from the UK Supreme Court in February, and you see almost identical language used in the UPC decision, suggests that there is some alignment here, or some convergence in thought. Now, whilst the UPC decision also references G1/19 and uses problem-solution, there is enough — you’ve got to bear in mind that high-level courts do look at each other’s decisions. And this is really a question of influence and the desire to converge. So the fact that they’ve done this at this time is quite interesting. Again, I can’t quote someone directly from the EPO, although I would love to. They were saying — at a very high level — and they used the words “converge UPC practice towards UK Supreme Court practice on interpretation of the law.” So this may actually be happening in real time. Again, it would be wrong to actually refer to anyone by name, but it’s an observation that when I looked at the case, I can see why this is going ahead. And I can see why the judiciaries — they want to maintain independent judicial controls. They won’t reference the UK Supreme Court decision, not least because we’re not in the UPC. But if you look at the arguments in sections 106 and 107 of the UK Supreme Court’s Emotional Perception decision and head note one, you go — wow, this is very close. Rolf Claessen: Very close and nearly identical wording. Yeah. And the UPC also now uses non-technical features for assessing inventive step. Is that a problem for the EPO that has historically been aggressive in throwing out non-technical features for inventive step analysis? Bruce Dearling: Well, I think they really need to get to the situation — I don’t know — this holistic character test that I’m sort of proposing, where you really have to think about what the invention is achieving, and then look at how it’s technically being achieved. And then if you look at that again in the context of that other decision I mentioned — T 1249/22 — it says something like, in the case of an invention that amounts to a technical implementation of a non-technical method, provided the non-technical method does not contribute to the technical character of the invention. The board validated the approach of identifying the non-technical method and then goes through and says it’s patentable. There are decisions like this which suggest that examining divisions have to give it a bit more thought, because the Technical Board will realize that to satisfy the WTO requirements — which pretty much everyone is bound by — Article 27.1 TRIPS, which requires that you protect all fields of technology. And that means whether it’s data processing or business methods, because business methods can be patentable so long as they are implemented on a technical basis. That essentially seems to be what T 1249/22 is saying, although it doesn’t explicitly say “allowing business methods.” The exclusion is only “as such.” So does this decision, in combination with the Supreme Court case and the movement of the UPC, say: well, actually, let’s look at this properly? It requires objective assessments, not just superficial “let’s strike through that feature because I don’t like it, it looks non-technical.” Rolf Claessen: So are you hopeful that the EPO is adjusting and will reshape their case law in view of the UPC decision and the UK Supreme Court decision? Bruce Dearling: It’s a bit unfortunate that the corresponding UK case at the EPO was dropped by the applicants, because it was heading towards an examination hearing at the examining division. It would have gone to the TBA, and I’m sure it would then have gone from the TBA to the Enlarged Board. I’m pretty sure that’s the case. There is another case from the same client which will probably argue the same thing because the specs are almost identical. It’s just lagged in time. So is it going to change? I hope so, because I think the EPO have got it wrong — more often than not in this field. Well, maybe not more often than not — they get it wrong more times than they should do. Would I like to see it changed? Yes, I would, because I want the examiners to actually think about the technology as opposed to just — oh, it’s not — I don’t want to engage the gray matter. That serves no one. That doesn’t serve technology. That doesn’t serve industry. These patent rights are there for a reason. They are property rights. I’m referring to the award of the 2025 Nobel Prize for Economics — they are a core driver for society’s development. So the 2025 Nobel Prize was for something called creative destruction — the replacement of old technology with new — and it’s based on the patent paradigm. So all this stuff is coming to a head now. It’s just a question of how quickly the EPO actually catch up, and maybe they have something to catch up on. It’s just understanding that the examiners have to start to think. As I said, we’ve got the issues at the UKIPO where they’re going to have to retrain 400 examiners. Rolf Claessen: Yeah, right. Bruce Dearling: The Emotional Perception case wasn’t granted by the Supreme Court. They referred it back to the patent office for consideration under the intermediate step. So the patent office produced a response that I would describe as — I’d say arguably — not well reasoned, which I’ve filed the response to, which basically says you don’t really know what you’re talking about. What really worries me a bit is that I think they’re trying to introduce the Aerotel case through the back door. It’s backsliding. It’s a mechanism for trying to apply it in a different way or a different context, which would be wrong. I think they believe that the applicant will appeal this if they get a bad decision — they will appeal it back to the courts again via the High Court, Court of Appeal, Supreme Court route. I say maybe not. I say maybe the client will file what they call a judicial review, which is a nuclear option. That’s when you actually hold the Comptroller General of Patents to account and get full discovery of whether or not there’s internal documentation showing that they are deliberately circumventing the direction of the Supreme Court on the intermediate step. This is basically holding them to account and saying: if you’re not applying the intermediate step appropriately, you are in contempt of the law. So judicial review is a really serious thing to do, but it’s certainly something I would not exclude from consideration. We’ll see what happens. It’s not saying we’re just going to go through the courts and make them decide on this. We’re going to say you’re wrong. And there’s already enough evidence in the files to suggest that they are probably in contempt of court and they’re not applying the intermediate step appropriately. They may not know any better at the moment — they need to be guided — but the consequences for them are potentially severe. Rolf Claessen: I have another question for you. You were the instructing attorney — do you think the decision was perfect? What argument that you made was the most underappreciated by the court? And where do you think the judgment got it wrong, or was it all perfect? Bruce Dearling: No, it got 90% or 95% correct. The intermediate step is right. That’s the most important thing in the decision — it’s the intermediate step. The any-hardware thing — that’s logical, that makes some sense — but if people say “if the any-hardware rule is the important bit,” no it isn’t. It’s the intermediate step. That’s the important thing. Where do they go wrong? I think they went wrong because — and you’ve got to bear in mind that unlike German courts, I’ve got to be careful about how I express this — generally, as I understand it, and correct me if I’m wrong, but the judiciary in Germany on patent cases are generally more technically able. They’re normally technically qualified. I look at the Supreme Court justices and the Court of Appeal justices — we had one who was a humanities undergrad, one was a chemist. Good luck with trying to argue complex artificial neural network technologies, which are difficult even for me to understand. And I’ve been working in the field. They’re hard to understand. They require real understanding, real appreciation. They could say, well, actually we don’t need to look at the technology — but frankly, if you’re looking at the statutes and exclusions to patentability and asking what a computer program is, then you need to understand what these technical terms really are. And if you can’t, then the judgment is potentially flawed. Their finding that the neural network is a computer program is, I think, technically obtuse. You know that the Singaporean government — the Intellectual Property Office of Singapore — released about six weeks ago a consultation note to the Singaporean profession and population, asking: is the Emotional Perception case right, and do we need to adopt it into Singaporean national law? So this is direct soft power from the UK Supreme Court changing Commonwealth legislation and statutes. We’ll see what happens. But from what I’ve seen of a draft response from the attorneys, they’re saying essentially: we agree any hardware is right, the intermediate step is right. The assessment of the neural network as a computer program is wrong, or it just doesn’t make any sense. And I’ve made the same comments before in SIPA, in the relevant round in March. There’s a disconnect. I mean, it’s like they equate a computer program with being able to be run on an analog computer. Now, an analog computer has no central processing unit. An analog computer just has resistors and transistors and capacitors. So if they’re saying that an analog computer can run a program — that’s essentially what they’re saying in part of the judgment. Where is the program in an analog computer? And if they’re saying it’s in the values of the resistors and the capacitors, then that has implications for any circuit we’ve got — it’s potentially a computer program — which is just madness, because it doesn’t sit well with the legislation and decisions we’ve looked at over the last 50 years. This is a real problem. It may be a storm in a teacup because you can overcome the objections by having any hardware, but it’s an argument they shouldn’t have been making. It seems to be abstract legal argumentation which has little credibility in my personal view, although it’s now law. It may be that someone can take that, have an argument with the Supreme Court, get them to fix this. The other thing is the EPO looks at a neural network as a mathematical method, and the UK now says it’s a computer program. Neither is right. The EPO is wrong as well. If you look at the actual decision which they regularly quote — the Vicom case — if you actually read the claim and look at the case, you see that it doesn’t make a huge amount of sense. A neural network has applied mathematics in it. It can be based on a computer program because it’s required to set up the learning objectives and the loss function. Mathematical processes — it tweaks the weighting factors of neurons over the course of the training epochs. But at the end of the day, if the function performed by the neural network is new and it’s directed towards a technical implementation which is technically relevant, then it shouldn’t fail for being a mathematical method. And I think the EPO guidelines actually say that. Even recommendations — the UK court said that a recommendation is not technical. Well, actually it is, because it’s data processing, and you’ve got to work out how does the data processing work to provide an improved recommendation? Again, it goes back to the T 1249/22 decision. There’s a whole raft of these things which are left not entirely resolved. There’s enough here to keep someone busy for a few more years. Rolf Claessen: Right. So I have a question for you now that we’ve talked about the decision of the UK Supreme Court and the UPC — the Unified Patent Court — with very, very similar wording. What do you say are the three most important takeaways for patent practitioners in the US, in Europe, in the UK, before the EPO? Are there any things that you really want patent practitioners to take away from our discussion here? Bruce Dearling: Yeah, okay. So first: make sure the claim has some structure in it. You need to have any hardware. That’s number one — in terms of claim drafting. In terms of the description, you really have to understand what the invention is about. And you’ve got to make sure that you explain what function is achieved by what piece of hardware, kit or software. And if you do that — don’t nickel-and-dime this by writing the claim first — I would suggest that you run into problems. You need to understand what the invention is about. And you need to make sure that the description is complete and full to describe the functionality and the effects that are achieved in the real world. And if you can do that, then you’re on a much sounder basis — much, much stronger. There’s a much stronger foundation for this. So that’s two things. Is there a third one? That’s me being a bit cheeky, but I suppose I know what’s going on. Rolf Claessen: Yeah, but maybe the third takeaway is that maybe the EPO will rethink the way — at least how AI inventions are assessed for inventive step. Bruce Dearling: Well, as I said to you before, it could be that that’s the case. I don’t want to repeat myself again. The word “permissive” was used in a conversation I had with respect to the UK Supreme Court approach. COMVIK fundamentally still breaks with me and has done for years, because the way it’s set up and the way it’s applied distorts fundamentally what the invention is about. And until such time as that distortion is removed, there is a problem of objectivity versus subjectivity. And I think that’s really what the EPO has to grapple with. It’s not an easy thing to deal with, but maybe there are things going on. Bruce Dearling: It’s not an easy thing to deal with. I don’t know who’s going to argue it. It would have been useful for me to still have the original case up and running at the EPO because these arguments would have been fleshed out. I’m pretty sure they would have been referred to the Enlarged Board. We would have got it resolved. So it’s whether or not I can now work this into the existing case to try and get the examining division to — well, they will refuse, I suspect. And then it’ll go to the TBA. And then the TBA will have to look at this, hopefully with the referrals to the Enlarged Board. And then that fixes the problem on a national and international basis. Rolf Claessen: Yeah. Let’s see. [Laughs] Bruce Dearling: No, we don’t know. I mean, you might have a different view. What do you think? Do you think COMVIK is fundamentally right or fundamentally wrong? Rolf Claessen: Well, I’m not so much into AI inventions. I’m a chemist and I usually deal with chemistry inventions. But from the discussion that we had, I think that the EPO might rethink their position. I don’t know. Let’s see. Let’s hope so. Bruce Dearling: Well, they liked it. They liked problem-solution. It’s been with us for 25 years. It suggests that it’s a compromise. It’s not mandated by the European Patent Convention — that’s the point. It’s something they think works. And these things only work until such time as someone comes along and says, actually, you’re wrong, and this is the reason. Rolf Claessen: Let’s see if they choose a different route at least for AI inventions. So Bruce, thank you very much for your insight and for talking about the case that you were involved in with the UK Supreme Court. Where could people reach you if they have more questions about this field — basically patents, AI protection in the UK and Europe — and if they want to ask you more questions about this case? Bruce Dearling: Sure. Through the Hepworth Brown website or my LinkedIn profile, I suppose. The Hepworth Brown website has an email link. I’m trying to post things on it as well to try and provide a bit more context. But if people have fundamental questions on this stuff, then I’m happy to try and answer them. I suppose that I can be considered to be quite knowledgeable in the area. Rolf Claessen: Right. Certainly more than I am. [Laughing] Bruce Dearling: So I was fortunate. As a consequence of the work I’m doing, I was appointed last year to the WIPO Standing Committee on Patents and Privacy. That was discussed for the issues of where WIPO goes and what the direction of the problems are that we have in high-tech areas. So there seems to be some degree of understanding that I might know what I’m talking about. I think I probably do. Rolf Claessen: Thank you, Bruce. Thank you very much for being on IP Fridays. Bruce Dearling: My pleasure. Thank you very much, Rolf.
• 
  Interview with Brian McGinnis – Data as a Strategic Asset, Not a Compliance Burden – AI Governance and the Acceptable Use Policy – Website Tracking Tools and the Wiretapping Litigation Wave – IP Fridays Podcast – Episode 174 01.05.2026 34m

  My co-host Ken Suzan and I are welcoming you to episode 174 of our podcast IP Fridays! In today’s interview, Ken Suzan interviews Brian McGinnis, partner at Barnes & Thornburg and co-chair of the firm’s data security and privacy practice, about why companies need to stop treating data privacy as a compliance burden and start treating it as a core business asset. McGinnis argues that data is either a managed asset or an unmanaged liability, with no middle ground. But before we jump into this interview, I have news for you! The EPO saw a Record Year with 200,000+ Patent Applications in 2025:  German filings dropped 2.2% while China grew 9.7%, overtaking Japan for the first time. Germany remains Europe’s top patent nation but loses ground globally. SMEs and universities now account for nearly half of all Unitary Patents granted to European innovators. News from the UPC Court of Appeal: Non-Technical Features Count for Inventive Step. An April 17 ruling clarifies that all claim features must be evaluated in their combined effect, including non-technical ones. Companies with software-related or mixed-technology inventions pending at the EPO or UPC should reassess recent inventive step objections at the UPC in light of this decision. Nokia Withdraws UPC and Munich Suits After Global FRAND Settlement; Following a global FRAND rate-setting decision by the UK High Court, Nokia withdrew parallel suits against Warner Bros. and Paramount at the UPC and in Munich. One UK ruling resolved litigation spanning Germany, the UPC, the US, and Brazil simultaneously. China Abandons Anti-Suit Injunctions in SEP Disputes: After a WTO arbitration ruling from July 2025, China withdrew its practice of blocking SEP holders from filing suits abroad. The EU Commission continues monitoring compliance, since the former policy was largely informal rather than codified in statute. The Trump Administration has put 100% Tariffs on Imported Patented Pharmaceuticals: Based on Section 232, the Trump administration imposed 100% tariffs on patented drugs and biologics effective April 2, 2026, with a 120-day transition period until July 31. EU member states face a reduced rate of 15%. Generics and biosimilars are explicitly excluded. China Rejects 1.27 Million Trademark Applications in Three-Year Crackdown:  China’s CNIPA rejected over 1.27 million trademark applications and invalidated more than 3,300 marks, targeting so-called edge-ball marks designed to mislead consumers about product quality or origin. The announcement was made at an official press conference on April 23, 2026. Now let’s jump into the interview with Brian McGinnis! Brian McGinnis is a partner at Barnes & Thornburg and co-chair of the firm’s data security and privacy practice. In this episode of IP Fridays, he argues that companies treating data privacy as a compliance burden are missing the point entirely and leaving significant value on the table. Data Is Either an Asset or a Liability Most companies still treat their data as invisible and costless. They do not manage it the way they would manage a patent portfolio or a trademark. That, McGinnis argues, is a fundamental strategic error. Data is either a managed asset or an unmanaged liability. There is no middle ground. When companies invest in understanding what data they collect, how it is used, and who has access to it, they unlock opportunities to drive real revenue and growth. Done right, a data governance program is not a cost center. It is a foundation for trust, operational efficiency, and competitive advantage. One Program, Not Twenty With more than 20 US state privacy laws now in effect, and major economies worldwide introducing their own frameworks, building separate compliance programs for each jurisdiction is neither practical nor smart. McGinnis recommends a single, comprehensive governance framework designed around the core purpose and intent of privacy law, flexible enough to absorb new requirements as they emerge. Companies that threw together a quick program when California’s CCPA came into force in 2020 are now overdue for an upgrade. The goal is to move from reactive compliance to a mature, proactive program that positions the company ahead of the regulatory curve rather than perpetually catching up. Website Tracking Tools: An Underestimated Risk One of the fastest-growing areas of privacy litigation involves tracking technologies built into company websites: pixels, session replay tools, analytics scripts, and chat widgets. Legal teams are often entirely unaware of what IT or marketing has deployed. That gap is expensive. Plaintiffs’ attorneys are applying 1970s-era telephone wiretapping statutes, including the California Invasion of Privacy Act, to argue that collecting any personal information, including IP addresses, before a user has consented constitutes illegal interception. Demand letters are being sent at industrial scale, with settlements typically running between $10,000 and $20,000 per case. What makes this particularly difficult is that a company can be fully compliant with statutory privacy law and still face these wiretapping claims, because the legal theory turns on the timing of data collection rather than the existence of a privacy notice. Vendor Contracts: The Hidden Exposure Marketing and technology agreements are another major source of unmanaged data risk. When a company deploys a third-party tool that handles personal data, the underlying contract needs to define precisely who owns that data, what the vendor is permitted to do with it, and what obligations flow down to any sub-processors involved. McGinnis draws a direct parallel to IP licensing: owning valuable data and then handing it to a vendor under a poorly drafted agreement is the equivalent of signing a bad IP license. Data processing agreements need to cover ownership, use restrictions, sub-processor obligations, breach notification timelines, audit rights, and deletion obligations. Many companies simply do not have these terms in place. Without them, a vendor who suffers a breach of non-personal business information has no contractual obligation to disclose it. Consumer Rights Requests: Process Matters Privacy laws give individuals the right to access, correct, delete, and opt out of the use of their personal data. Responding to these requests effectively requires pre-built processes, trained staff, and the technical ability to locate and act on individual data across all systems and sub-processors. Most companies, before engaging in formal data mapping, are not in a position to do this reliably. Staff failing to recognize a deletion request as a legal data subject request and routing it through a standard customer service queue instead is one of the most common failures McGinnis sees. The consequences can include regulatory complaints and class action lawsuits, particularly when a company continues to send emails to someone who has already requested deletion of their data. A newer risk involves Global Privacy Controls: browser-level opt-out signals that regulators and courts are now treating as legally binding deletion and non-collection requests. Companies receiving these signals daily without acting on them face growing exposure under several state laws. AI Governance: Policy Before Tools Generative AI tools are now embedded across business functions, from contract review and customer service to content creation and internal search. McGinnis is direct: every company needs an AI acceptable-use policy, and the absence of one is not a neutral position. Without clear rules, employees will use unapproved or publicly available tools regardless, feeding proprietary and sensitive information into open models with no control over how that data is used or retained. He draws a precise parallel to patent law. Posting proprietary information into an open AI system carries the same risk as publishing it publicly, potentially destroying patentability. The distinction between closed, organization-specific AI systems and open, publicly accessible ones is something employees need to understand explicitly. Making compliance easier than non-compliance is the practical goal. The Regulatory Outlook: More Laws, More Enforcement McGinnis expects the regulatory landscape to continue expanding. The EU AI Act is already setting the direction, and several US states have introduced or are developing AI-specific legislation. The pattern mirrors what happened with data privacy: Europe leads, US states follow in a patchwork, and federal legislation remains uncertain. Enforcement of existing privacy laws is also intensifying. GDPR has been in force since 2018, CCPA since 2020, and regulators are now past the period of extended tolerance for companies that are still catching up. Companies with immature compliance programs should expect less patience from regulators going forward. McGinnis closes with a clear point of view: if you have to comply anyway, get credit for it. A well-built governance program is a trust signal to customers, a sales asset, and a foundation for responsible AI use. Compliance done right is not a tax. It is a differentiator. The Full Transcript: Ken Suzan: Our guest today on the IP Fridays podcast is Brian McGinnis. Brian is a partner with Barnes and Thornburg and a founding member and co-chair of the firm’s data security and privacy law practice group. Brian serves as a member of the intellectual property department and the internet and technology practice. Brian is a Chambers Global and national ranked privacy and data security attorney, a certified information privacy professional, and the firm’s chief privacy officer. Brian brings nearly two decades of experience at the intersection of law and technology. Brian advises on a wide range of technology-driven legal matters, including privacy and data security, intellectual property, artificial intelligence, corporate transactions, software, and internet law. His deep understanding of privacy and technology law enables him to guide clients through rapidly evolving regulatory and operational challenges. Welcome Brian to the IP Fridays podcast. Brian McGinnis: Hey, thanks Ken. I appreciate it. Great to be here and thanks for having me. Ken Suzan: Excellent. Brian, the C-suite tends to treat data privacy as a compliance tax, something to hand off to legal and forget about. But when you see how companies actually get into serious trouble, what’s really going on? Brian McGinnis: Yeah, well, it’s a great place to start Ken and looking forward to the conversation today covering some of these privacy issues and AI issues, which I found in my own practice is really bled into the straight privacy stuff. Companies can’t really handle these things in a silo anymore. It’s really about managing and coming together as a coherent program for governance for the organization. I think if you do that right, the good news is we can become revenue generators and show growth for the company and not just compliance centers and a compliance tax. But I think the core problem that we face in working with most companies is that a lot of companies still treat their data as invisible, costless. They don’t treat it, in other words, like they would a patent portfolio or trademark or other IP portfolio. It’s just not managed as an asset in the ways that we’ve seen more sophistication around IP. And it really should be. Data is either a managed asset for the company or it’s an unmanaged liability. There’s really not an in between. And so for those companies that haven’t gotten their arms around all this data and what can be done with it, I think they’re really missing an opportunity. Having an understanding of what data the organization is collecting, how it’s being used, and having the proper governance around it really unlocks a lot of opportunity for use of that data in new ways — ways that can drive revenue and growth for the company. So I approach privacy not just about compliance, not just about avoiding penalties or doing it because some law out there says that we have to do it. It’s really about knowing and controlling one of the company’s core assets. And if you’re not doing that, you’ve got unmanaged data that you’re not getting value out of and that potentially could be a huge liability for the company. Managed well, it really supports trust, efficiency, and growth of the organization. Otherwise, I think it’s a missed opportunity. Ken Suzan: Yes, well said. Now let’s talk about state laws. With 20-plus state privacy laws now in effect, how should companies build a program that actually works across the board without starting over every time a new state law kicks in? Brian McGinnis: Yeah, so the first answer is don’t build 20 separate programs. This really goes back to having a comprehensive, sophisticated, well thought out program that really takes into account not only the 20 state laws, but obviously we’ve got international exposure with laws like GDPR and upcoming privacy laws internationally. Most of the larger economies in the world have some form of laws around privacy and AI. So you can’t really anymore build programs that account for the one, two, three, four, five different laws that in the past we had experience with — where you could just treat California as its own thing, treat New York as something else, and treat Europe as something else. The laws and the pace of these have really forced companies into having comprehensive programs. I don’t expect to see fewer laws. You’re only looking at potentially additional state laws, additional federal laws here in the US, and then certainly additional laws throughout the world. So a lot of the strategy these days is not only where are we today with these laws, but how do we set up our governance program in a way that really cuts to the core of the purpose and intent behind these laws so that we can be better prepared when new laws come about in the future. Historically, at least in the US, most companies just haven’t had laws that force them into compliance postures. As these laws have started to come along, a lot of companies have been playing from behind and saying, oh, the California Consumer Privacy Act, I just read about it and it goes into effect next week — let’s throw something together and call that our compliance program. We’ve now got years of these laws being in place, CCPA came into effect in 2020, and what we’re seeing much more of are companies looking to get more sophisticated in their programs and stop feeling like they’re always rushing to catch up. The goal is to level up their program, going from level one — constantly playing from behind — to level two and then level three, so that they really feel like they’re on top of it and have a sophisticated program that not only accounts for all the various privacy requirements that come at them, but also positions them to take advantage of the data and all the things that come along with having a good governance program. Ken Suzan: Brian, there’s an explosion of litigation targeting something most companies barely think about — the tracking tools baked into their own websites: pixels, session replay tools, analytics scripts, chat widgets, the list goes on and on. What’s happening, Brian, and what should companies do? Brian McGinnis: Yeah, and I think a lot of companies — the executives, the business teams — don’t even realize a lot of these tools are on their sites. IT deployed them years ago, the web team deployed them, marketing teams are constantly using them and certainly have a good understanding of it. But in a lot of cases, legal has never touched them and has no idea what’s happening on the website. We also see a lot of cases of companies who, even if they’re generally aware these tools are in use, aren’t aware what other teams are putting on the site or what those pieces of technology are tracking. And that gap can be really expensive. What we’re seeing right now — and this has been a trend for a number of months now and is really continuing to pick up steam — is a series of what I call gotcha lawsuits, where you have some enterprising plaintiffs’ counsel who have taken a look at some 1970s-era telephone wiretapping laws, including a law called CIPA, the California Invasion of Privacy Act, passed in the 70s with the idea that you shouldn’t be able to wiretap people’s telephone conversations. They’ve taken that and applied that theory to the internet. The way it works is: if a website has some sort of cookie, pixel, or other tracking technology on it that collects personal information about an individual — and that can be as simple as an IP address and device ID — and if that collection occurs as soon as the individual shows up at the website, prior to them being able to have notice provided to them or opt in and consent to that collection, then the theory under these lawsuits is that it constitutes wiretapping. We see a lot of this with the Meta pixel, with LinkedIn pixels, and the like. What they’re doing is effectively showing up and suing, threatening to sue, trying to take you to arbitration, depending upon what’s included in the company’s existing privacy notice. If you don’t have a cookie banner, if you don’t have a cookie notice, if you’re not getting opt-in on these things, they’re leaning on those failures and effectively trying to force you into a position where you are forced to make a settlement. Because the cost to litigate one of these to their conclusion would be expensive, whereas a lot of these cases will settle for $10,000 to $15,000 somewhere in that range. They’ve got technology crawling the internet looking for websites that don’t have these risks covered, sending demand letters and then collecting settlements, $10,000 to $20,000 at a time. It’s been very profitable for them and a very dangerous thing for our clients. And it’s a bit unusual because you can be fully compliant with the statutory privacy laws that require notification of the use of tracking technologies and cookies and banners — and still be subject to these lawsuits because of the wiretapping arguments being made. The timing wherein the data is collected from the individual could still subject you to these lawsuits. So it’s a tricky problem, one that I hate seeing companies get hit with and one that we spend a lot of time helping companies avoid. Ken Suzan: Yes, let’s talk about contracts, Brian, because I know you work with contracts probably on a daily basis. A lot of data risk lives inside vendor and technology agreements — the contracts companies sign with marketing platforms, analytics providers, cloud infrastructure, and SaaS tools. What should those agreements actually contain? Brian McGinnis: Yeah, so there’s quite a lot of things. You’ve got a world where marketing is constantly under pressure to learn more about their customers. The way they can do that is through any number of different tools and data gathering techniques, and we have all this technology available to help marketing and sales do better at their jobs. But we, at least in this country, got to a position where people really felt like they lost control of their information and their data. And so these privacy laws came along and really started to provide more rights to individuals — to have an understanding of what data exists within various companies that they do business with, who they’re sharing it with, trading it with, selling it to for advertising purposes; to have the right to opt out; the right to delete their information. Not checking through the agreements by which these teams are implementing these tools is a huge issue for companies. As part of an overall compliance program, having some kind of process where people who are aware of the growing numbers of privacy laws are reviewing these marketing contracts to make sure they are aligned with that program and aligned with those laws is absolutely critical. To talk about IP, given the IP Fridays audience: it’s kind of the equivalent of having really bad IP licenses. In other words, you own and control this information and data, and you need to control what the other side can do with one of your most valuable assets — or you’ve effectively given it away. So thinking about it in that way could be useful. In terms of more specifics: a big one is ownership of the data. The agreement itself may or may not have anything that addresses data. If there’s personal information involved, you probably need what we call a data processing agreement or addendum — a DPA — that specifically controls what that third party is able to do with that data, how they’re able to use it, whether they’re able to share it, whether they’re able to get value out of it on their own, or if they’re only allowed to be what we call a service provider, just providing services to the business that hired them. There needs to be explicit prohibition on retaining, using, and disclosing personal information for any purpose other than performing the exact services in the contract. Whether or not they’re permitted to sell or share data under CCPA terms is another key point. Certification that the provider will comply with any restrictions and security requirements you have on your data, and making sure those obligations flow down to any sub-processors they might use. You hire Company A, but Company A works with Company B and C to provide parts of their service. You’re effectively responsible for the protection of personal information throughout its lifecycle. A couple of other key provisions: breach notification triggers and timeline. It’s very possible under a lot of agreements that one of your vendors can suffer the world’s worst hacker breach and have no legal obligation to tell the company that hired them about it — unless there’s personal information involved. State data breach laws apply to personal information, not to other types of sensitive business information. Unless you have a contract that explicitly requires notification, there’s a good chance that vendor may not want to disclose it. And then other things like audit rights and deletion obligations go in there as well. Ken Suzan: Certainly a lot to cover. Let’s talk about privacy laws and consumer rights. Privacy laws give consumers real rights — to access their data, correct it, delete it, and opt out of how it’s being used. Most companies have a process for this on paper. What does it actually take to get it right, and what happens when it breaks down? Brian McGinnis: Yeah, it takes pre-planning. It takes a process. Some companies receive many more of these requests than others — some B2B companies receive none or a couple per year, while companies heavily involved in marketing to consumers might receive tens or hundreds a day. To be able to respond to these effectively and efficiently requires some forethought. It requires policy and procedure internally to be set up, and it requires the education of the team. Some of the common ways we see this go wrong: staff isn’t trained to know the difference between what we call a DSR — data subject request — versus a regular customer service inquiry. Maybe somebody submits what would be construed by law to be a deletion request and you just put it into your normal customer service response flow — and then you’re potentially missing timelines and the like. There also need to be systems in place to respond in accordance with the individual’s rights. Somebody submits a request saying, you have my information — what information do you have about me? Can your company determine that right now? Can you look through all your systems and down the line to all the processors and sub-processors you’ve worked with and hired, and identify what information you have about that individual? Most companies, until they engage in a governance program and data mapping, are at a real disadvantage to be able to do that. Why is that a problem? Because two weeks from now your company could be sending emails to the individual who just told you to delete their data, and they get really upset. That’s when they go and complain to regulators or start class action lawsuits. The lack of planning can be really, really expensive for a lot of companies. Making sure you’ve got some kind of process to understand what’s coming in, that the people receiving those requests know the difference between a regular customer service request and a data subject request, and that it gets to the appropriate parties for action — all of that is really, really key. Another one that we’re seeing pop up is what we call GPC, or Global Privacy Controls. It used to be that people would say “do not track” in their browser and most companies would ignore those signals. Now we’ve got advancements in law and browser technology where the browser you’re using to visit a company’s website sends a signal saying, opt me out of this. Regulators and courts are construing those as deletion requests, as opt-out requests that companies are now required to respond to. If your company hasn’t gone through an exercise to understand that, and is probably receiving GPC opt-out requests on a daily basis without acting on them, there’s some exposure there. At the end of the day, a lot of this really is about getting the appropriate people from across the organization — really each department — around a table, figuring out what data you collect, how you use it, who you share it with, where it comes from. That starts the process of your data map. Then you set about mapping that to the various legal requirements and figuring out how to respond, how to make it easy for people to exercise their rights so they’re not complaining, not suing, not going to regulators. Letting these squeaky wheels out of the process — the ones who don’t want you to be processing their information any longer — is really key. Ken Suzan: Let’s switch gears a bit and talk about AI. I know we’re hearing about it every day. Generative AI tools are now embedded in how companies work — contract review, customer service, content creation, internal search. Before employees start using these tools with customer data, confidential business information, or proprietary content, what has to be in place first? Brian McGinnis: Yeah. I think we’re long past the days when companies provided individuals access to corporate technology — computers, devices, and the like — without having some kind of acceptable use policy that governs that. We don’t want you downloading stuff that could harm our network or create security issues. We don’t want you using our technology in certain ways, whether that’s a BYOD policy or just general use of company internet or company devices. An AI acceptable use policy is really a continuation of those. Every company needs to have an AI acceptable use policy. Period. In my opinion, things like that are as important as the fire escape policy out in the hallways for these companies. I can tell you with absolute certainty: if your organization has not provided rules to your employees and personnel about the use of AI, what they can and can’t use — or if you’ve said you can’t use any AI — the personnel is still using AI. They’re just not using any approved tools. They’re probably using their own private tools that they subscribe to, or even worse, tools they don’t pay for, in which case they’re putting company information into a wide open public model. The more companies can do to think through this ahead of time, reduce it to policy, and then train and educate people on that company’s particular policy, the better. You need to make it easier for people to comply than not comply. An acceptable use policy should talk about: here’s how we can and can’t use it, here’s the data that should and should not go into the system, here’s some proper uses of AI, here’s some data that’s on the fringe that we need to keep out — more sensitive information, proprietary information, etc. Making sure you’re funneling and educating people about the difference between closed systems and open systems. In other words, this is a tool that only looks at our organization, only uses the data within a certain box, and is not publicly available — the AI system is not training on our data. You have more leeway to put more sensitive information into those types of systems than you do with open systems which potentially lose control of your data. It’s almost like a patent consideration in terms of keeping information secret. If something potentially has some patentability that you want to seek to file in the future, you can’t just go out and post it publicly and use public search engines and all this other stuff at the risk of exposing it. Similar concepts here — really getting a handle and control over what tools people can use and providing some education to them about how the company wants to think about what’s acceptable and what’s not in those uses is really the key starting point. Ken Suzan: Very useful information. Indeed, we’re coming towards the end of today’s episode. One final question for you, Brian. Where do you think we’ll be two years from now in this developing field, and how best for companies to stay ahead of the curve? Brian McGinnis: Yeah, this kind of takes us full circle, Ken. I think it’s kind of back to the beginning comments about the privacy space — and we’ve only got more of these laws coming. It’s still a developing field. We’re still really in the early days of enforcement. I mean, GDPR has been around since 2018, CCPA in the US really kicked us off in about 2020, and so there’s been a settling-in period as companies adjust and get used to having these laws and get compliance programs in place at various levels — from not at all prepared to highly sophisticated. We’re still pretty early on in terms of enforcement of these things. We’re already starting to see enforcement of more egregious violations of these various laws, and we’ll only continue to see more enforcement as the laws exist currently and as they continue to come along. The days of not having to pay attention to this are kind of over. And I always tell clients: if you’re going to have to do these things, you’re going to have to be compliant — you might as well get credit for it. By which I mean, let’s put all the policies in place, let’s do all the compliance activities, let’s have a sophisticated governance program, but then let’s also use that as a sales tool, as a way to help grow the company, as a way to sell new products and gain trust and earn trust with our customers — so that they know when they’re doing business with us, or when they’re giving us information, or when they’re using our AI tool, that we respect that and are going to take care of their information and have the structure in place internally to be able to do that. With respect to AI, what I’m seeing is very similar to what we have seen with the growth of privacy law — again led by Europe, with the EU AI Act in this case. Now you’ve got a handful of states in the US that already have AI laws, and others that are interested in continuing to roll those out. There’s friction with the federal government around whether there’s going to be a comprehensive law there. Like the privacy space, you’ve got varying factions — some of which want to develop really quickly with very little guardrails, others which say we’re threatening the future of humanity if we don’t get those guardrails in place. I think ultimately, at least in the US, we’re going to end up with another patchwork of AI laws for the foreseeable future that we’ll have to navigate. So really having a company position, a company philosophy of how do we handle all these various laws, how do we treat people’s data, how do we get our arms around it, how do we respond to whatever legal rights they currently have, and what principles do we put in place so that we can adapt for the future — and then, once we’ve done those things, how do we actually get value out of this and move the business forward. So it’s not a compliance tax, but a benefit to the business. That’s the end goal here, and I think the North Star for us. Ken Suzan: Fantastic, Brian. This has certainly been a very comprehensive interview. Really appreciate you taking the time to talk about it with us here on the IP Fridays podcast. Brian McGinnis: Happy to do it, Ken. Thanks for asking me and good to see you. Thank you.
• 
  Interview with Deborah A. Hampton – President of the International Trademark Association – 2026 INTA Annual Meeting – Anti Counterfeiting – Presidential Task Force for Unifying IP Protection & Enforcement Strategy – IP Fridays Podcast – Episode 173 27.03.2026 25m

  Register for the 2016 INTA Annual Meeting at https://inta.org !! In a recent episode of the IP Fridays podcast, I spoke with Deborah Hampton, President of the International Trademark Association (INTA) and Global Brand Enforcement and Trademark Team Leader at the Chemours Company. I am Rolf Claessen and my co-host Ken Suzan and I are welcoming you to episode 173 of our podcast IP Fridays! Today’s interview guest is Deborah Hampton. She is the Global Brand Enforcement & Trademark Team Leader at The Chemours Company and is currently serving as the president of the International Trademarks Association. But before we jump into this interview, I have news for you: The US Department of Justice and the USPTO filed a joint statement supporting the right of Non-Practicing Entities (NPEs) to seek injunctions against patent infringers. This position challenges established post-eBay case law, which has made it difficult for NPEs to obtain injunctive relief. The UPC Court of Appeal ruled that security for costs can be provided through specialized insurance policies. This significantly lowers the financial barriers to bringing patent actions at the UPC, as companies no longer need to deposit large amounts of liquid capital as security. Huawei has filed a new lawsuit at UPC Mannheim against twelve Walt Disney Group companies (Ref. UPC-CFL-0000352/2026), asserting EP 3 211 897 relating to transform coefficient coding under the HEVC standard used by Disney+. Two additional suits were filed at Munich Regional Court I. In a parallel action, Huawei is suing Meta and Facebook at the UPC over EP 3 471 419, covering video compression in end devices. This continues Huawei’s strategy of pressuring streaming and platform providers into licensing its SEP portfolios. In a landmark first, the UPC Court of Appeal has referred a legal question to the European Court of Justice (ECJ): whether the UPC has jurisdiction over defendants without a seat in a UPC member state, provided a co-defendant is domiciled within the UPC territory (“long-arm jurisdiction”). The case arose from a dispute between Dyson and Chinese competitor Dreame; the first-instance injunction was simultaneously extended to cover newer Dreame hair dryers. For German companies, this signals a gradual expansion of UPC jurisdiction beyond its territorial borders, with significant implications for cross-border patent strategy. And now let’s jump into the interview with Deborah Hampton: Our conversation covered one central question:How must intellectual property enforcement evolve in a world that is more global, digital, and complex than ever before? A Career Built on Intellectual Property Deborah Hampton has spent more than four decades in the field of intellectual property. She began her career as a paralegal in a small IP firm in New York and quickly discovered her passion for the subject. Over the years, IP has taken her around the world. She has worked with leading professionals, governments, and institutions. Her experience reflects a key truth: IP is not a narrow legal discipline. It is a global ecosystem that connects law, business, innovation, and policy. Counterfeiting: A Much Bigger Problem Than Many Think One of the key topics in our discussion was counterfeiting. Many people still see counterfeit goods as a minor issue—cheap handbags or fake T-shirts bought on holiday. But the reality is far more serious. Counterfeiting creates real risks for consumers because products often bypass safety and quality standards. It damages trust in brands and undermines legitimate marketplaces, especially online. The economic impact is also significant. Companies lose revenue, innovation slows down, and jobs are affected. Smaller businesses suffer the most because they often lack the resources to fight counterfeiting effectively. Perhaps most concerning is the link to organized crime. Counterfeiting is not an isolated activity. It is often part of larger illegal networks. From Deborah Hampton’s perspective, effective enforcement must address both supply and demand. That includes stronger border measures, better online enforcement, and, importantly, consumer education. The Core Problem: Fragmentation in IP Enforcement A central theme of the interview was fragmentation. Many companies approach IP protection in silos. Legal teams, cybersecurity experts, business units, and external advisors often work separately. Even when they pursue the same goal, their efforts are not aligned. This leads to inefficiencies, missed opportunities, and unnecessary risks. To address this, Deborah Hampton has launched a Presidential Task Force at INTA. The goal is to create a unified approach to IP protection and enforcement. The idea is simple but powerful:Bring all stakeholders together and align strategy, enforcement, and measurement. This includes not only companies and their advisors but also regulators, courts, customs authorities, and IP offices. Only a coordinated approach can effectively address global challenges like counterfeiting. The Changing Role of IP Professionals Another important insight is how the role of IP professionals is changing. In the past, IP work was often reactive and focused on legal protection. Today, expectations are much higher. IP professionals are now expected to: Act as strategic advisors to the business Align IP with commercial goals Manage global and digital portfolios Use data to make better decisions At the same time, new technologies such as artificial intelligence are transforming how IP is managed and enforced. These tools create efficiencies but also raise new legal and strategic questions. Budget constraints add another layer of complexity. Teams must achieve more with fewer resources. In short, IP professionals must become more strategic, more integrated, and more business-focused. Why the INTA Annual Meeting Matters We also discussed the upcoming INTA Annual Meeting in London. For many in the field, this event is the most important gathering of the year. It brings together more than 10,000 professionals from around 140 jurisdictions. According to Deborah Hampton, the value lies in three areas: First, the return on investment is exceptionally high. The combination of education, networking, and business development is difficult to replicate elsewhere. Second, the educational program is extensive. It covers law, policy, technology, and the business of intangible assets. Third, the networking opportunities are unmatched. The meeting creates a unique environment where a year’s worth of work can be done in a single week. At the same time, Hampton addressed a sensitive issue: attending without registering. She made it clear that this practice undermines the entire system. Without proper support from participants, events like this would not be possible. A Clear Message for the Future If there is one key takeaway from the conversation, it is this: Intellectual property protection must become more coordinated, more strategic, and more closely aligned with business objectives. The challenges are growing. Counterfeiting is more sophisticated. Markets are more global. Technology is changing rapidly. But the opportunity is also clear. By breaking down silos and working together across functions and borders, companies can protect their IP more effectively and create real value. For IP professionals, this means stepping into a broader role. Not just as legal experts, but as strategic partners in the business. Rolf Claessen: Today’s guest on the IP Fridays podcast is Deborah Hampton. If you don’t know Deborah, she’s the global brand and enforcement and trademark team leader at the Chemours company and is currently serving as the president of the International Trademark Association. Thank you for being on our podcast IP Fridays, Deborah. Deborah A. Hampton: Thank you. Thank you for having me. Rolf Claessen: So you have been in the field of IP for more than 25 years now. How did you get there and where did it lead to you? Deborah A. Hampton: I’ve actually been an IP practitioner for 43 years. I started at a small IP firm in New York; it was my first paralegal position, and I fell in love with IP from the very beginning. This field has allowed me to travel the world meeting some amazing and brilliant colleagues as well as high-ranking government, judicial, and IPO officials. I’ve also worked extremely hard to stay abreast of trends, statutes, precedent cases, and practices that enhance the way we do our jobs. Rolf Claessen: Wow. That sounds really exciting. I didn’t know you’ve been in the field so long. Great to hear that. So I’m personally very interested in the fight against counterfeit goods. Why, in your personal opinion, is it so important to fight counterfeit goods? Maybe you can share your thoughts on why it is important and a little bit about how you do it. Deborah A. Hampton: There are a number of factors that I always take into consideration when it comes to counterfeit goods. Starting with consumer safety, counterfeits often bypass safety and quality standards, putting consumers at real risk. Then there’s consumer trust; fake goods undermine confidence in brands and legitimate marketplaces, especially online. Economic harm is another factor; counterfeiting drains revenue from lawful businesses, weakens innovation, and ultimately costs jobs. Smaller businesses (SMEs) are hit the hardest because they lack resources to combat fakes at scale. The factor that scares me the most is organized crime, as counterfeiting fuels criminal networks and is linked to broader illicit activity. There is also the issue of fair competition, where fake goods distort markets by undercutting compliant, responsible producers. Finally, strong enforcement protects the integrity of the IP system and the trademarks that drive investment, innovation, and growth. It is important to combat the production, sale, and demand for counterfeit goods. At INTA, our anti-counterfeiting priorities focus on customs and border measures, criminal enforcement, online counterfeiting, and consumer education. Our Anti-Counterfeiting Committee leads initiatives to address the production and sale of fakes by monitoring worldwide developments in treaties and legislation and proposing policy recommendations to the board. We also partner with stakeholders to promote cooperation across agencies and borders. Additionally, the Unreal Campaign Committee addresses the demand for counterfeit goods by educating young consumers ages 14 to 23 about the importance of brands and the dangers of fakes. I remember being that age and wanting low-priced goods that looked good, but now I realize I probably wasn’t always getting genuine products. Rolf Claessen: Yes, that helps me explain to friends who buy fake clothes on holiday in Turkey and don’t realize the harm they are doing. You’re also on the presidential task force for unifying IP protection and enforcement strategy. Can you tell us more about who is part of this task force and what the agenda is? Deborah A. Hampton: When I was nominated to become an officer, I immediately wondered what my presidential task force topic would be and what I would wear for the opening ceremonies. The 2026 task force is titled “Unifying Intellectual Property Protection and Enforcement Strategy”. The goal is to eliminate value leakage and risk caused by fragmented approaches to IP protection. We want to deliver a unified global operating model that aligns strategy and enforcement, allowing organizations to work smarter and quantify their impact across all jurisdictions. Many organizations, including my own, currently operate in disconnected silos that sometimes work at cross purposes. The challenge is to maintain internal coordination across all intangible-related aspects. We have many stakeholders—business, security, cybersecurity, outside counsel, customers, the judiciary, and IPOs—all striving for the same goal, but the road we take is not always unified. I hope to build a strong cross-functional partnership focused on protecting all forms of IP, including patents and designs, not just brands. Rolf Claessen: Right, IP includes patents and designs and everything. Most importantly, you are this year’s INTA president. What is your agenda for the year and what do you want people in the field to realize? Deborah A. Hampton: As president, I chair the board and steward our strategy and governance. I am also an ambassador, representing INTA globally to IPOs and government officials. My agenda has three pillars. First is the 2026–2029 Strategic Plan, which is the roadmap for our future. Second is my Presidential Task Force on unifying IP strategies. Third is volunteer mobilization; with a new committee structure in 2026, I want to energize our volunteers and recognize their contributions. I want people in the field to prioritize mentorship and professional development for the next generation. We need to ensure young practitioners are prepared to lead. I also want them to embrace the unified approach to IP protection we are advocating. Rolf Claessen: That’s a powerful vision. Thank you so much for sharing your insights and for the work you’re doing with INTA. Deborah A. Hampton: Thank you again for the opportunity. I really enjoyed the interview
• 
  AI is Becoming the World’s Most Powerful Creative Tool—But Who Owns What It Creates? – Interview with Co-Founder & CEO of Inception Point AI, Jeanine Wright, and Mark Stignani, who is Partner & Chair of Analytics Practice at Barnes & Thornburg LLP – IP Fridays Podcast – Episode 172 27.02.2026 39m

  I am Rolf Claessen and together with my co-host Ken Suzan I welcome you to Episode 172 of our podcast IP Fridays. Today’s interview guests are Co-Founder & CEO of Inception Point AI, Jeanine Wright, and Mark Stignani, who is Partner & Chair of Analytics Practice at Barnes & Thornburg LLP. https://www.linkedin.com/in/jeaninepercivalwright https://www.linkedin.com/in/markstignani Inception Point AI But before the interview I have news for you: The Unified Patent Court (UPC) ruled on Feb 19, 2026, that specialized insurance can cover security for legal costs. This is vital for firms, as it eases litigation financing and lowers financial hurdles for patent lawsuits by removing the need for high liquid assets to enforce rights at the UPC. On Feb 12, 2026, the WIPO Coordination Committee nominated Daren Tang for a second six-year term as Director General. Tang continues modernizing the global IP system, focusing on SMEs, women, and digital transformation. His confirmation in April is considered certain. An AAFA study from Feb 4 reveals 41% of tested fakes (clothing/shoes) failed safety standards. Many contained toxic chemicals like phthalates, BPA, or lead. The study highlights that counterfeiters increasingly use Meta platforms to sell unsafe imitations directly to consumers. China’s CNIPA 2026 report announced a crackdown on bad-faith patent and trademark filings. Beyond better examination quality, the agency will sanction shady IP firms and stop strategies violating “good faith” to make China’s IP system more ethical and innovation-friendly. Now, let’s hear the interview with Jeanine Wright and Mark Stignani! How AI Is Rewiring Media & Entertainment: Key Takeaways from Ken Suzan’s Conversation with Jeanine Wright and Mark Stignani In this IP Fridays interview, Ken Suzan speaks with two repeat guests who look at the same phenomenon from two angles: Jeanine Wright, Co-Founder & CEO of Inception Point AI, as a builder of AI-native entertainment, and Mark Stignani, Partner and Chair of the Analytics Practice at Barnes & Thornburg LLP, as a lawyer advising clients who are trying to use AI without stepping into a legal (or ethical) crater. What emerges is a clear picture: generative AI is not just “another tool.” It is rapidly becoming the default infrastructure for creative work—while the rules around ownership, consent, and accountability lag behind. 1) What “AI-generated personalities” really are (and why that matters) Jeanine’s company is not primarily “cloning” real people. Instead, Inception Point AI creates original, fictional personalities—characters with backstories, ambitions, and evolving arcs—then deploys them into the world as podcast hosts and content creators (and eventually actors and musicians). Her key point: the creative work still starts with humans. Writers and creators define the concept, tone, audience, and story engine. What AI changes is speed, cost, and iteration—and therefore what is economically feasible to produce. 2) The “generative content pipeline” isn’t a magic button A recurring misconception Ken raises is the idea that someone “pushes a button” and content pops out. Jeanine explains that real production looks more like a hybrid studio: A creative team defines character, voice, format, and storyline. A technical team builds what she calls an “AI orchestration layer” that combines multiple models and tools. The “stack” differs by format: the workflow for a long-form audio drama is different from a short-form beauty clip. This matters because it reframes AI content not as a single output, but as a pipeline decision: which tools, which data sources, which QA, and which governance steps are used—and where human review happens. 3) The biggest legal questions: origin, liability, ownership, and contracts Mark doesn’t name a single “top issue.” He describes a cluster of problems that repeatedly show up in client conversations: Training data and “origin story” Clients keep asking: Can I legally use AI output if the tool was trained on copyrighted works? Even if the output looks new, the unease is about whether the tool’s capabilities are built on unlicensed inputs. Liability for unintended harm Mark flags risk from AI content that inadvertently infringes, defames, or carries bias. The legal exposure may not match the creator’s intent. Ownership and protectability He points to a big gap: many jurisdictions are still reluctant to grant classic IP rights (copyright or patent-style protection) to purely AI-generated material. That creates uncertainty around whether businesses can truly “own” what they produce. Old contracts weren’t written for AI A final, practical point: many agreements—talent contracts, author clauses, data licenses—predate generative AI and simply don’t address it. That leads to disputes about scope, permissions, and—crucially—indemnities. 4) Are we at a tipping point? The “gold rush” vs. “next creative era” views Jeanine frames AI as “the world’s most powerful creative tool”—comparable to previous step-changes like animation, special effects, and CGI. For her, the strategic implication is simple: creators who learn to use AI well will expand what they can build and test, faster than ever. Mark’s metaphor is more cautionary: he calls the moment a “gold rush” where technology is sprinting ahead of law. Courts are getting flooded with foundational disputes, while legislation is fragmented—he notes that states may move faster than federal frameworks, and that labor agreements (e.g., union protections) will be a key pressure point. 5) Democratization: more creators, more niche content, more experimentation One of the most concrete themes is access. Jeanine argues AI will: Lower production barriers for independent filmmakers and storytellers. Reduce the need for “hit-making only” economics that dominate Hollywood. Make micro-audience content commercially viable. Her example is intentionally niche: highly localized, specialized content (like a “pollen report” for many markets) that would never have made financial sense before can now exist—and thrive—because the production cost drops and personalization scales. 6) Likeness, consent, and “digital performers”: what happens when AI resembles a real actor? Ken pushes into a sensitive area: what if someone generates a performance that closely resembles a living actor without consent? Mark outlines the current (imperfect) toolbox—because, as he emphasizes, most laws weren’t built for this scenario. He points to practical claims that may come into play in the U.S., such as rights of publicity and false endorsement-type theories, and notes that whether something is parody or “too close” can become a major fault line. Jeanine explains her company’s operational approach: They focus on original personalities, designed “from scratch.” They build internal checks to avoid misappropriating known names, likenesses, or recognizable identities. If they ever work with real people, the model would be licensing their likeness/voice. A subtle but important business point also appears here: Jeanine expects AI-native characters themselves to become licensable assets—meaning the entertainment economy may expand to include “celebrity rights” for fully synthetic personalities. 7) Ethics: the real line is “deception,” not “AI vs. human” The ethical core of the conversation is not “AI is bad” or “AI is good.” It’s how AI is used—especially whether audiences are misled. Mark highlights several ethical risks: Misuse of tools to manipulate faces and content (“AI slop” and political misuse). Displacement of creative workers without adequate transition support. A concern that AI often optimizes toward “statistical averages,” potentially flattening originality. Jeanine agrees ethics must be designed into the system. She describes regular discussions with an ethicist and emphasizes a principle: transparency. Her company discloses when content or personalities are AI-generated. She argues that if people understand what they’re engaging with and choose it knowingly, the ethical problem shifts from “AI exists” to “Are we tricking people?” Mark adds a real-world warning: deepfakes are now credible enough to enable serious fraud—he references a case-like scenario where a synthetic video meeting deceived an employee into authorizing a payment. The point is clear: authenticity and verification are no longer optional. 8) The “dead actor” hypothetical: legal permission vs. moral intent Ken raises a provocative scenario: an actor’s estate authorizes an AI-generated new performance, but the actor opposed such technology while alive. Neither guest offers a simplistic answer. Jeanine suggests that even if the estate holds legal rights, a company might choose to avoid such content out of respect and because the ethical “overhang” could damage the storytelling outcome. She also notes the harder question: people who died before today’s capabilities may never have been able to meaningfully consent to what AI can now do—raising questions about how we interpret legacy intent. Mark underscores the practical contract problem: many rights are drafted “in perpetuity,” but that doesn’t automatically settle the ethical question. 9) Five-year forecast: “AI everywhere,” but audiences may stratify Ken closes with a prediction question: in five years, how much entertainment content will significantly involve AI—and will audiences care? Jeanine predicts AI becomes the default creative layer for most content creation. Mark is slightly more conservative on the percentage, but adds an important nuance: the market will likely stratify. Low-cost, high-volume content may become saturated with AI, while premium segments may emphasize “human-made” as a differentiator—especially if disclosure norms become standard. Bottom line for business leaders and creators This interview lands on a pragmatic conclusion: AI will change how content is made at scale, and the competitive edge will go to teams that combine creative taste, operational discipline, and legal/ethical governance. If you’re building, commissioning, or distributing content, the questions you can’t dodge anymore are: What’s the provenance of the tools and data you rely on? Who is responsible when output harms, infringes, or misleads? What rights can you actually claim in AI-assisted work? Do your contracts and disclosures match the new reality? Ken Suzan: Thank you, Rolf. We have two returning guests to the IP Friday’s podcast. Joining me today is Jeanine Wright and Mark Stignani. Our topic for discussion, how is AI transforming the media and entertainment industries today? We look at the issues from differing perspectives. A bit about our guests, Jeanine Wright is a seasoned board member, CEO, global COO and CFO. She’s led organizations from startup to a $475 million plus revenue subsidiary of a public company. She excels in growth strategy, adopting innovative technologies, scaling operations and financial management. Jeanine is a media and entertainment attorney and trial litigator turned technologist and qualified financial expert. She is the co-founder and CEO of Inception Point AI, a growing company that is paving new ground with AI-generated personalities and content through developing technology and story. Mark Stignani is a partner with Barnes & Thornburg LLP and is based in Minneapolis, Minnesota. He is the chair of the data analytics department with a particular emphasis on artificial intelligence, machine learning, cryptocurrency and ESG. Mark combines the power of artificial intelligence and machine learning with his skills as a corporate and IP counsel to deliver unparalleled insights and strategies to his clients. Welcome, Jeanine and Mark to the IP Friday’s podcast. Jeanine Wright: Thank you. Thank you. Thank you so much for having me and fun to be back. It feels nostalgic to be here. Ken Suzan: That’s right. And you both were on the program. So it’s fantastic that you’re both back again. So our format, I’m going to ask a question to Jeanine and or Mark and sometimes to both of you. So that’s going to be how we proceed. Let’s jump right in. Jeanine, your company creates AI-generated actors. For listeners who may not be familiar, can you briefly explain what that means and what’s now possible that wasn’t even two years ago? Jeanine Wright: Sure. Yeah, we are creating AI-generated personalities. So new characters, new personalities from scratch. We design who these personalities are and will be, how they will evolve. So we give them complex backstories. We give them hopes and dreams and aspirations. We every aspect of them, their families, how they’re going to evolve. And in the same way that, say, you know, Disney designs the character for its next animated feature or, you know, an electronic arts designs a character for its next major video game. We are doing that for these personalities and then we are launching them into the world as podcast hosts, content creators on social platforms like YouTube, Instagram and TikTok. And even in the future, you know, actors in feature length films, musicians, etc. Ken Suzan: Very fascinating. Mark, from your practice, what’s the single biggest legal question or dispute you’re seeing clients wrestle with when it comes to AI and media creation? Mark Stignani: Well, I think that, you know, it’s not just one thing, it’s like four things. But most of them tend to be kind of the origin story of AI data or AI tools that they use because, you know, but for the use of AI tools trained on copyrighted materials, the tools wouldn’t really exist in their current form. So a lot of my clients are wondering about, you know, can I legally use this output if it’s built upon somebody else’s IP? The second ask, the second flavor of that is really, is there liability being created if I take AI content that inadvertently infringes or defames or biases there? So there’s the whole notion of training bias from the training materials that comes out. The third phase is really, you know, can I really own this? Because much of the world does not really give IP rights into AI-generated inventions, copyrighted materials. It’s still kind of a big razor. Then at the end of the day, you know, if it’s an existing relationship, does my contract even contemplate this? So everything from authors contracts on up to just use of data rights that predate AI. Ken Suzan: And Jeanine and Mark, a question to both of you. How would you describe where we are right now in the AI revolution in media and entertainment? Are we approaching a tipping point? And if so, what are the things we need to watch for? Jeanine Wright: Yeah, I definitely think that we’re at a phase where people are starting to come to the realization that AI is the world’s most powerful creative tool. But that, you know, storytelling and point of view is what creates demand and audiences. And AI doesn’t threaten or change that. But it does mean that as people evolve in this medium, they’re very likely going to need to adopt, utilize and figure out how to hone their craft with these AI-generated content and these AI-generated toolings. So this is, you know, something that people have done certainly in the past in all sorts of ways in using new tools. And we’ve seen that make a significant change in the industry. So you look at, you know, the dawn of animation as a medium. You look at use of special effects, computer-generated imagery in the likes of Pixar. And this is certainly the next phase of that evolution. But because of the power of the tool and what will become the ubiquity of the tool, I think that it’s pretty revolutionary and all the more necessary for people to figure out how to embrace this as part of their creative process. Ken Suzan: Thank you, Jeanine. Mark, your thoughts? Mark Stignani: Yeah, I mean, I liken this to historically to like the California gold rush right now, because, you know, the technology is so far outpaced in any of the legal frameworks that are available. And so we’re just trying to shoehorn things in left and right here. So, I mean, the courts are beginning to start to engage with the foundational questions. I don’t think they’re quite there yet. I just noticed Anthropic got sued again by another group of people, big music group, because of the downloaded works they’ve done. I mean, so the courts are, you know, the courts are certainly inundated with, you know, too many of these foundational questions. Legislatively, hard to tell. I mean, federal law, the federal government is not moving uniformly on this other than to let the gold rush continue without much check and balance to it. Whereas states are now probably moving a lot faster. Colorado, Illinois, even Minnesota is attempting to craft legislation and limitations on what you can do with content and where to go with it. So, I mean, the things we need to watch for any of the fair use decisions coming out here, you know, some of the SAG-AFTRA contract clauses. And, you know, again, the federal government, I just, you know, I got a big shrug going as to what they’re actually going to come up with here in the next 90 to 100 days. So, but, you know, I think they’ll be forced into doing something sooner than later. Ken Suzan: Okay, let’s jump into the topic of the rise of generative content pipelines. My first question to Jeanine. Studios and production companies are now building what some call generative content pipelines. This is where AI systems produce everything from scripts to visual effects to voice performances. What efficiencies and creative possibilities does this unlock for the industry? Jeanine Wright: Yeah, so this is quite a bit of what we do. And if I could help pull the curtain back and explain a little bit. Ken Suzan: That’d be great. Jeanine Wright: Yeah, there’s this assumption that, you know, somebody is just sitting behind a machine pushing a button and an out pops, you know, what it is that we’re producing. There’s actually quite a bit of humans still in the loop in the process. You know, we have my team as creators. The other half of my team is the technologists. And those creators are working largely at what we describe as the the tip of the sphere. So they’re, of course, coming up with the concepts of who are these personalities? What are these personalities, characters, backgrounds going to be a lot of like rich personality development? And then they’re creating like what are the formats? What are the kind of story arcs? What is the kinds of content that this this character wants to tell? And what are the audiences they’re desiring to reach and what’s most going to resonate with them? And then what we built internally is what we refer to as an AI orchestration layer. So that allows us to pull from basically all of the different models and then all of these different really cool AI tools. And put those together in such a way and combine those in such a way that we can have the kind of output that our creative team envisions for what they want it to be. And at the end of the day, what you what the stack looks like for, say, a long form audio drama, like the combination of LLMs that we’re going to use in different parts of scripting and production and, you know, ideating and all of that. And the kinds of tooling that we use to actually make it and get it to sound good and have the kinds of personality characteristics that we want to be in an authentic voice for a podcast is going to be different than the tech stack and the tool stack that we might use for a short form Instagram beauty tip reel. And so there’s a lot of art in being able to pull all of these tools together to get them to do exactly what you want them to do. But I think the second part of your question is just as interesting as the first. I mean, what is what possibilities is this unlocking? So of course you’re finding efficiencies in the creative production process. You can move faster. You can do things were less expensive, perhaps, and you were able to do it before. But on the creator side, I think one thing that hasn’t been talked about enough is how it is really like blown wide the aperture of what creators can do and can envision. Traditionally, you know, Hollywood podcasting, many of these businesses that become big businesses have become hit making businesses where they need to focus on a very narrow of wide gen pop content that they think is going to get tens of millions, hundreds of millions in, you know, fans and dollars in revenue for every piece of content that they make. So the problem with that is, is that it really narrows the kinds of things that ultimately get made, which is why you see things happening in Hollywood, like the Blacklist, which is, you know, this famous list of really exceptional content that remains unpredited, unproduced, or why you see things like, you know, 70 to 80% of the top 100 movies being based on pre-existing IP, right? Because these are such huge bets that you need to feel very confident that you’re going to be able to get big, big audiences and big, big dollars from it. But with AI, and really lowering the barrier to entry, lowering the costs of production and marketing, the experimentation that you can do is really, really phenomenal. So, you know, my creative team, if they have an idea, they make it, you know, they don’t have to wring their hands through like a green lighting process of, you know, should we, shouldn’t we, like we, we can make an experiment with lots of different things, we can do various different versions of something. We can see what would this look like if I placed it in the 1800s, or what if I gave this character an Australian accent, and it’s just the power of being able to have this creative partner that can ideate with you and experiment with you at rocket speed. With the creators that are embracing it, you can see how it is really fun for them to be able to have this wide of a range of possibility. Ken Suzan: Mark, when you hear about these generative pipelines, what are the immediate red flags or concerns that come to mind from a legal standpoint? How about ethics underlying all of this? Well, Mark Stignani: that was not, that’s the number one red flag because I mean, we are seeing not just that in the entertainment industry, but it literally at political levels, and the kind of the phrase, to turn the phrase AI slop being generated, we’re seeing, you know, people’s facial expressions altered. In some cases, we’re seeing AI tools being misused to exploit various groups of individuals and genders and age groups. So I mean, there’s a whole lot of things ethically that people are using AI for that just don’t quite cover it. Especially in the entertainment industry, I mean, we’re looking at a fair amount of displacement of human workers without adequate transition support, devaluation of the creative labor. I mean, the thing though that I’m always from a technical standpoint is AI is simply a statistical average of most everything. So it kind of devalues the benefit of having a human creator, a human contribution to it. That’s the ethical side. But on the legal side, I see chain of title issues. I mean, because these are built on very questionable IP ownership stages, I mean, in most of these tools, there has been some large copying, training and taking of copyrighted materials. Is it transformational? Maybe. But there’s certainly not a chain of title, nor is there permission granted for that training. I mentioned SAG-AFTRA earlier, I think there’s a potential set of union contract aspects to this that if you know many of these agreements and use sub-licenses for authors and actor agreements, they weren’t written with AI in mind. So that’s another red flag. And also I just think in indemnification. So if we ultimately get to a point where groups are liable for using content without previous license, then who’s liable? Is the tool maker the liable group or the actual end user? So those are probably my top four red flags. But I think ethics is probably my biggest place because just because we can do something from an ethical standpoint doesn’t mean we should. Jeanine Wright: Yeah, if I can respond to both of those points. I mean, one from a legal perspective, just to be very clear, I mean, we are always pulling from multiple different models and always pulling from multiple different sources. And we even have data sources that we license or use for single source of truth on certain pieces of information. So we’re always pulling things together from multiple different sources. We also have built into our process, you know, internal QAing and checking to make sure that we’re not misappropriating the name or likeness of any existing known personality or character. We are creating original personalities there. We design their voice from scratch. We design their look from scratch. So we’re not on our personality side, we’re not pulling or even taking inspiration from existing intellectual property that’s already out there in creating these personalities. On the ethical side, I agree. I mean, when we came out of stealth, we came out of stealth in September. There was certainly quite a bit of backlash from folks in my—I previously co-founded a company in the audio space. I mean, there’s been many rounds of layoffs in audio and in many other parts of the entertainment industry. So I’m very sensitive to the feedback around, like, is this job displacement? I mean, I do think that the CEO of NVIDIA said it right when he said, you’re likely not going to lose your job to AI, but you will lose your job to somebody who knows how to use AI. I think these tools are transforming the way that content is made and that the faster that people can embrace this tooling, the more likely they’re going to be having the kinds of roles that they want in, you know, in content creation and storytelling in the future. And we are hiring. I’m hiring AI video creators, AI audio creators. I’m hiring AI developers. So people who are looking for those roles, I mean, please reach out to me, we would love to work with you and we’d love to grow with you. We also take the ethics very seriously. For the last few months or so, I’ve met regularly with an ethicist, we talk about all sorts of issues around, you know, is designing AI-generated people, you know, good for humanity? And what about authenticity and transparency and deception, and how are we in building in this space going to avoid some of the problems that we’ve seen with things like social media and other forms of technology? So we keep that very top of mind and we try to build on our own internal values-based system and, you know, continue to elevate and include the humanity as part of the conversation. Ken Suzan: Thank you, Jeanine. Jeanine, some argue that AI content pipelines will level the field for filmmaking, giving independent creators access to tools that were once available only to major studios. Is that the future you envision? Jeanine Wright: I do think that with AI you will see an incredible democratization of access to technology and access to these capabilities. So I do think, you know, rise of independent filmmakers, you won’t have as many people who are sitting on a brilliant idea for the next fantastic script or movie that just cannot get it made because they will be able to with these tools, get something made and out there, at least to get the attention of somebody who could then decide that they want to invest in it at a studio kind of level in the future. The other thing that I think is really interesting is that I think, you know, AI will empower more niche content and more creators who can thrive in micro-communities. So it used to be because of this hit generation business model, everything needed to be made for the masses and a lot of content for niche audiences and micro-communities was neglected because there was just no way to make that content commercially viable. But now, if you can leverage AI—we make a pollen report podcast in 300 markets, you know, nobody would have ever made that before, but it is very valuable information, a very valuable piece of content for people who really care about the pollen in their local community. So there’s all sorts of ways that being able to leverage AI is making it more accessible both to the creator and to the audience that is looking for content that truly resonates with them. Ken Suzan: Mark, let’s talk about the legal landscape right now. If someone creates an AI-generated performance that closely resembles a living actor without their consent, what legal recourse does that actor have? Mark Stignani: Well, I mean, I think we can go back to the OpenAI Scarlett Johansson thing where, you know, if it’s simply—well, the “walks like a duck, quacks like a duck” type of aspect there. You know, I think it’s pretty straightforward that they need to walk it back. I mean, the US doesn’t have moral rights, really, but there’s a public visage right, if you will. And so, one of the things that I find predominantly useful here is that these actors likely have rights of publicity there, we probably have a Lanham Act false endorsement claim, and you know, again, if the performance is not parody, and it’s so close to the original performance, we probably have a copyright discussion. But again, all of these laws predate the use of AI, so we’re going to probably see new sets of law. I mean, we’re probably going to see “resurrection” frameworks, we’ll probably have frameworks for synthetic actors and likenesses, but the rules just aren’t there yet. So, unfortunately, your question is largely predictive versus well-settled at this point. Ken Suzan: Jeanine, your company works with AI actors. How do you navigate the questions of consent and likeness compensation when creating digital performers? Jeanine Wright: I mean, if we—so first of all, if we were to work with a person who is an existing real-life person or was an existing real-life person, then we would work with them to license their name and likeness or their voice or whatever aspects of it we were going to use in creating content in partnership with them. Not typically our business model; we are, as I said, designing all of our personalities from scratch and making all of our content originally. So, we’ve not had to do that historically. Now, you know, the flip side is: can I license my characters as if they’re similar to living characters? Like will I be able to license the name and likeness and voice of my AI-generated personalities? I think the answer is yes and we’re already starting to do that. Ken Suzan: Let’s just switch gears into ethics and AI because I find this to be a really fascinating issue. I want to look at a hypothetical. And this is to both of you, Jeanine and Mark: an AI system creates a new performance by a beloved actor who passed away decades ago, and the actor’s estate authorizes it, but the actor was known to have expressed opposition to such technology during their lifetime. Is this ethical? Jeanine Wright: This feels like a Gifts, Wills, and Trusts exam question. Ken Suzan: It sounds like it, that’s right. Jeanine Wright: Throwing me back to my law school days. Exactly. What are your thoughts? It’d be interesting to see like who has the rights there. I mean, I think if you have the legal rights, the question is around, you know, is it ethical to go against what you knew was somebody’s wishes at the time? I guess the honest answer is I don’t know. It would depend a lot on the circumstances of the case. I mean, if we were faced with a situation like that where there was a discrepancy, we would probably move away from doing that content out of respect for the deceased and out of a feeling that, you know, if this person felt strongly against it, then it would be less likely that you could make that storytelling exceptional in some way—it would color it in a way that you wouldn’t want in the outcome. And I feel like there’s—I mean, certainly going forward and it’s already happening—there are plenty of people I think who have name, likeness, and voice rights that they are ready to license that wouldn’t have this overhang. Ken Suzan: Mark, your thoughts? Mark Stignani: Yeah, I mean, again, I have to kind of go back to our property law—the Rule Against Perpetuities. You know, from a property standpoint to AI rights and likenesses—since most of the digital replica contracts that I’ve reviewed generally do talk about things in perpetuity. But if it’s not written down for that actor and the estate is doing this—is it ethical? You know, that is the debate. Jeanine Wright: Well, gold star to you, Mark, for bringing up the Rule Against Perpetuities. There’s another one that I haven’t heard for many years. This is really taking me back to my law school days. Ken Suzan: It’s a throwback. Jeanine Wright: The other thing that’s really interesting is that this technology is really so revolutionary and new that it’s hard to even contemplate now what it is going to be in a decade, much less for people who have passed away to have contemplated what the potential for it could be today. So you could have somebody who is, perhaps, a deceased musician who expressed concerns about digital representations of themselves or digital music while they were alive. But now, the possibility is that you could recreate—certainly I could use my technology to recreate—that musician from scratch in a very detailed way, trained on tons of different available data. Not just like a digital twin or a moving image of them, but to really rebuild their personality from scratch, so that they and their music could be reintroduced to totally new generations in a very respectful and authentic way to them. It’s hard to know, with the understanding that that is possible, whether or not somebody who is deceased today would or would not agree to something like that. I mean, many of them might want, under those circumstances, for their music to live on. These deceased actors and musicians could live forever with the power of AI technology. Mark Stignani: Yeah, I really just kind of go to the whole—is deep-faking a famous actor the best way to preserve them or keep them live? Again, that’s a bit more of an ethical question because the deep fakes are getting good enough right now to create huge problems. Even zoom meetings in Hong Kong where a CFO was on a call with five synthetic actors who all looked like his coworkers and they sent a big check out based upon that. So again, the technology is getting good enough to fool people. Jeanine Wright: I think that’s right, Mark, but I guess I would just highlight the same way that it always has been: the ethical line isn’t AI versus human, the ethical line is about deception. Like, are you deceiving people? And if people know what it is that they’re getting and they’re choosing to engage with it, then I think it isn’t about the power of the technology. In our business, we have elected—not everybody has—but we have elected to be AI transparent. So we tell people when they listen to our show, we include it in our show notes, we include it on our socials. Even when we’re designing our characters to be very photo-realistic, we make an extra point to make sure that people know that this is AI-generated content or an AI personality. Like, our intention is not to deceive and to be candid. From a business model perspective, we don’t need to. I mean, there’s already people who know and understand that it is AI, and AI is different than people. Because it is AI, there’s all sorts of things that you can do with it that you would not be able to do with a real person. You know, we get people who ask us on the podcast side, we get all sorts of crazy funny requests. You know, people who say, “Can I text with this personality? Can I talk to them on the phone? Can they help me cook in the kitchen? Can they sing me Happy Birthday? Can they show up at my Zoom meeting today because I think my boss would love it?” You know, all sorts of different ways that people are wanting to engage with these characters. And now we’re in the process of rolling out real-time personalities so people will be able to engage with our personalities live. It is a totally different way that people are able to engage with content, and people can, as they choose, decide what kind of content they want to engage with. Ken Suzan: Jeanine and Mark, we’re coming to the end of this podcast. I would love to keep talking for hours but we have to stay to our timetable here. Last question: five years from now, what percentage of entertainment content do you predict will involve significant AI generation, and will audiences care about that percentage? Jeanine? Jeanine Wright: I mean, I would say 99.9%. I mean, already you’re seeing—I think YouTube did a survey—that it was like 90% of its top creators said that they’re using AI as material components of their content creation process. So, I think this will be the default way that content is created. And content that is not made with AI, you know, there’ll be special film festivals for non-AI generated content, and that will be a special separate thing than the thing that everybody is doing now. Ken Suzan: Mark, your thoughts? Mark Stignani: Yeah, I go a little lower. I mean, I think Jeanine is right that we’re seeing, especially in the low-quality content creation and like the YouTube shorts and things like that, you know, there’s so much AI being pushed forward that the FTC even acquired an “AI slop” title to it. I do think that disclosure will become normalized, that the industries will be pushed to say when something is AI and what is not. And I think it’s very much like, you know, do you care about quality or not? If you value the human input or the human factor in this, there will be an upper tier where it’s “AI-free” or low AI assistant. I think that it’s going to stratify because the stuff coming through the social media platforms right now—I can’t be on it right now just because there’s so much nonsense. Even my children, who are without much AI training at all, find it just too unbelievable for them. So, I think it will become normalized, but I think that we’re going to see a bunch of tiers. Ken Suzan: Well, Jeanine and Mark, this has been a fantastic discussion of an ever-evolving field in IP law. Thank you to both of you for spending time with us today on the IP Friday’s podcast. Jeanine Wright: Thank you so much for having me. Mark Stignani: Appreciate your time. Thank you again.
• 
  Interview with Eva Schewior, President of the German Patent and Trademark Office – Rising Filing Numbers and How to Deal With Them – AI For Patent Examiners – Bad Faith Trademark Applications – Career at the DPMA – Episode 171 – IP Fridays 30.01.2026 35m

  My co-host Ken Suzan and I are welcoming you to episode 171 of our podcast IP Fridays! Today’s interview guest is the president of the German Patent and Trademark Office Eva Schewior! But before we jump into this very interesting interview, I have news for you: The US Supreme Court has taken up an important patent law case concerning so-called “skinny labels” for generic drugs. Specifically, the highest US court is reviewing a case in which Amarin accuses generic drug manufacturer Hikma of inciting doctors to use the cholesterol drug Vascepa in violation of patents by providing a limited package insert. In two landmark decisions, the UPC Court of Appeal clarified the criteria for inventive step and essentially confirmed the EPO’s typical “problem-solution” approach (Amgen v Sanofi and Meril v Edwards). However, experts are not entirely sure whether the Court of Appeal’s decisions, particularly those relating to the determination of the closest prior art, deviate from EPO practice. As a result of Brexit, mutual recognition of trademark use between the EU and the UK will cease to apply from January 1, 2026. Use of a trademark only in the UK will then no longer count as use of an EU trademark for the purpose of maintaining rights – and conversely, EU use will no longer count for British trademarks. Bayer is attacking several mRNA vaccine manufacturers in the US (Pfizer, BioNTech, Moderna, and J&J separately). The core allegation: patent infringements relating to old (Monsanto) patents on mRNA stabilization; Bayer is seeking damages, not sales bans. DISCO Pharmaceuticals from Cologne signs an exclusive license agreement with Amgen (potentially up to USD 618 million plus royalties) for novel cancer therapies targeting surface structures. Relevant from an IP perspective: license scope, milestones, data/know-how allocation. And now let’s jump into the interview with Eva Schewior! The German IP System in Transition: Key Insights from DPMA President Eva Schewior In an in-depth conversation on the IP Fridays podcast, Eva Schewior, President of the German Patent and Trademark Office (DPMA), outlined how Germany’s IP system is responding to rising demand, technological change, and a fundamentally altered European patent landscape. The interview offers valuable insights for innovators, companies, and IP professionals navigating patent, trademark, and design protection in Europe. Sustained Demand and Procedural Efficiency Despite the introduction of the Unitary Patent system, national German IP rights continue to see strong and growing demand. According to Schewior, application numbers at the DPMA have been increasing for years, which she views as a strong vote of confidence in the quality and reliability of German IP rights. At the same time, this success creates pressure on examination capacity. The average duration of patent proceedings at the DPMA is currently around three years and two months from filing to grant, provided applicants request examination early and avoid extensions. Internationally, this timeframe remains competitive. Nevertheless, shortening procedures remains a strategic priority. Search requests alone have risen by almost 50% over the past decade, yet the DPMA still delivers search reports on time in around 90% of cases. To better reflect applicant needs, the DPMA distinguishes between two main user groups: applicants seeking a rapid grant, often as a basis for international filings, and applicants primarily interested in a fast, high-quality initial assessment through search or first examination. Future procedural adjustments are being considered to better serve both groups. The Role of Artificial Intelligence Artificial intelligence already plays a practical role at the DPMA, particularly in patent search, classification, and the translation of Asian patent literature. Schewior emphasized that the office is closely monitoring rapid developments in AI to assess where these tools can further improve efficiency. However, she made clear that AI will remain a supporting technology. In public administration, and especially in IP examination, final decisions must always be taken and reviewed by humans. AI is seen as a way to relieve examiners of routine tasks so they can focus on substantive examination and quality. Maintaining and Monitoring Examination Quality Quality assurance is a central pillar of the DPMA’s work. Schewior reported consistently positive feedback from users, but stressed that maintaining quality is a continuous task. The office applies systematic double checks for grants and refusals and uses internal quality management tools to randomly review searches and first office actions during ongoing proceedings. External feedback is equally important. The DPMA’s User Advisory Board, which includes patent attorneys, startups, and patent information centers, plays a key role in identifying issues and suggesting improvements. Several of its recommendations have already been implemented. Trademark Filings and Bad-Faith Applications The trademark side of the DPMA has experienced particularly strong growth. In 2025, the office received around 95,000 trademark applications, an increase of approximately 18% compared to the previous year. Much of this growth came from abroad, especially from China. While new trademark types such as sound marks, multimedia marks, and holograms have so far seen only moderate uptake, word marks and figurative marks remain dominant. A growing challenge, however, is the rise in bad-faith trademark filings. The DPMA has responded by intensively training examiners to identify and handle such cases. Procedural reforms following EU trademark law modernization have also shifted competencies. Applicants can now choose whether to bring revocation and invalidity actions before the courts or directly before the DPMA. While courts may act faster, proceedings before the DPMA involve significantly lower financial risk, as each party generally bears its own costs. Accelerated Examination as a Practical Tool Despite rising filing numbers, the DPMA aims to avoid significant delays in trademark proceedings. Organizational restructuring within the trademark department is intended to balance workloads across teams. Schewior highlighted the option of accelerated trademark examination, available for a relatively modest additional fee. In practice, this can lead to registration within a matter of weeks, without affecting priority, since the filing date remains decisive. New Protection for Geographical Indications A major recent development is the extension of EU-wide protection for geographical indications to craft and industrial products. Since late 2025, the DPMA acts as the national authority for German applications in this area. The first application has already been filed, notably for a traditional German product. Under the new system, applications undergo a national examination phase at the DPMA before being forwarded to the EUIPO for final decision. Products eligible for protection must originate from a specific region and derive their quality or reputation from that origin, with at least one production step taking place there. The EU estimates that around 40 German products may qualify. Outreach, SMEs, and Education Schewior underlined the DPMA’s statutory duty to inform the public about IP rights, with a particular focus on small and medium-sized enterprises. The office has significantly expanded its presence on platforms such as LinkedIn and YouTube, offering accessible and practical IP content. Studies show that fewer than 10% of European SMEs use IP rights, despite evidence that IP-owning companies generate higher revenues. To address this gap, the DPMA is expanding outreach formats, strengthening cooperation with educational institutions, and publishing new empirical studies, including a forthcoming analysis of patenting behavior among innovative German startups conducted with WIPO. Strategic Challenges Ahead Looking forward, Schewior identified several key challenges: insufficient awareness of IP protection among SMEs and startups, a tendency in some sectors to rely solely on trade secrets, and the growing problem of product and trademark piracy linked to organized crime. From an institutional perspective, the DPMA must remain attractive and competitive in a European system offering multiple routes to protection. This requires legally robust decisions, efficient procedures, qualified staff, and continuous investment in IT and training. Careers at the DPMA Finally, Schewior highlighted recruitment as a strategic priority. The DPMA recently hired around 50 new patent examiners and continues to seek experts in fields such as electrical engineering, e-mobility, IT, and aerospace, as well as IT specialists, lawyers, and staff in many other functions. She emphasized the DPMA’s role as Europe’s largest national patent office and a globally significant, stable, and family-friendly employer at the forefront of technological development. German and European Patents as Complementary Options In her closing remarks, Schewior addressed the post-UPC patent landscape. Rather than competing, German and European patent systems complement each other. For many SMEs, a German patent alone may be sufficient, particularly where Germany is the core market. At the same time, the possibility of holding both a European patent and a national German patent offers strategic resilience, as national protection can survive even if a European patent is revoked. Her key message was clear: the range of options has never been broader, but making informed strategic choices is more important than ever. If you would like, I can also adapt this article for a specialist legal audience, condense it for a magazine format, or rework it as a thought-leadership piece for LinkedIn or your website. Rolf Claessen: Today’s interview guest is Eva Schewior. If you don’t know her yet, she is the President of the German Patent and Trademark Office. Thank you very much for being here. Eva Schewior: I’m very happy that you’re having me today. Thank you, Mr. Claessen. Rolf Claessen: Shortening the length of procedures has been a stated goal since you took office. What is the current situation, and which measures are in place to achieve this goal? Eva Schewior: First of all, I’m very glad that German IP rights are in high demand. Even though applicants in Europe have multiple options today to obtain protection for their innovations, we have seen increasing application numbers for years at my office, even after the introduction of the Unitary Patent system. I see this as very positive feedback for our work. It is clear, however, that the high number of applications leads to a constantly increasing workload. At the same time, we want to remain attractive for our applicants. This means we must offer not only high-quality IP rights but also reasonable durations of proceedings. Ensuring this remains a central and permanent objective of our strategy. The average duration of proceedings from filing to grant is currently about three years and two months, provided that applicants file an examination request within the first four months after application and do not request extensions of time limits. In other cases, the average duration of proceedings is admittedly longer. With these three years and two months, we do not have to shy away from international comparison. Nonetheless, we strive to get better. In the last few years, we were able to improve the number of concluded proceedings or to keep them at a high level. In some areas, we were even able to shorten durations of proceedings a bit, though not yet to the extent that we would have wished for. Our efforts are often overtaken by the increasing demand for our services. Just to give you an example, in the last ten to fifteen years, search requests increased by nearly fifty percent. Despite this, we managed to deliver search reports in ninety percent of all cases in time, so that customers have enough time left to take a decision on a subsequent application. I have to admit that we are not equally successful with the first official communication containing the first results of our examination. Here, our applicants need a bit more patience due to longer durations of proceedings. But I think I do not have to explain to your expert audience that longer processing times depend on various reasons, which are in no way solely to be found on our side as an examination office. To further reduce the length of proceedings, we need targeted measures. To identify them, we have analyzed the needs of our applicants. It has been shown that there are two main interests in patent procedures. About three quarters of our applicants have a very strong interest in obtaining a patent. They mainly expect us to make fast decisions on their applications. Here we find applicants who want to have their invention protected within Germany but often also wish for subsequent protection outside Germany. The remaining quarter consists of applicants that are solely interested in a fast and high-quality first assessment of the application by means of a search or a first official examination. We observe that these applicants use our services before they subsequently apply outside Germany. This latter group has little interest in continuing the procedure before my office here in Germany. We are currently considering how we can act in the best interest of both groups. What I can certainly say is that we will continue to address this topic. And of course, in general, it can be said that if we want to shorten the duration of proceedings, we need motivated and highly skilled patent examiners. Therefore, we are currently recruiting many young colleagues for our offices in Munich and Jena, and we want to make our procedures more efficient by using new technical options, thus taking workload from patent examiners and enabling them to concentrate on their core tasks and on speedy examination. Rolf Claessen: Thank you very much. I also feel that the German Patent and Trademark Office has become quite popular, especially with the start of the UPC. Some applicants seem to find that it is a very clever option to also file national patents in Germany. Eva Schewior: I think you’re perfectly right, and I think we will come to this point later. Rolf Claessen: In 2023, you mentioned artificial intelligence as an important tool for supporting patent examiners. What has happened regarding AI since then? Eva Schewior: Of course, we are already successfully using AI at our office. For instance, in the field of patent search, we use AI-based tools that make our examiners’ work easier. We also use AI quite successfully for classification and for the translation of Asian patent literature into English. In the meantime, we have seen a rapid development of AI in the market. I think it is strategically imperative to get an overview and to make realistic assessments of what AI is capable of doing to make our procedures more efficient. Therefore, we are observing the market to find out where AI can perform tasks so that we enable examiners to concentrate on their core business. There are many ideas right now in our office where artificial intelligence can help us tackle challenges, for instance demographic change, which certainly also affects our office, and maintaining our quality standards. We will strategically promote new tools in this field to cope with these challenges. But this much is also clear: humans will always stay in our focus. Especially in public administration, I consider it a fundamental principle that in the end, decisions must be taken and reviewed by humans. AI may help us reach our goals in a more efficient way, but it can never replace patent or trademark examiners. Rolf Claessen: You have made quality improvements in patent examination a priority and have already implemented a number of measures. How would you describe the current situation? Eva Schewior: I often receive positive feedback from different sides that our users are very satisfied with the quality of our examination, and I’m very glad about that. But maintaining this quality standard is a permanent task, and we must not become careless here. For years, for instance, we have established double checks for all grants and rejections. In addition, we have introduced a quality management tool that enables us, even during the examination process, to randomly check the quality of first office communications and searches. This helps us detect critical trends and take appropriate countermeasures at a very early stage. What is also very important when it comes to patent quality is to actively ask our customers for their feedback. We do this in different ways. Just to give you an example, we have a User Advisory Board, which is a panel of external experts implemented a couple of years ago. Discussing questions of quality is regularly on the agenda of this board. We carefully listen to criticism, ideas, and suggestions, and we have already implemented some of them for the benefit of the office and our users. Rolf Claessen: The German Patent and Trademark Office, as the largest patent and trademark office in Europe, records very high numbers of trademark applications. What are you currently especially concerned with in the trademark area? Eva Schewior: In 2025, we saw around ninety-five thousand trademark applications. This is an increase of eighteen percent compared to the previous year, and I have to say that this took us by surprise. Especially applications from outside Germany, and above all from China, have risen significantly. It is of course challenging to cope with such a sudden increase on an organizational level. Another challenge is dealing with trademark applications filed in bad faith, which we are currently seeing more and more of. We have thoroughly trained our trademark examiners on how to identify and handle such applications. As regards the new types of trademarks, the rush has been moderate so far. Sound marks, multimedia marks, or holograms are apparently not yet common solutions for the majority of applicants. The key focus remains on word marks and combined word and figurative marks. Nevertheless, I believe that the new trademark types are a meaningful supplement and may play a greater role as digitization advances. The most significant changes, however, concern procedures. Applicants can now choose whether to file revocation or invalidity actions with the courts or with our office. While courts may proceed somewhat faster, the financial risk is higher. Before the DPMA, each party generally bears its own costs, apart from exceptional cases. Rolf Claessen: How does this dynamic filing development impact the duration of trademark proceedings? Eva Schewior: This is indeed a major organizational challenge. For a long time, our trademark department managed to keep durations of proceedings very short, especially with regard to registration. Despite the recent increases in applications, especially in 2025, we hope to avoid a significant extension of processing times. We have restructured the organization of the trademark department to distribute applications more equally among teams. Applicants should also be aware that it is possible to request accelerated examination for a relatively moderate fee of two hundred euros. This often leads to registration within a very short time. The filing date, of course, always determines priority. Rolf Claessen: Since December 2025, the EU grants protection not only for agricultural products but also for craft and industrial products through geographical indications. Has your office already received applications? Eva Schewior: Yes, we have received our first application, and interestingly it concerns garden gnomes. Protected geographical indications are an important topic because they help maintain traditional know-how in regions and secure local jobs. The DPMA is the competent authority for Germany. Applications go through a national examination phase at our office before being forwarded to the EUIPO, which takes the final decision on EU-wide registration. Eligible products must originate from a specific region and derive their quality, reputation, or characteristics from that origin, with at least one production step taking place there. Rolf Claessen: The DPMA has expanded its outreach activities, including social media. What else is planned? Eva Schewior: Raising awareness of IP rights, especially among small and medium-sized enterprises, is part of our statutory duty. We currently use LinkedIn and YouTube to communicate IP topics in an understandable and engaging way. We also plan dedicated LinkedIn channels, for example for SMEs. Studies show that fewer than ten percent of European SMEs use IP rights, even though those that do earn significantly more on average. In 2026, we will further expand outreach activities, cooperate more closely with universities and educational institutions, and publish new studies, including one on the patenting behavior of innovative German start-ups conducted together with WIPO. Rolf Claessen: Where do you see the biggest future challenges in IP? Eva Schewior: Germany depends on innovation, but awareness of IP protection is still insufficient, particularly among SMEs and start-ups. Some companies deliberately avoid IP rights and rely on trade secrets, which I consider risky. Another growing concern is the increase in product and trademark piracy, often linked to organized crime. For our office, remaining attractive and competitive is crucial. Applicants have many options in Europe, so we need fast procedures, legally robust decisions, qualified staff, and modern IT systems. Rolf Claessen: The DPMA is currently recruiting. Which areas are you focusing on? Eva Schewior: Our focus is on patent examination and IT. We recently hired fifty new patent examiners and are particularly looking for experts in fields such as electrical engineering, e-mobility, IT, and aerospace. We are Europe’s largest national patent office and offer meaningful, secure jobs with fair compensation and strong development opportunities. Rolf Claessen: Is there a final message you would like to share with our listeners? Eva Schewior: The Unitary Patent system has created many new options. German and European patent systems do not compete; they complement each other. For many SMEs, a German patent may already be sufficient, especially where Germany is the core market. Holding both European and national patents can also be a strategic advantage. My key message is: be aware of the options, stay informed, and choose your IP strategy deliberately. Rolf Claessen: Thank you very much for being on IP Fridays. Eva Schewior: Thank you for having me. It was a pleasure.
• 
  Valuation of Intellectual Property Rights – Damages in Infringement Cases – Interview with Brian Buss – Happy Holidays! – IP Fridays – Episode 170 26.12.2025 29m

  Brian is: Managing Director, GlassRatner LinkedIn bio: https://www.linkedin.com/in/brianbuss I am Rolf Claessen and my co-host Ken Suzan and I are welcoming you to episode 170 of our podcast IP Fridays! We also want to wish you a happy holiday season and a successful year 2026! Today’s interview guest is Brian Buss. He is the managing director of GlassRatner and my co-host Ken Suzan talks with him about the valuation of intellectual property rights and damages in infringement cases. But before we jump into the interview, I have news for you! A US start-up called Operation Bluebird is trying to take over the “Twitter” trademark. It has asked the USPTO to cancel Twitter word marks, arguing that Elon Musk’s company X no longer uses them after the rebrand. Led by a former Twitter trademark lawyer, Operation Bluebird also filed its own “Twitter” trademark application. Commentators note that X could face challenges defending the legacy marks if they are truly no longer in use. In parallel, the US debate on patent quality and review procedures is intensifying. The USPTO proposed controversial rule changes that would restrict Inter Partes Review (IPR). The proposal triggered substantial backlash, with more than 11,000 public comments submitted—over 4,000 of them via the civil liberties group EFF. In the EU, a major trademark reform will take effect on 1 January 2026. It aims to simplify procedures, recognize new types of marks (including hologram, multimedia, and motion marks), and make fees more SME-friendly (e.g., lower base fees for the first class and discounts for timely renewals). Opposition procedures will be further harmonized across the EU, including a mandatory “cooling-off” period, so mid-sized brand owners should adjust filing and monitoring strategies accordingly. The Unified Patent Court (UPC) continues to see strong uptake, especially in Germany. In the first 18 months since its launch on 1 June 2023, well over 900 cases were filed, with German local divisions (Munich, Düsseldorf, Mannheim, Hamburg) leading in patent actions. While many early cases were filed in German, English now dominates as the main language of proceedings. The court has largely met its timelines, with oral hearings typically held within 12 months of filing. China has reached a milestone in its patent system: for the first time, a country has surpassed 5 million active invention patents. CNIPA emphasizes a strategic shift from “quantity to quality,” citing growth in “high-value” patents and higher commercialization rates for university inventions. China has also led global PCT filings for six consecutive years—signals of rapid technological progress relevant to IP planning for German SMEs. On 4 December 2025, the USPTO issued new guidance on “Subject Matter Eligibility Declarations.” These declarations allow applicants to submit additional evidence to support patent eligibility for emerging technologies such as AI systems and medical diagnostics, aiming to reduce the risk that breakthrough inventions are excluded from protection under strict eligibility case law. In December, the European Patent Office (EPO) introduced new patent-quality measures. Third parties can now submit observations on published applications or granted patents via a simplified online form. These Third-Party Observations—supported by evidence and even filed anonymously—go directly to examination teams to flag potential obstacles early. The Interview with Brian Buss: Ken Suzan interviews Brian Buss, a valuation and damages expert who describes his work as “financial detective” work: identifying what intellectual property and other intangible assets are worth and how they translate into measurable economic benefits such as sales, profit, earnings, or cash flow. Buss emphasizes that “IP” should be understood broadly, not only as formal rights (patents, trademarks, copyrights), but also as brands, technology portfolios, internet and social media assets, know-how, and other business intangibles that help generate economic value. A central point is that IP is often a company’s most valuable resource but is rarely measured well. Buss cites a “value gap” he observed in middle-market public companies: market capitalization often exceeds the asset values shown on balance sheets, and much of the gap is explained by intangible assets and IP. He argues that valuation helps companies understand ROI on IP spend (prosecution, protection, enforcement) and supports better strategic decision-making. He outlines common scenarios that trigger IP valuation: internal management needs (understanding performance drivers), disputes about resource allocation (e.g., technology vs. marketing), external events (M&A, licensing, partnerships, franchising, divestitures), and pricing strategy (how exclusivity supported by IP should affect product/service pricing). On “how” valuation is performed, Buss summarizes the three standard approaches—cost (replacement/replication cost), market (comparable transactions), and income (present value of future benefits). He adds that strong IP valuation requires integrating three dimensions of analysis: financial factors (performance data and projections), behavioral factors (customer demand drivers, perceptions, brand recall, feature importance), and legal factors (registration/enforcement history and competitive IP landscape). For practical readiness, he advises companies to improve data discipline: maintain solid books and records; develop credible budgets, forecasts, and business plans; document marketing activities; and actively collect/monitor website and social analytics (e.g., traffic sources, engagement). He stresses that these datasets inform valuation even for technology assets like patents, because they reveal whether protected features are actually marketed and valued by customers. A concrete example is domain names, which he frames as “virtual real estate.” In due diligence for a domain sale, he would focus on analytics showing whether the domain itself drives traffic (direct type-ins, branded search terms, bookmarks) versus traffic driven by other marketing efforts. The key question is whether the address is known and used as a pathway to the business. In closing, Buss argues that while gathering the necessary information requires effort, the investment typically pays off through greater awareness of the most valuable assets, better strategic decisions, and stronger support for growth opportunities. He presents IP valuation as a virtuous cycle of information, insight, and improved decision-making—summed up in his recurring theme: knowledge of IP value is “power” to increase business profitability and enterprise value. Here is the full transcript: Ken Suzan: Our guest today on the IP Fridays podcast is Brian Buss. Brian is a managing director with Glass-Rattner Advisory and Capital Group. Brian provides financial analysis, corporate finance, and expert testimony around the world. Ken Suzan: Mr. Buss provides strategic advice for owners of intellectual property portfolios, transactional services such as acquisition due diligence and purchase price allocation, and valuation services for trademarks, patents, copyrights, brand assets, trade secrets, technology assets, and intangibles. Ken Suzan: During his career, Mr. Buss has provided valuation opinions and financial analysis in business disputes and in transactions, and he has been retained as a testifying expert and consulting expert in federal court, state courts, and arbitration proceedings. Ken Suzan: As an expert, Mr. Buss has provided over 100 expert opinions, served as an expert witness at trial and deposition, and has been published in numerous journals and publications. He is also a participant in the International Task Force on Intellectual Property Reporting for Brands. Ken Suzan: Brian holds an MBA from San Diego State University and a bachelor’s degree from Claremont McKenna College. Welcome, Brian, to the IP Fridays podcast. Brian Buss: Thank you, Ken, for having me. I appreciate the opportunity. Ken Suzan: Excellent, Brian. Can you tell our listeners a little bit about your professional background and what you do in the world of IP? Brian Buss: Sure. I’m a valuation professional and an economic damages expert. Most of my work involves valuing intellectual property and intangible assets and, in litigation contexts, assessing economic damages—often related to IP disputes. My role is frequently to translate legal or technical issues into financial outcomes. Ken Suzan: When people hear “IP,” they often think patents, trademarks, and copyrights. In your work, how broadly do you define intellectual property and intangible assets? Brian Buss: I define it very broadly. Of course, there are the formal rights—patents, trademarks, copyrights—but there are many other intangible assets that drive value: brand reputation, customer relationships, proprietary know-how, trade secrets, data, software, domain names, social media assets, and the systems and processes a business builds over time. All of those can create economic value, even if they’re not always captured well on a balance sheet. Ken Suzan: Why is IP valuation important for companies—especially mid-sized businesses that may not have a large in-house legal or finance team? Brian Buss: Because IP and intangible assets can be a large portion—sometimes the largest portion—of what makes a business valuable, yet they’re often not measured or managed with the same discipline as tangible assets. Valuation can help companies understand what is actually driving revenue, profit, and enterprise value. It can also help them justify investment in IP creation, protection, and enforcement, and it can support strategic decisions like licensing, partnerships, acquisitions, or pricing. Ken Suzan: You’ve talked elsewhere about a “value gap” between what’s on the balance sheet and what the market thinks a company is worth. Can you explain that concept? Brian Buss: Sure. If you look at many companies—particularly in the middle market—you’ll often see that market capitalization exceeds the asset values recorded on the balance sheet. A significant portion of that difference is attributable to intangible assets and IP that accounting rules don’t fully recognize unless there’s an acquisition. That “gap” is essentially the market saying, “There is value here beyond tangible assets,” and much of it comes from intangibles. Ken Suzan: What are the most common situations where a company needs an IP valuation? Brian Buss: There are a few big categories. One is transactions—M&A, due diligence, purchase price allocation, and financing. Another is licensing and partnerships—setting royalty rates, structuring deals, or evaluating whether a proposed license makes economic sense. A third is internal management: understanding ROI on R&D, marketing, or IP spend, or resolving internal debates about what is really driving business performance. And of course, litigation—damages, reasonable royalties, lost profits, and other economic remedies tied to IP. Ken Suzan: In practical terms, how do you value IP? What methods do you use? Brian Buss: The valuation profession generally relies on three approaches: the cost approach, the market approach, and the income approach. The cost approach looks at what it would cost to recreate or replace the asset. The market approach looks at comparable transactions—if you can find good comparables. The income approach is often the most relevant for IP: it looks at the present value of future economic benefits attributable to the IP, based on cash flows, risk, and time. Ken Suzan: In addition to the financial methods, what other factors matter? For example, legal strength or market perception? Brian Buss: Exactly. A strong valuation integrates financial, behavioral, and legal analysis. Financial is obvious—historic results, projections, margins, pricing. Behavioral is about demand drivers—what customers value, how they perceive the brand, how features influence purchasing decisions, and what drives loyalty or switching. Legal involves the nature of the IP rights, scope, enforceability, registration and maintenance history, and the competitive landscape. IP exists at the intersection of all three. Ken Suzan: What kind of information should a company have ready if they want to do an IP valuation? Brian Buss: Good books and records are essential—reliable financial statements, product-level revenue and cost data if possible, and credible budgets and forecasts. They should also document marketing activities, product positioning, and the role of IP in commercialization. For digital and brand assets, analytics matter—website traffic sources, conversion data, engagement metrics, and social media statistics. The more you can connect the IP or intangible asset to measurable economic outcomes, the stronger the valuation. Ken Suzan: That’s interesting—people might not think that marketing analytics matter for patents. Can you explain how those link up? Brian Buss: Sure. A patent might cover a particular feature or technology, but the key economic question is: does that feature drive demand? If customers value it and it supports pricing power, adoption, or market share, that’s important. Marketing materials, customer communications, sales training, and analytics can help show what the company emphasizes and what resonates with customers. It helps tie the legal right to real-world economic value. Ken Suzan: You mentioned domain names earlier. Many people underestimate them. How do you think about domain names as an asset? Brian Buss: I often describe domain names as virtual real estate. The question is whether the domain is a meaningful pathway to the business. In a valuation context, you’d look at the domain’s role in generating traffic—direct navigation, branded search, bookmarks, and repeat visits. You’d also look at how much traffic is attributable to the domain itself versus paid marketing. If the domain is known and drives organic traffic and credibility, it can be quite valuable. Ken Suzan: So, if you’re doing due diligence on a domain sale, what would you look for? Brian Buss: I’d look closely at analytics: traffic volume over time, sources of traffic, geographic distribution, conversion rates, and the relationship between marketing spend and traffic. If traffic is mostly paid and disappears when marketing stops, that’s different than sustained direct navigation. I’d also look at brand alignment, risk factors, and whether there are disputes or competing rights. Ken Suzan: For a mid-sized company listening to this, what are the biggest “misses” you see—things companies do that reduce the value they can capture from IP? Brian Buss: A big one is not collecting and organizing information that demonstrates value. Another is not aligning IP strategy with business strategy—filing patents or trademarks without a clear plan for how they support products, markets, and revenue. Some companies also underinvest in documenting commercialization and customer impact, which becomes important in transactions and disputes. And sometimes they simply don’t revisit their portfolios to understand what is still relevant and what is not. Ken Suzan: How should companies think about ROI on IP spend—both the costs of prosecution and the costs of enforcement? Brian Buss: They should start by identifying the economic role of the IP: is it supporting pricing power, is it protecting market share, is it enabling licensing revenue, is it reducing competitive entry? Then they can compare the costs—filing, maintenance, monitoring, enforcement—against the value it protects or creates. Valuation can provide a framework for that, and it can also help prioritize where to spend resources. Ken Suzan: When valuation is used in litigation, what are the typical types of damages analysis you’re asked to perform? Brian Buss: Commonly, reasonable royalty analysis, lost profits, unjust enrichment, and sometimes disgorgement depending on the jurisdiction and the claims. The specifics depend on the legal framework, but the core is the same: quantify the economic harm and connect it causally to the alleged infringement or misappropriation, using financial data, market evidence, and assumptions that can be tested. Ken Suzan: Are there misconceptions about valuation that you’d like to correct for our audience? Brian Buss: One misconception is that valuation is purely subjective or that it’s just an “opinion.” A good valuation is grounded in data, established methodologies, and transparent assumptions. Another is that intangibles can’t be measured. They can be measured—often through the economic benefits they create and through evidence of customer behavior and market dynamics. It takes work, but it’s doable. Ken Suzan: If a company wants to prepare for a future transaction—say a sale or a major partnership—what are some practical steps they can take now to make their IP story stronger? Brian Buss: Maintain clean records, develop credible forecasts, and document the link between IP and business results. Make sure registrations and maintenance are up to date. Track how IP supports products and competitive differentiation. Collect evidence of brand strength and customer loyalty. And if possible, structure internal reporting so you can see performance by product line or offering. That helps in due diligence and helps buyers or partners understand what they’re paying for. Ken Suzan: Any final thoughts or advice for owners of intellectual property portfolios, transactional professionals, or executives listening to this? Brian Buss: I’d emphasize that the investment in gathering the information needed for evaluation typically pays off. It creates awareness of the most valuable assets, supports better strategic decisions, and makes it easier to pursue growth opportunities. IP valuation is a virtuous cycle of information gathering, analysis, deeper understanding, and then decision-making. Knowledge is power, and knowledge of the value of your IP is the power to increase the profitability and value of your business. IP valuation is a key element of the management toolkit. Ken Suzan: Brian, well said, and thank you so much for taking time today to be on the IP Fridays podcast. Brian Buss: Thank you, Ken. I really appreciate the opportunity.
• 
  The Current State of the Unified Patent Court (UPC) – Interview With Prof. Aloys Hüttermann – Comparison With the US and China – Strategies for Plaintiffs and Defendants – Learnings From Key Cases – Cross – Border Litigation With the UPC – Top Mistakes of Plaintiffs and Defendants at the UPC – IP Fridays – Episode 169 28.11.2025 49m

  I am Rolf Claessen and together with my co-host Ken Suzan I am welcoming you to episode 169 of our podcast IP Fridays! Today’s interview guest is Prof. Aloys Hüttermann, co-founder of my patent law firm Michalski Hüttermann & Partner and a true expert on the Unified Patent Court. He has written several books about the new system and we talk about all the things that plaintiffs and defendants can learn from the first decisions of the court and what they mean for strategic decisions of the parties involved. But before we jump into this very interesting interview, I have news for you! The US Patent and Trademark Office (USPTO) is planning rule changes that would make it virtually impossible for third parties to challenge invalid patents before the patent office. Criticism has come from the EFF and other inventor rights advocates: the new rules would play into the hands of so-called non-practicing entities (NPEs), as those attacked would have few cost-effective ways to have questionable patents deleted. The World Intellectual Property Organization (WIPO) reports a new record in international patent applications: in 2024, around 3.7 million patent applications were filed worldwide – an increase of 4.9% over the previous year. The main drivers were Asian countries (China alone accounted for 1.8 million), while demand for trademark protection has stabilized after the pandemic decline. US rapper Eminem is taking legal action in Australia against a company that sells swimwear under the name “Swim Shady.” He believes this infringes on his famous “Slim Shady” brand. The case illustrates that even humorous allusions to well-known brand names can lead to legal conflicts. A new ruling by the Unified Patent Court (UPC) demonstrates its cross-border impact. In “Fujifilm v. Kodak,” the local chamber in Mannheim issued an injunction that extends to the UK despite Brexit. The UPC confirmed its jurisdiction over the UK parts of a European patent, as the defendant Kodak is based in a UPC member state. A dispute over standard patents is looming at the EU level: the Legal Affairs Committee (JURI) of the European Parliament voted to take the European Commission to the European Court of Justice. The reason for this is the Commission’s controversial withdrawal of a draft regulation on the licensing of standard-essential patents (SEPs). Parliament President Roberta Metsola is to decide by mid-November whether to file the lawsuit. In trademark law, USPTO Director Squires reported on October 31, 2025, that a new unit (“Trademark Registration Protection Office”) had removed approximately 61,000 invalid trademark applications from the registries. This cleanup of the backlog relieved the examining authority and accelerated the processing of legitimate applications. Now let’s jump into the interview with Aloys Hüttermann: The Unified Patent Court Comes of Age – Insights from Prof. Aloys Hüttermann The Unified Patent Court (UPC) has moved from a long-discussed project to a living, breathing court system that already shapes patent enforcement in Europe. In a recent IP Fridays interview, Prof. Aloys Hüttermann – founder and equity partner at Michalski · Hüttermann & Partner and one of the earliest commentators on the UPC – shared his experiences from the first years of practice, as well as his view on how the UPC fits into the global patent litigation landscape. This article summarises the key points of that conversation and is meant as an accessible overview for in-house counsel, patent attorneys and business leaders who want to understand what the UPC means for their strategy. How Prof. Hüttermann Became “Mr. UPC” Prof. Hüttermann has been closely involved with the UPC for more than a decade. When it became clear, around 13 years ago, that the European project of a unified patent court and a unitary patent was finally going to happen, he recognised that this would fundamentally change patent enforcement in Europe. He started to follow the legislative and political developments in detail and went beyond mere observation. As author and editor of several books and a major commentary on the UPC, he helped shape the discussion around the new system. His first book on the UPC appeared in 2016 – years before the court finally opened its doors in 2023. What fascinated him from the beginning was the unique opportunity to witness the creation of an entirely new court system, to analyse how it would be built and, where possible, to contribute to its understanding and development. It was clear to him that this system would be a “game changer” for European patent enforcement. UPC in the Global Triangle: Europe, the US and China In practice, most international patent disputes revolve around three major regions: the UPC territory in Europe, the United States and China. Each of these regions has its own procedural culture, cost structure and strategic impact. From a territorial perspective, the UPC is particularly attractive because it can, under the right conditions, grant pan-European injunctions that cover a broad range of EU Member States with a single decision. This consolidation of enforcement is something national courts in Europe simply cannot offer. From a cost perspective, the UPC is significantly cheaper than US litigation, especially if one compares the cost of one UPC action with a bundle of separate national cases in large European markets. When viewed against the territorial reach and procedural speed, the “bang for the buck” is very compelling. China is again a different story. The sheer volume of cases there is enormous, with tens of thousands of patent infringement cases per year. Chinese courts are known for their speed; first-instance decisions within about a year are common. In this respect they resemble the UPC more than the US does. The UPC also aims at a roughly 12 to 15 month time frame for first-instance cases where validity is at issue. The US, by contrast, features extensive discovery, occasionally jury trials and often longer timelines. The procedural culture is very different. The UPC, like Chinese courts, operates without discovery in the US sense, which makes proceedings more focused on the written record and expert evidence that the parties present, and less on pre-trial disclosure battles. Whether a company chooses to litigate in the US, the UPC, China, or some combination of these forums will depend on where the key markets and assets are. However, in Prof. Hüttermann’s view, once Europe is an important market, it is hard to justify ignoring the UPC. He expects the court’s caseload and influence to grow strongly over the coming years. A Landmark UPC Case: Syngenta v. Sumitomo A particularly important case in which Prof. Hüttermann was involved is the Syngenta v. Sumitomo matter, concerning a composition patent. This case has become a landmark in UPC practice for several reasons. First, the Court of Appeal clarified a central point about the reach of UPC injunctions. It made clear that once infringement is established in one Member State, this will usually be sufficient to justify a pan-European injunction covering all UPC countries designated by the patent. That confirmation gave patent owners confidence that the UPC can in fact deliver broad, cross-border relief in one go. Second, the facts of the case raised novel issues about evidence and territorial reach. The allegedly infringing product had been analysed based on a sample from the Czech Republic, which is not part of the UPC system. Later, the same product with the same name was marketed in Bulgaria, which is within UPC territory. The Court of Appeal held that the earlier analysis of the Czech sample could be relied on for enforcement in Bulgaria. This showed that evidence from outside the UPC territory can be sufficient, as long as it is properly linked to the products marketed within the UPC. Third, the Court of Appeal took the opportunity to state its view on inventive step. It confirmed that combining prior-art documents requires a “pointer”, in line with the EPO’s problem-solution approach. The mere theoretical possibility of extracting a certain piece of information from a document does not suffice to justify an inventive-step attack. This is one of several decisions where the UPC has shown a strong alignment with EPO case law on substantive patentability. For Prof. Hüttermann personally, the case was also a lesson in oral advocacy before the UPC. During the two appeal hearings, the presiding judge asked unexpected questions that required quick and creative responses while the hearing continued. His practical takeaway is that parties should appear with a small, well-coordinated team: large enough to allow someone to work on a tricky question in the background, but small enough to remain agile. Two or three lawyers seem ideal; beyond that, coordination becomes difficult and “too many cooks spoil the broth”. A Game-Changing CJEU Decision: Bosch Siemens Hausgeräte v. Electrolux Surprisingly, one of the most important developments for European patent litigation in the past year did not come from the UPC at all, but from the Court of Justice of the European Union. In Bosch Siemens Hausgeräte v. Electrolux, the CJEU revisited the rules on cross-border jurisdiction under the Brussels I Recast Regulation (Brussels Ia). Previously, under what practitioners often referred to as the GAT/LuK regime, a court in one EU country was largely prevented from granting relief for alleged infringement in another country if the validity of the foreign patent was contested there. This significantly limited the possibilities for cross-border injunctions. In Bosch, the CJEU changed course. Without going into all procedural details, the essence is that courts in the EU now have broader powers to grant cross-border relief when certain conditions are met, particularly when at least one defendant is domiciled in the forum state. The concept of an “anchor defendant” plays a central role: if you sue one group company in its home forum, other group companies in other countries, including outside the EU, can be drawn into the case. This has already had practical consequences. German courts, for example, have issued pan-European injunctions covering around twenty countries in pharmaceutical cases. There are even attempts to sue European companies for infringement of US patents based on acts in the US, using the logic of Bosch as a starting point. How far courts will ultimately go remains to be seen, but the potential is enormous. For the UPC, this development is highly relevant. The UPC operates in the same jurisdictional environment as national courts, and many defendants in UPC cases will be domiciled in UPC countries. This increases the likelihood that the UPC, too, can leverage the broadened possibilities for cross-border relief. In addition, we have already seen UPC decisions that include non-EU countries such as the UK within the scope of injunctions, in certain constellations. The interaction between UPC practice and the Bosch jurisprudence of the CJEU is only beginning to unfold. Does the UPC Follow EPO Case Law? A key concern for many patent owners and practitioners is whether the UPC will follow the EPO’s Boards of Appeal or develop its own, possibly divergent, case law on validity. On procedural matters, the UPC is naturally different from the EPO. It has its own rules of procedure, its own timelines and its own tools, such as “front-loaded” pleadings and tight limits on late-filed material. On substantive law, however, Prof. Hüttermann’s conclusion is clear: there is “nothing new under the sun”. The UPC’s approach to novelty, inventive step and added matter is very close to that of the EPO. The famous “gold standard” for added matter appears frequently in UPC decisions. Intermediate generalisations are treated with the same suspicion as at the EPO. In at least one case, the UPC revoked a patent for added matter even though the EPO had granted it in exactly that form. The alignment is not accidental. The UPC only deals with European patents granted by the EPO; it does not hear cases on purely national patents. If the UPC were more generous than the EPO, many patents would never reach it. If it were systematically stricter, patentees would be more tempted to opt out of the system. In practice, the UPC tends to apply the EPO’s standards and, where anything differs, it is usually a matter of factual appreciation rather than a different legal test. For practitioners, this has a very practical implication: if you want to predict how the UPC will decide on validity, the best starting point is to ask how the EPO would analyse the case. The UPC may not always reach the same result in parallel EPO opposition proceedings, but the conceptual framework is largely the same. Trends in UPC Practice: PIs, Equivalents and Division-Specific Styles Even in its early years, certain trends and differences between UPC divisions can be observed. On preliminary injunctions, the local division in Düsseldorf has taken a particularly proactive role. It has been responsible for most of the ex parte PIs granted so far and applies a rather strict notion of urgency, often considering one month after knowledge of the infringement as still acceptable, but treating longer delays with scepticism. Other divisions tend to see two months as still compatible with urgency, and they are much more cautious with ex parte measures. Munich, by contrast, has indicated a strong preference for inter partes PI proceedings and appears reluctant to grant ex parte relief at all. A judge from Munich has even described the main action as the “fast” procedure and the inter partes PI as the “very fast” one, leaving little room for an even faster ex parte track. There are also differences in how divisions handle amendments and auxiliary requests in PI proceedings. Munich has suggested that if a patentee needs to rely on claim amendments or auxiliary requests in a PI, the request is unlikely to succeed. Other divisions have been more open to considering auxiliary requests. The doctrine of equivalents is another area where practice is not yet harmonised. The Hague division has explicitly applied a test taken from Dutch law in at least one case and found infringement by equivalence. However, the Court of Appeal has not yet endorsed a specific test, and in another recent Hague case the same division did not apply that Dutch-law test again. The Mannheim division has openly called for the development of an autonomous, pan-European equivalence test, but has not yet fixed such a test in a concrete decision. This is clearly an area to watch. Interim conferences are commonly used in most divisions to clarify issues early on, but Düsseldorf often dispenses with them to save time. In practice, interim conferences can be very helpful for narrowing down the issues, though parties should not expect to be able to predict the final decision from what is discussed there. Sometimes topics that dominate the interim conference play little or no role in the main oral hearing. A Front-Loaded System and Typical Strategic Mistakes UPC proceedings are highly front-loaded and very fast. A defendant usually has three months from service of the statement of claim to file a full statement of defence and any counterclaim for revocation. This is manageable, but only if the time is used wisely. One common strategic problem is that parties lose time at the beginning and only develop a clear strategy late in the three-month period. According to Prof. Hüttermann, it is crucial to have a firm strategy within the first two or three weeks and then execute it consistently. Constantly changing direction is a recipe for failure in such a compressed system. Another characteristic is the strict attitude towards late-filed material. It is difficult to introduce new documents or new inventive-step attacks later in the procedure. In some cases even alternative combinations of already-filed prior-art documents have been viewed as “new” attacks and rejected as late. At the appeal stage, the Court of Appeal has even considered new arguments based on different parts of a book already in the file as potentially late-filed. This does not mean that parties should flood the court with dozens of alternative attacks in the initial brief. In one revocation action, a plaintiff filed about fifty different inventive-step attacks, only to be told by the court that this was not acceptable and that the attacks had to be reduced and structured. The UPC is not a body conducting ex officio examination. It is entitled to manage the case actively and to ask parties to focus on the most relevant issues. Evidence Gathering, Protective Letters and the Defendant’s Perspective The UPC provides powerful tools for both sides. Evidence inspection is becoming more common, not only at trade fairs but also at company premises. This can be a valuable tool for patentees, but it also poses a serious risk for defendants who may suddenly face court-ordered inspections. From the perspective of potential defendants, protective letters are an important instrument, especially in divisions like Düsseldorf where ex parte PIs are possible. A well-written protective letter, filed in advance, can significantly reduce the risk of a surprise injunction. The court fees are moderate, but the content of the protective letter must be carefully prepared; a poor submission can cause more harm than good. Despite the strong tools available to patentees, Prof. Hüttermann does not view the UPC as unfair to defendants. If a defendant files a solid revocation counterclaim, the pressure shifts to the patentee, who then has only two months to reply, prepare all auxiliary requests and adapt the enforcement strategy. This is even more demanding than at the EPO, because the patentee must not only respond to validity attacks but also ensure that any amended claims still capture the allegedly infringing product. It is entirely possible to secure the survival of a patent with an auxiliary request that no longer covers the defendant’s product. In that scenario, the patentee has “won” on validity but lost the infringement case. Managing this tension under tight time limits is a key challenge of UPC practice. The Future Role of the UPC and How to Prepare Today the UPC hears a few hundred cases per year, compared with several thousand patent cases in the US and tens of thousands in China. Nevertheless, both the court itself and experienced practitioners see significant growth potential. Prof. Hüttermann expects case numbers to multiply in the medium term. Whether the UPC will become the first choice forum in global disputes or remain one pillar in parallel proceedings alongside the US and China will depend on the strategies of large patentees and the evolution of case law. However, the court is well equipped: it covers a large, economically important territory, is comparatively cost-effective and offers fast procedures with robust remedies. For companies that may end up before the UPC, preparation is essential. On the offensive side, that means building strong evidence and legal arguments before filing, being ready to proceed quickly and structured, and understanding the specific styles of the relevant divisions. On the defensive side, it may mean filing protective letters in risk-exposed markets, preparing internal processes for rapid reaction if a statement of claim arrives, and taking inspection requests seriously. Conclusion The Unified Patent Court has quickly moved from theory to practice. It offers pan-European relief, fast and front-loaded procedures, and a substantive approach that closely mirrors the EPO’s case law. At the same time, national and EU-level developments like the Bosch Siemens Hausgeräte v. Electrolux decision are reshaping the jurisdictional framework in which the UPC operates, opening the door for far-reaching cross-border injunctions. For patent owners and potential defendants alike, the message is clear: the UPC is here to stay and will become more important year by year. Those who invest the time to understand its dynamics now – including its alignment with the EPO, the differences between divisions, and the strategic implications of its procedures – will be in a much better position when the first UPC dispute lands on their desk. Here is the full transcript of the interview:  Rolf Claessen:Today’s interview guest is Prof. Aloys Hüttermann. He is founder and equity partner of my firm, Michalski · Hüttermann & Partner. More importantly for today’s interview, he has written several books about the Unified Patent Court. The first one already came out in 2016. He is co-editor and author of one of the leading commentaries on the UPC and has gained substantial experience in UPC cases so far – one of them even together with me. Thank you very much for being on IP Fridays again, Aloys. Aloys Hüttermann:Thank you for inviting me, it’s an honour. How did you get so deeply involved in the UPC? Rolf Claessen:Before we dive into the details, how did you end up so deeply involved in the Unified Patent Court? And what personally fascinates you about this court? Aloys Hüttermann:This goes back quite a while – roughly 13 years. At that time it became clear that, after several failed attempts, Europe would really get a pan-European court and a pan-European patent, and that this time it was serious. I thought: this is going to be the future. That interested me a lot, both intellectually and practically. A completely new system was being built. You could watch how it evolved – and, if possible, even help shape it a bit. It was also obvious to me that this would be a complete game changer. Nobody expected that it would take until 2023 before the system actually started operating, but now it is here. I became heavily interested early on. As you mentioned, my first book on the UPC was published in 2016, in the expectation that the system would start soon. It took a bit longer, but now we finally have it. UPC vs. US and China – speed, cost and impact Rolf Claessen:Before we go deeper into the UPC, let’s zoom out. If you compare litigation before the UPC with patent litigation in the US and in China – in terms of speed, cost and the impact of decisions – what are the key differences that a business leader should understand? Aloys Hüttermann:If you look at the three big regions – the UPC territory in Europe, the US and China – these are the major economic areas for many technology companies. One important point is territorial reach. In the UPC, if the conditions are met, you can get pan-European injunctions that cover many EU Member States in one go. We will talk about this later in more detail. On costs there is a huge difference between the US and the UPC. The UPC is much cheaper than US litigation, especially once you look at the number of countries you can cover with one case if the patent has been validated widely. China is different again. The number of patent infringement cases there is enormous. I have seen statistics of around 40,000 infringement cases per year in China. That is huge – compared with roughly 164 UPC infringement cases in the first year and maybe around 200 in the current year. On speed, Chinese courts are known to be very fast. You often get a first-instance decision in about a year. The UPC is comparable: if there is a counterclaim for revocation, you are looking at something like 12 to 15 months for a first-instance decision. The US can be slower, and the procedure is very different. You have full discovery, you may have juries. None of that exists at the UPC. From that perspective, Chinese and UPC proceedings are more similar to each other than either is to the US. The UPC is still a young court. We have to see how influential its case law will be worldwide in the long run. What we already see, at least in Germany, is a clear trend away from purely national patent litigation and towards the UPC. That is inside Europe. The global impact will develop over time. When is the UPC the most powerful tool? Rolf Claessen:Let’s take the perspective of a global company. It has significant sales in Europe and in the US and production or key suppliers in China. In which situations would you say the UPC is your most powerful tool? And when might the US or China be the more strategic battleground? Aloys Hüttermann:To be honest, I would almost always consider bringing a case before the UPC. The “bang for the buck” is very good. The UPC is rather fast. That alone already gives you leverage in negotiations. The threat of a quick, wide-reaching injunction is a strong negotiation tool. Whether you litigate in the US instead of the UPC, or in addition, or whether you also go to China – that depends heavily on the individual case: where the products are sold, where the key markets are, where the defendant has assets, and so on. But in my view, once you have substantial sales in Europe, you should seriously consider the UPC. And for that reason alone I expect case numbers at the UPC to increase significantly in the coming years. A landmark UPC case: Syngenta vs. Sumitomo (composition patent) Rolf Claessen:You have already been involved in several UPC cases – and one of them together with me, which was great fun. Looking at the last 12 to 18 months, is there a case, decision or development that you find particularly noteworthy – something that really changed how you think about UPC litigation or how companies should prepare? Aloys Hüttermann:The most important UPC case I have been involved in so far is the Syngenta v. Sumitomo case on a composition patent. It has become a real landmark and was even mentioned in the UPC’s annual report. It is important for several reasons. First, it was one of the first cases in which the Court of Appeal said very clearly: if you have established infringement in one Member State, that will usually be enough for a pan-European injunction covering all UPC countries designated by the patent. That is a powerful statement about the reach of UPC relief. Second, the facts were interesting. The patent concerned a composition. We had analysed a sample that had been obtained in the Czech Republic, which is not a UPC country. Later, the same product was marketed under the same name in Bulgaria, which is in the UPC. The question was whether the analysis of the Czech sample could be used as a basis for enforcement in Bulgaria. The Court of Appeal said yes, that was sufficient. Third, the Court of Appeal took the opportunity to say something about inventive step. It more or less confirmed that the UPC’s approach is very close to the EPO’s problem-solution approach. It emphasised that, if you want to combine prior-art documents, you need a “pointer” to do so. The mere theoretical possibility that a skilled person could dig a particular piece of information out of a document is not enough. For me personally, the most memorable aspect of this case was not the outcome – that was largely in line with what we had expected – but the oral hearings at the appeal stage. We had two hearings. In both, the presiding judge asked us a question that we had not anticipated at all. And then you have about 20 minutes to come up with a convincing answer while the hearing continues. We managed it, but it made me think a lot about how you should prepare for oral hearings at the UPC. My conclusion is: you should go in with a team, but not too big. In German we say, “Zu viele Köche verderben den Brei” – too many cooks spoil the broth. Two or three people seems ideal. One of them can work quietly on such a surprise question at the side, while the others continue arguing the case. In the end the case went very well for us, so I can speak about it quite calmly now. But in the moment your heart rate definitely goes up. The CJEU’s Bosch Siemens Hausgeräte v. Electrolux decision – a real game changer Rolf Claessen:You also mentioned another development that is not even a UPC case, but still very important for European patent litigation. Aloys Hüttermann:Yes. In my view, the most important case of the last twelve months is not a UPC decision but a judgment of the Court of Justice of the EU (CJEU): Bosch Siemens Hausgeräte v. Electrolux. This is going to be a real game changer for European IP law, and I am sure we have not seen the end of its effects yet. One example: someone has recently sued BMW before the Landgericht München I, a German court, for infringement of a US patent based on acts in the US. The argument is that this could be backed by the logic of Bosch Siemens Hausgeräte v. Electrolux. We do not know yet what the court will do with that, but the fact that people are trying this shows how far-reaching the decision might be. Within the UPC we have already seen injunctions being issued for countries outside the UPC territory and even outside the EU, for example including the UK. So you see how these developments start to interact. Rolf Claessen:For listeners who have not followed the case so closely: in very simple terms, the CJEU opened the door for courts in one EU country to rule on patent infringement that took place in other countries as well, right? Aloys Hüttermann:Exactly. Before Bosch Siemens Hausgeräte v. Electrolux we had what was often called the GAT/LuK regime. The basic idea was: if you sue someone in, say, Germany for infringement of a European patent, and you also ask for an injunction for France, and the defendant then challenges the validity of the patent in France, the German court cannot grant you an injunction covering France. The Bosch decision changed that. The legal basis is the Brussels I Recast Regulation (Brussels Ia), which deals with jurisdiction in civil and commercial matters in the EU. It is not specific to IP; it applies to civil cases generally, but it does have some provisions that are relevant for patents. In Bosch, a Swedish court asked the CJEU for guidance on cross-border injunctions. The CJEU more or less overturned its old GAT/LuK case law. Now, in principle, if the defendant is domiciled in a particular Member State, the courts of that state can also grant cross-border relief for other countries, under certain conditions. We will not go into all the details here – that could fill a whole separate IP Fridays episode – but one important concept is the “anchor defendant”. If you sue a group of companies and at least one defendant is domiciled in the forum state, then other group companies in other countries – even outside the EU, for example in Hong Kong – can be drawn into the case and affected by the decision. This is not limited to the UPC, but of course it is highly relevant for UPC litigation. Statistically it increases the chances that at least one defendant will be domiciled in a UPC country, simply because there are many of them. And we have already seen courts like the Landgericht München I grant pan-European injunctions for around 20 countries in a pharmaceutical case. Rolf Claessen:Just to clarify: does it have to be the headquarters of the defendant in that country, or is any registered office enough? Aloys Hüttermann:That is one of the open points. If the headquarters are in Europe, then it is clear that subsidiaries outside Europe can be affected as well. If the group’s headquarters are outside Europe and only a subsidiary is here, the situation is less clear and we will have to see what the courts make of it. Does the UPC follow EPO case law? Rolf Claessen:Many patent owners and in-house counsel wonder: does the UPC largely follow the case law of the EPO Boards of Appeal, or is it starting to develop its own distinct line? What is your impression so far – both on substantive issues like novelty and inventive step, and on procedural questions? Aloys Hüttermann:On procedure the UPC is, of course, very different. It has its own procedural rules and they are not the same as at the EPO. If we look at patent validity, however, my impression is that there is “nothing new under the sun” – that was the title of a recent talk I gave and will give again in Hamburg. Substantively, the case law of the UPC and the EPO is very similar. For inventive step, people sometimes say the UPC does not use the classical problem-solution approach but a more “holistic” approach – whatever that is supposed to mean. In practice, in both systems you read and interpret prior-art documents and decide what they really disclose. In my view, the “error bar” that comes from two courts simply reading a document slightly differently is much larger than any systematic difference in legal approach. If you look at other grounds, such as novelty and added matter, the UPC even follows the EPO almost verbatim. The famous “gold standard” for added matter appears all over UPC decisions, even if the EPO case numbers are not always cited. The same is true for novelty. So the rule-based, almost “Hilbertian” EPO approach is very much present at the UPC. There is also a structural reason for that. All patents that the UPC currently deals with have been granted by the EPO. The UPC does not handle patents granted only by national offices. If the UPC wanted to deviate from EPO case law and be more generous, then many patents would never reach the UPC in the first place. The most generous approach you can have is the one used by the granting authority – the EPO. So if the UPC wants to be different, it can only be stricter, not more lenient. And there is little incentive to be systematically stricter, because that would reduce the number of patents that are attractive to enforce before the UPC. Patent owners might simply opt out. Rolf Claessen:We also talked about added matter and a recent case where the Court of Appeal was even stricter than the EPO. That probably gives US patent practitioners a massive headache. They already struggle with added-matter rules in Europe, and now the UPC might be even tougher. Aloys Hüttermann:Yes, especially on added matter. I once spoke with a US practitioner who said, “We hope the UPC will move away from intermediate generalisations.” There is no chance of that. We already have cases where the Court of Appeal confirmed that intermediate generalisations are not allowed, in full alignment with the EPO. You mentioned a recent case where a patent was revoked for added matter, even though it had been granted by the EPO in exactly that form. This shows quite nicely what to expect. If you want to predict how the UPC will handle a revocation action, the best starting point is to ask: “What would the EPO do?” Of course, there will still be cases where the UPC finds an invention to be inventive while the EPO, in parallel opposition proceedings, does not – or vice versa. But those are differences in the appreciation of the facts and the prior art, which you will always have. The underlying legal approach is essentially the same. Rolf Claessen:So you do not see a real example yet where the UPC has taken a totally different route from the EPO on validity? Aloys Hüttermann:No, not really. If I had to estimate how the UPC will decide, I would always start from what I think the EPO would have done. Trends in UPC practice: PIs, equivalents, interim conferences Rolf Claessen:If you look across the different UPC divisions and cases: what trends do you see in practice? For example regarding timelines, preliminary injunctions, how validity attacks are handled, and how UPC cases interact with EPO oppositions or national proceedings? Aloys Hüttermann:If you take the most active divisions – essentially the big four in Germany and the local division in The Hague – they all try to be very careful and diligent in their decisions. But you can already see some differences in practice. For preliminary injunctions there is a clear distinction between the local division in Düsseldorf and most other divisions. Düsseldorf considers one month after knowledge of the infringement as still sufficiently urgent. If you wait longer, it is usually considered too late. In many other divisions, two months is still viewed as fine. Düsseldorf has also been the division that issued most of the ex parte preliminary injunctions so far. Apart from one special outlier where a standing judge from Brussels was temporarily sitting in Milan, Düsseldorf is basically the only one. Other divisions have been much more reluctant. At a conference, Judge Pichlmaier from the Munich division once said that he could hardly imagine a situation where his division would grant an ex parte PI. In his words, the UPC has two types of procedure: one that is fast – the normal main action – and one that is very fast – the inter partes PI procedure. But you do not really have an “ultra-fast” ex parte track, at least not in his division. Another difference relates to amendments and auxiliary requests in PI proceedings. In one recent case in Munich the court said more or less that if you have to amend your patent or rely on auxiliary requests in a PI, you lose. Other divisions have been more flexible and have allowed auxiliary requests. Equivalence is another area where we do not have a unified line yet. So far, only the Hague division has clearly found infringement under the doctrine of equivalents and explicitly used a test taken from Dutch law. Whether that test will be approved by the Court of Appeal is completely open – the first case settled, so the Court of Appeal never ruled on it, and a second one is still very recent. Interestingly, there was another Hague decision a few weeks ago where equivalence was on the table, but the division did not apply that Dutch-law test. We do not know yet why. The Mannheim division has written in one decision that it would be desirable to develop an autonomous pan-European test for equivalence, instead of just importing the German, UK or Dutch criteria. But they did not formulate such a test in that case because it was not necessary for the decision. So we will have to see how that evolves. On timelines, one practical difference is that Düsseldorf usually does not hold an interim conference. That saves them some time. Most other divisions do hold interim conferences. Personally, I like the idea because it can help clarify issues. But you cannot safely read the final outcome from these conferences. I have also seen cases where questions raised at the interim conference did not play any role in the main oral hearing. So they are useful for clarification, but not as a crystal ball. Front-loaded proceedings and typical strategic mistakes Rolf Claessen:If you look at the behaviour of parties so far – both patentees and defendants – what are the most common strategic mistakes you see in UPC litigation? And what would a well-prepared company do differently before the first statement of claim is ever filed? Aloys Hüttermann:You know you do not really want me to answer that question… Rolf Claessen:I do! Aloys Hüttermann:All right. The biggest mistake, of course, is that they do not hire me. That is the main problem. Seriously, it is difficult to judge parties’ behaviour from the outside. You rarely know the full picture. There may be national proceedings, licensing discussions, settlement talks, and so on in the background. That can limit what a party can do at the UPC. So instead of criticising, I prefer to say what is a good idea at the UPC. The system is very front-loaded and very fast. If you are sued, you have three months to file your statement of defence and your counterclaim for revocation. In my view, three months are manageable – but only if you use the time wisely and do not waste it on things that are not essential. If you receive a statement of claim, you have to act immediately. You should have a clear strategy within maybe two or three weeks and then implement it. If you change your strategy every few weeks, chances are high that you will fail. Another point is that everything is front-loaded. It is very hard to introduce new documents or new attacks later. Some divisions have been a bit generous in individual cases, but the general line is strict. We have seen, for example, that even if you filed a book in first instance, you may not be allowed to rely on a different chapter from the same book for a new inventive-step attack at the appeal stage. That can be regarded as late-filed, because you could have done it earlier. There is also case law saying that if you first argue inventive step as “D1 plus D2”, and later want to argue “D2 plus D1”, that can already be considered a new, late attack. On the other hand, we had a revocation action where the plaintiff filed about 50 different inventive-step attacks in the initial brief. The division then said: this does not work. Please cut them down or put them in a clear hierarchy. In the end, not all of them were considered. The UPC does not conduct an ex officio examination. It is entitled to manage the case and to tell the parties to limit themselves in the interest of a fair and efficient procedure. Rolf Claessen:I have the feeling that the EPO is also becoming more front-loaded – if you want to rely on documents later, you should file them early. But it sounds like the UPC is even more extreme in that regard. Aloys Hüttermann:Yes, that is true. Protective letters, inspections and the defendant’s perspective Rolf Claessen:Suppose someone from a company is listening now and thinks: “We might be exposed at the UPC,” or, “We should maybe use the UPC offensively against competitors.” What would you consider sensible first steps before any concrete dispute arises? And looking three to five years ahead, how central do you expect the UPC to become in global patent litigation compared to the US and China? Aloys Hüttermann:Let me start with the second part. I expect the UPC to become significantly more important. If we have around 200 cases this year, that is a good start, but it is still very small compared to, say, 4,000 to 5,000 patent cases per year in the US and 40,000 or so in China. Even François Bürgin and Klaus Grabinski, in interviews, have said that they are happy with the case load, but the potential is much larger. In my view, it is almost inevitable that we will see four or five times as many UPC cases in the not-too-distant future. As numbers grow, the influence of the UPC will grow as well. Whether, in five or ten years, companies will treat the UPC as their first choice forum – or whether they will usually run it in parallel with US litigation in major disputes – remains to be seen. The UPC would be well equipped for that: the territory it covers is large, Europe is still an important economy, and the UPC procedure is very attractive from a company’s perspective. On sensible first steps: if you are worried about being sued, a protective letter can make a lot of sense – especially in divisions like Düsseldorf, where ex parte PIs are possible in principle. A protective letter is not very expensive in terms of court fees. There is also an internal system that ensures the court reads it before deciding on urgent measures. Of course, the content must have a certain quality; a poor protective letter can even backfire. If you are planning to sue someone before the UPC, you should be extremely well prepared when you file. You should already have all important documents and evidence at hand. As we discussed, it is hard to introduce new material later. One tool that is becoming more and more popular is inspection – not just at trade fairs, where we already saw cases very early, but also at company premises. Our firm has already handled such an inspection case. That is something you should keep in mind on both sides: it is a powerful evidence-gathering tool, but also a serious risk if you are on the receiving end. From the defendant’s perspective, I do not think the UPC is unfair. If you do your job properly and put a solid revocation counterclaim on the table, then the patentee has only two months to prepare a full reply and all auxiliary requests. And there is a twist that makes life even harder for the patentee than at the EPO. At the EPO the question is mainly: do my auxiliary requests overcome the objections and are they patentable? At the UPC there is an additional layer: do I still have infringement under the amended claims? You may save your patent with an auxiliary request that no longer reads on the defendant’s product. That is great for validity, but you have just lost the infringement case. You have kept the patent but lost the battle. And all of this under very tight time limits. That creates considerable pressure on both sides. How to contact Prof. Hüttermann Rolf Claessen:Thank you very much for this really great interview, Aloys. Inside our firm you have a nickname: “the walking encyclopedia of the Unified Patent Court” – because you have written so many books about it and have dealt with the UPC for such a long time. What is the best way for listeners to get in touch with you? Aloys Hüttermann:The easiest way is by email. You can simply write to me, and that is usually the best way to contact me. As you may have noticed, I also like to speak. I am a frequent speaker at conferences. If you happen to be at one of the conferences where I am on the programme – for example, next week in Hamburg – feel free to come up to me and ask me anything in person. But email is probably the most reliable first step. Rolf Claessen:Perfect. Thank you very much, Aloys. Aloys Hüttermann:Thank you. It was a pleasure to be on IP Fridays again. Some of your long-time listeners may remember that a few years ago – when you were not yet part of our firm – we already did an episode on the UPC, back when everything was still very speculative. It is great to be back now that the system is actually in place and working. Rolf Claessen:I am very happy to have you back on the show.
• 
  Interview With Wole Araromi About the Registration and Enforcement of Trademarks in Nigeria – the Future of the PTAB in the US – UPC Anti-Interim-License Injunction – Personal Liability on Patent Infringement Cases – Episode 168 – IP Fridays 31.10.2025 24m

  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 – German Aerospace Center DLR – Licensing, Startups and IP Strategy For a Large Research Institution in Germany – IP Fridays – Episode 167 27.09.2025 26m

  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.
• 
  Update UK Trademark Caselaw – Doctrine of Postsale Confusion – Interview With Joshua Cunnington – Lutnick Suggests 5% Patent-Value Fee – UPC Court of Appeal Does Not Endorse Referral to the CJEU – IP Fridays Podcast – Episode 166 29.08.2025 24m

  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.
• 
  Interview With J. Christian Wichard, Deputy Director General at the German Federal Ministry of Justice and Consumer Protection in Germany – History of the Unified Patent Court (UPC) – Important Changes in IP Law in Europe – the EU IP Reform Package – Copyright and AI – Remuneration of Creators in the Platform Economy – IP Fridays Podcast – Episode 165 25.07.2025 46m

  I am Rolf Claessen and my co-host Ken Suzan and I are welcoming you to episode 165 of our IP Fridays podcast! Today’s interview guest is Christian Wichard, who is the Deputy Director General of at the Federal Ministry of Justice and Consumer Protection and he has been doing that for about 14 years, with a short brek from 2009 to 2014, where he as Deputy Director General at the WIPO. He is overseeing all legislative efforts of the German government related to intellectual property and we talk about many interesting topics. He had large contributions to the becoming of the Unified Patent Court, we talk about the role of AI in IP, about new reforms in the IP world. Stay tuned for this interesting interview! Before we jump into this interview, I have news for you: The USPTO has launched DesignVision, the first AI-powered image search tool available to design patent examiners through the Patents End-to-End (PE2E) system. This tool uses artificial intelligence to support prior art searches in design patent examination and is part of the agency’s broader efforts to modernize workflows and reduce pendency. In Europe, the EPO’s Enlarged Board of Appeal issued a much-anticipated decision in G 1/23 on July 2. The Board clarified that a product already on the market before the filing date of a European patent application cannot be excluded from the state of the art under Article 54(2) EPC merely because its internal structure or composition could not be analysed or reproduced. Furthermore, any technical information about that product that was publicly available before the filing date forms part of the state of the art—regardless of whether the product itself could be reverse-engineered. Just weeks earlier, on June 18, the same Board issued another important decision in G 1/24, ruling that claims must always be interpreted in the context of the description and drawings—not only when ambiguities arise. This decision aligns EPO practice more closely with that of the Unified Patent Court and is a major step toward harmonization. Speaking of the UPC, its case management system (CMS) transitioned to a new platform between July 3 and July 8. During the switchover, certain functionalities—like opt-out requests and representative registrations—were temporarily limited. Since July 8, all filing capabilities have resumed, supported by updated FAQs and training materials. Finally, the EUIPO has expanded its mediation service to cover all inter partes proceedings in the areas of trademarks and designs. As of June 2, 2025, parties in opposition or invalidity proceedings can now opt into mediation free of charge, fully online, and on a voluntary basis. Now let’s jump into the interview: In this episode of IP Fridays, Rolf Claessen speaks with J. Christian Wichard, Deputy Director General at the German Federal Ministry of Justice and Consumer Protection. Wichard has been one of the most influential figures in shaping intellectual property law and policy in Germany and Europe over the past two decades. He reflects on the most significant developments in European IP law during this time. First and foremost is the creation of the Unitary Patent and the Unified Patent Court (UPC), which he describes as a historic milestone for patent protection and enforcement across Europe. He explains why this new system makes litigation more accessible, enhances legal certainty, and strengthens Europe’s competitiveness. The second major development he highlights is the EU Directive on Copyright in the Digital Single Market, particularly the implementation of Article 17 concerning the liability of content-sharing platforms. He outlines the challenges of balancing copyright protection with fundamental rights and explains how Germany approached the directive’s implementation. Third, Wichard discusses the Second Patent Modernization Act in Germany, which addressed some of the systemic effects of bifurcation in patent litigation. He explains how the reform introduced measures to better synchronize infringement and invalidity proceedings, and how it introduced a safety valve allowing courts to deny injunctions in exceptional cases. In a detailed discussion about the UPC, Wichard shares his personal involvement in both the early conceptual phase and the more recent ratification process. He explains why it took so long to bring the UPC into force and how political, legal, and procedural hurdles—especially in Germany—had to be overcome. He also outlines the core advantages of the UPC: its broad territorial scope, procedural efficiency, cost-effectiveness, and the expertise of its judges. According to Wichard, the UPC is well positioned to become one of the leading patent litigation venues worldwide. The conversation then turns to the current EU IP reform package. Wichard explains the status of various legislative dossiers, including the proposal for compulsory licensing in crisis situations, the introduction of unitary supplementary protection certificates (SPCs), and the regulation of standard-essential patents (SEPs). He offers insights into the controversial withdrawal of the SEP proposal and the diverging views among member states. Another focal point of the interview is the intersection of copyright and artificial intelligence. Wichard discusses whether copyrighted works can be used to train AI systems, whether AI-generated content can be protected under copyright law, and what challenges generative AI poses for the remuneration of human creators. He emphasizes the need for legal clarity, transparency, and a fair remuneration system in the age of AI. Finally, Wichard talks about a new official expert opinion on remuneration in the platform economy and for private copying in Germany. Although the report had not yet been published at the time of the interview, he reveals that its main conclusion is that the current system does not require fundamental reform, but that improvements in transparency and efficiency are necessary. The report is expected to be published shortly and may already be available when this episode airs. This is a rare opportunity to hear from someone who has been deeply involved in drafting and negotiating major pieces of IP legislation at the national and European levels. Whether you are a practitioner, policymaker, or simply interested in the future of IP in Europe, this episode offers valuable insights into where we stand and where we are heading. If you don’t know Christian Wichard, he is the Deputy Director General at the Federal Ministry of Justice and Consumer Protection of the German government, and I’m very happy that you are taking your time to be on IP Fridays. J. Christian Wichard: Thank you for having me. Thanks. Rolf Claessen: Thank you very much for being here. Just to clarify, and that’s important: everything that you mention here in this interview is your personal opinion and you don’t speak for the government of Germany. That is clear. And you have been Deputy Director General at the Federal Ministry of Justice and Consumer Protection for over 10 years now and you are in charge of everything related to intellectual property in the government of Germany and so that’s very interesting for our listeners of IP Fridays, of course. What have been the top three things you remember from this whole time that in your personal opinion have the biggest impact in the intellectual property world? J. Christian Wichard: First let me start with a small clarification. I’ve been Deputy Director General in charge of IP matters twice: first between 2006 and 2010. Then I moved to WIPO as DDG, came back in 2015 to the ministry, and back again in 2019. And yes, I mean there are a number of IP issues that have been around during the last 10 years. And I think by far number one is the creation of the unitary patent and the Unified Patent Court. I think in my view this is almost a once-in-a-lifetime event, at least in the area of intellectual property. You have a patent that is valid currently in 18 countries and possibly in the future in the whole European Union. You have a specialized patent jurisdiction with judgments that are enforceable in all 18 participating countries. I think that in itself is already a huge achievement that makes patent litigation much easier in Europe. It lowers the threshold for SMEs to enter the patent system. It also contributes to Europe’s competitiveness and I think it’s also a unifying force beyond the patent family. So it’s the first civil or private law European litigation system we have. Number two was already a bit more difficult. So here I’m hesitating a little, but probably it’s the EU directive on copyright and related rights in the digital single market that was passed in 2019 and our implementation in Germany. In translation, that would mean the law on the responsibility of service providers under copyright for the sharing of content. Already the directive was hotly disputed and heavily criticized, but in the end I think it did its job. It aims at extending copyright and related rights into the digital environment, including all limitations and exceptions, and this is a very complex process. And hotly debated in particular was Article 17 of the directive, which clarifies the responsibilities of content-sharing platforms. And here just to explain a little: these platforms make a business out of making content available online, but traditionally they haven’t really borne any responsibility for copyright infringements that happen on these platforms. So new is now that they can be held accountable for material that is on their platform. The directive considers this posting by third parties by users as an act of communication to the public by the platform itself, which might trigger liability. So that means that they must either try to get the license for the copyright-protected works that are posted there or must prevent it from being made available even if they haven’t received a warning. So this goes beyond the notice-and-take-down system that was established by the e-commerce directive and this also provoked the discussion on upload filters, with demonstrations in the streets and everything. But at the same time, the DSM directive also stipulates a principle of proportionality. It explicitly states that there should be no general obligation for providers to monitor everything at all times and it also safeguards exceptions and limitations. So in a way you’re looking at a difficult balance to implement into national law, given also the different legal traditions that we have. So that was the challenge we were facing: trying to implement that while doing justice both to copyright protection as well as to exceptions and limitations — the countervailing freedoms and rights that have to be guaranteed — and to make that implementable in a way that is also possible in a technical environment. I think in the end, in our implementation, we’ve done a reasonably good job. That was indirectly confirmed by the guidelines that were later passed by the EU Commission — after we had already passed our law — and also by the ECJ judgment that came out a bit later. So I think that was number two. And perhaps number three is the Second Patent Law Modernization Act, which we passed in 2021. Not so much for all the rules that are new or have been reformed there, but more because it touches on some key features of the German patent litigation system. In its key part, this modernization act seeks to address certain consequences of the bifurcation we have — the separation between, on the one hand, invalidity actions that are handled by the Federal Patent Court, which includes technical judges, and on the other hand, infringement actions that go to the general civil courts, some of which are rather specialized. This bifurcation is a very German tradition. The reason why we have it is that patents are granted only after extensive examination by technical experts at the patent office, and they should not be declared invalid quickly by legal judges. So that’s why the infringement court should normally treat a patent as valid — unless they have very clear indications that it might not be valid — and then they can hold the procedure. But typically, they would have to treat a patent as valid because it has been examined. That also means that infringement actions can proceed really quickly. So under a year you can have a judgment that is enforceable in Germany, and you can have a strong injunction against an infringer. That, in a way, is the strength of the German system — the speed with which you can get an infringement judgment. But the declaration of invalidity then takes place, as I said, before the Federal Patent Court in a separate procedure involving technical expert judges. Those principles are still valid and Germany is keeping them. Problems sometimes arise because there often is a time gap between the invalidity action at the Federal Patent Court and the infringement action. The invalidity action often starts later and takes longer than the infringement proceedings. That means that in extreme cases it might happen that you get an injunction issued on the basis of a patent that is later declared invalid by the Federal Patent Court. In extreme cases only — but still, it might happen. Then there is the question of patent quality. Is the assumption still correct that patents are granted on the basis of a thorough technical examination? Some are questioning that — less so with regard to the German office, but more so with regard to the European Patent Office. I’m not saying that EPO patents are bad, but there has been a patent quality debate relating to the EPO. The Second Patent Modernization Act has made efforts to address the negative consequences and to address them within the system — without changing bifurcation, but to make it a bit more viable. So there is a shorter deadline: it is meant to speed up invalidity proceedings. There are shorter deadlines for filing a response in invalidity actions before the Federal Patent Court. And then the Federal Patent Court also should issue a first early substantive assessment as to the validity within six months. So parties should get an indication of whether the court thinks that a patent is valid or not reasonably early in the procedure. That can then also be included in the infringement procedure. The infringement court can decide whether — on the basis of this early opinion — it might have to hold the proceedings until the invalidity action is over, because there may be indications that the patent is invalid. That is meant to bring both procedures closer together. Another aspect of the act was that we also expressly included a provision into the law that now allows a court — in exceptional cases — to grant damages rather than an injunction, where granting an injunction would be disproportionate. So that is meant to serve as a safety valve and not meant to undercut the strong and enforceable patent rights, which are a cornerstone of the German patent system. Sorry, that was a bit long, but I think those are still three key things that happened over the last ten years. Rolf Claessen: Yeah. J. Christian Wichard: But again, I mean, I think number one definitely is the unitary patent and the Unified Patent Court. Rolf Claessen: We will talk about the Unified Patent Court. But first, maybe also my feeling is that the German patent system — one of the major differences compared to other important jurisdictions — is the injunction. That you can get an injunction, compared for example to the US, where it is very difficult to get one. And my understanding and feeling is that since the reform, there has not been a lot of case law denying injunctions and just awarding damages. So I think the big fears of patentees have not become true so far. Let’s see how this develops. J. Christian Wichard: It’s just a safety valve. So it’s not meant to be the regular feature of patent litigation. Rolf Claessen: You have watched very closely how the Unified Patent Court was established — and in fact, you have played an important role in its formation. Can you briefly describe your role in the process that brought the UPC into reality? J. Christian Wichard: Yes. I participated in two phases, in a way. First, in the early and formative phase between 2006 and 2009. And then in 2023 again, as Deputy Director General here in the ministry. In the early phase, our job was to voice the key concerns of the German government. Those concerns were regarding the Community Patent system, as it was called at the time — which then became the Unitary Patent. The aim was an efficient patent granting system with a limited language regime that would lower translation costs, but also reduce legal uncertainty arising from translation requirements. Because you never really know whether there are differences between the different language versions, especially with regard to the claims. Also, the price of a unitary patent should not exceed that of a European patent valid in four countries — cost-benefit efficiency was key. The second major concern was to ensure a high-quality and efficient court system. High quality also meant specialization: a specialized patent court with expert judges, including technical judges. So that was the German position from the outset — an official procedure that should run quickly and effectively. The key decisions in this regard were already taken in 2009 and 2010, when the EU Council adopted the first common position. Most of the substance had already been developed by then. Then in 2019, when I was back at the ministry, we had to address a lot of difficulties, both constitutional and political. This included legal challenges in Germany, and of course, the Brexit. Trying to sort all of that out was quite a handful. We had to pass the ratification law, oversee the development of secondary legislation like the Rules of Procedure — which were the first European set of rules for a private court system — as well as the schedule of fees and so on. In the end, we supported the establishment of the court, which administratively still functions like a startup with a very small secretariat and administrative unit. So they still need a lot of help from the member states. Rolf Claessen: Right. It took a couple of decades, as you mentioned, for the UPC to finally open its doors. The idea is really old, and the process has been quite long and tedious in some phases. Why, in your personal opinion, did it take so long to establish the Unified Patent Court? J. Christian Wichard: I’m not going to talk about the period before 2009, because I think there was quite a mix of factors. One was the tension between linguistic diversity and efficiency — between a multilingual approach and a more streamlined system. After the key features were established in 2010, the difficulties arose not so much from the substance of the system, but from external factors. First, there was an opinion from the ECJ that was necessary. Member states had asked the ECJ for an opinion, which was delivered in 2011. Everything was fine, we just needed to make a few adjustments. Then Spain and Italy didn’t want to participate — again, for linguistic reasons. So in 2012, for the first time in EU history, reinforced cooperation was used. The Council adopted the European Patent Package without Spain and Italy. That included the Unitary Patent. In 2013, the Agreement on the establishment of the Unified Patent Court was signed by almost all member states. But then Spain challenged the Council decision before the ECJ, and it took until 2015 to get a decision confirming everything was in order. Next came difficulties in Germany. A constitutional complaint was filed in 2017, which meant we had to suspend ratification. We wanted to be one of the first countries to ratify, but couldn’t. The Federal Constitutional Court issued a decision in 2020 — not on substance, but on procedural grounds. So we had to pass a new law, which we did quickly. Then another constitutional complaint was filed, which again delayed things, but this time the court acted faster and confirmed the law in 2021. Only then were we able to ratify. And of course, there was the Brexit. The UK was one of the three countries with the most patent activity, whose ratification was required for the system to enter into force — alongside Germany and France. When the UK left the EU, we had to adjust the agreement, and Italy was determined to be the third country based on patent activity. Once all these complications were cleared, we formally ratified the system in February 2023, and the court system officially started in June 2023. Rolf Claessen: The idea is really old and the process has been quite long and tedious in some phases. Why, in your personal opinion, did it take so long to establish the Unified Patent Court? J. Christian Wichard: I think the key advantages of the Unified Patent Court system are, first, the territorial scope. That’s a big achievement. You have only one procedure for handling a patent dispute, and the resulting judgment is valid and enforceable in all 18 participating member states. Also, you have a procedure that will contribute to the development of a unified European patent case law. That, in turn, will lead to more legal certainty throughout what you might call a single European patent litigation space. Second, there is procedural efficiency. A single action before the UPC in most cases will be more cost-effective than multiple national actions. Even if you look at the current fees, a UPC procedure can often be cheaper than a German court procedure — if you consider the need to go through both infringement and validity procedures in several national courts, possibly including appeal instances. The UPC Rules of Procedure are designed to expedite proceedings. Typically, the first instance decision is issued within 12 months after commencement. They are still managing to stick to that timeline for now. Then you have a limited language regime. Typically, the language of the proceedings is the language of the patent. But importantly, English can be used before all local chambers, and that has been authorized. This makes it easier to access for international companies. The third major advantage is expertise. The court consists of the most experienced patent judges from the participating member states. They were selected not by the member states, but by an independent expert panel, which makes the selection process less susceptible to political pressure. That is a real benefit and contributes to the UPC being recognized as a high-quality patent court — at least equivalent to the respected German system. And of course, legal and technical judges sit together on the bench in many cases. Technical judges are not just expert advisors; they participate fully in the decision-making process. That really adds value when dealing with technically complex matters. Rolf Claessen: And more countries are joining. So it’s really a growing system. I think Ireland might be joining sometime soon, and other countries have expressed interest. So yes, it’s growing. And the usage is increasing a lot — we see that in the monthly figures published by the UPC, which are all going up. So the acceptance is clearly rising. J. Christian Wichard: Yes. Rolf Claessen: Let’s switch topics a bit and talk about the EU’s IP harmonization package. The European Union wants to reform and harmonize intellectual property. What is the goal of this package, and what are the most important components in your view? J. Christian Wichard: What we currently have is what’s referred to as the patent package. It includes three dossiers, each of which is quite substantial. First, there is a proposed regulation aimed at establishing an EU-wide compulsory licensing system. That is a politically hot topic. Second, there are dossiers relating to Supplementary Protection Certificates (SPCs). This includes a regulation to harmonize the granting of national SPCs through a single European procedure — that’s two regulations — and another regulation to establish a unitary SPC as the long-awaited complement to the unitary patent. The third element is a regulation on standard-essential patents (SEPs) aimed at increasing transparency and facilitating the licensing process. This is also a very complex and hotly debated issue. Rolf Claessen: The EU Commission has announced its intention to withdraw the SEP component of the package. What is the current status, particularly with regard to SPCs and compulsory licenses in your opinion? J. Christian Wichard: The SEP dossier has not yet been officially withdrawn, but the Commission has indeed announced its intention to do so. It has given the Council and the European Parliament an opportunity to comment. The European Parliament was very clear in its response — it is clearly against a withdrawal. The Parliament made this position very clear to the Commission. Unfortunately, the Council is split. We didn’t really have the possibility to discuss the substance of the SEP proposal thoroughly because we were so busy dealing with compulsory licensing and SPCs. The Presidencies so far have not scheduled in-depth discussions of the SEP dossier. But in the end, 10 countries — including Germany, France, and Italy — opposed the withdrawal very clearly. About the same number supported the withdrawal, including Sweden, Finland, and the Netherlands. So in a way, the Council was divided. From the point of view of the German government, a withdrawal would be unfortunate. While we were not happy with every single element of the SEP proposal, we still think it is better than having no instrument at all. It provides a good basis for substantive discussion in the Council with the aim of reaching a qualified majority necessary to adopt legislation. The alternative would be nothing — and we think that would not be a good outcome. At least from the German government’s perspective, there is a clear need to enhance transparency and to provide guidance for licensing negotiations. That is obviously quite difficult at the moment, as we see from the divergent court decisions emerging in the EU. Regarding the compulsory licensing proposal: an agreement was reached between the Commission, the Council, and the European Parliament in the so-called trilogue negotiations in May 2025. Currently, we are in the legal scrubbing phase, which means that the legal services are reviewing the text for consistency and correctness. The formal adoption will take place at one of the next Council meetings — we don’t know exactly when, but it will happen. So compulsory licensing — which, incidentally, was the proposal we cared the least about — will be the first to be finalized. The SPC discussions are significantly more complicated — at least for three reasons. First, the Council Legal Service — unprompted — questioned the legal basis used by the Commission for the proposal. The legal basis is Article 118 of the Treaty on the Functioning of the EU. The argument is that a unitary SPC would only be valid in the 18 member states currently participating in the unitary patent system, and that therefore it doesn’t qualify as a title valid “throughout the EU,” which is what Article 118 requires. We don’t agree with that assessment, and neither does the Commission’s Legal Service. Still, this point has become a stumbling block. Second, there is the question of judicial competence. Not all member states agree on whether the Unified Patent Court should be responsible for invalidity actions — both direct and indirect. If the EUIPO were to grant the title, then, according to the Commission Legal Service, direct invalidity actions might fall under the jurisdiction of the ECJ. That’s not ideal. So some member states suggested involving the EPO instead. However, involving a non-EU body like the EPO as the granting authority poses another problem — you have to stretch EU law considerably to allow for that. It may not even be possible legally. So we are facing a complicated mix of legal and political issues — regarding the legal basis, the competence of the UPC, and the choice of granting institution. Fortunately, the Danish Presidency is very ambitious. They have declared that they want to bring the SPC negotiations to a conclusion by the end of their term — at least by reaching a qualified majority in Council. Rolf Claessen: So interesting to hear the status from you because you are an insider — you are in discussion with your colleagues from other countries, trying to reach agreement and achieve the best outcomes for users of the system. I’m very grateful that you are participating there. Since you are here in the podcast, I also wanted to ask you something else — a topic that has been in the news and is also hotly debated among IP professionals. What are the current discussions about copyright versus artificial intelligence on a government level? Can artificial intelligence be a creator? And can copyrighted material be used to train artificial intelligence without the consent of the creator? There are already some early court decisions on this around the world. What is your view — and what is the current status? J. Christian Wichard: This is definitely an extremely hot topic and one that raises deep concern among stakeholders in the creative industries. On the one hand, generative AI is a helpful tool. It can increase efficiency and assist in creative work. But on the other hand, there’s a fear that it might replace human-created content. And we are already seeing that. Machine translations are becoming common. Background music can be generated by AI. Even press articles and news items can now be produced by algorithms. So the fundamental question is: How can copyright still support human creators in making a living from their work? That is why this discussion is both difficult and politically charged. At the Ministry — where we are also responsible for copyright — we are very active in this area. Not always in the media, but we’ve been working behind the scenes. For example, we organized an international conference early last year. That was one of the first in a long series of events on this topic. We’ve also actively contributed to the debate in the Council of the EU. Perhaps most importantly, we are in touch with the European Commission to prepare a broader policy discussion at EU level. We believe that this debate should not be limited to the text and data mining (TDM) exception that already exists in the Digital Single Market Directive. There will be an evaluation of that exception next year, but we think we shouldn’t wait. The debate is broader, and it should start now — with a view to finding practical solutions. To your questions: Can copyrighted material be used to train AI without the consent of the creator? The answer is: To a certain extent, yes. It depends on whether the training qualifies as commercial text and data mining. If it does, then the copyright owner has the right to opt out of the exception. They can simply say “no,” and then their works must not be used for training purposes. This opt-out right was introduced to encourage the development of a licensing market. If you can say no, then you can also ask for a fee in exchange for a license. The problem, however, is transparency. You don’t really know whether your work has been used, because text and data mining happens invisibly. There’s no trace in your work showing whether it was part of an AI training dataset. The EU AI Act has introduced some transparency obligations. For example, AI providers must publish a summary of the works used for training. This summary must be meaningful — meaning it should be sufficient to form the basis of a claim in court, for example. Currently, several working groups are preparing a code of practice and a standard template for such summaries. These processes are led by the European Commission. As for your second question — can AI be a “creator”? I would say: not in itself. A work generated entirely by AI is not a copyright-protected work in our current legal system. But a work created with the help of AI — where a human uses the AI tool in a creative way — can still qualify for copyright protection. It depends on the degree of human input. And can AI-generated output infringe copyright? Possibly — if the output is more or less identical to a copyrighted work. Even if the algorithm says it was a coincidence, if the result is substantially the same as an existing work, it might still be considered infringement. Should AI-generated works themselves be protected by copyright or related rights? Our position is: not at this point. We don’t see a need to incentivize investment in AI-generated content by granting copyright. The bigger question, however, is: How do we ensure fair remuneration for human creators in the digital and AI age? Rolf Claessen: I think there has been an official opinion by the government regarding the remuneration of creators — for streaming or private copies. Can you summarize the main findings and suggestions from this official opinion? J. Christian Wichard: It hasn’t been published yet — but it will be published in the coming weeks. We’ve received the report recently, and we are currently preparing it for publication. This expert opinion, which we commissioned, deals with two central questions. The first part concerns the remuneration of creators in the platform economy — particularly in relation to streaming. That covers all sectors except music, because a separate study on music was already commissioned by the Federal Commissioner for Culture and Media. The second part of the opinion deals with the remuneration system for private copying — which is authorized under German law. We have a fairly elaborate system in place, which dates back to the late 1960s and early 1970s, and has been reformed several times. The question was: Does this system still work as intended? I won’t go into the details of the results yet — but the good news is that there’s no need for a fundamental overhaul. The core elements of the system can remain in place. That said, the opinion does include some suggestions to improve transparency — for example, who receives how much, how value is calculated, and what constitutes adequate remuneration. It also includes proposals for increasing efficiency within the system. Rolf Claessen: Do you have an idea when the report will be publicly available? J. Christian Wichard: We’ve just requested authorization for publication. Normally, our political leadership is rather quick with granting that authorization. So it could happen within the next two weeks — just in time for the summer, maybe as reading material by the pool. Rolf Claessen: And we’re recording this in mid-July — so by the time this podcast is published, the report might already be available. If so, I will include a link in the description below this episode. J. Christian Wichard: I’ll send you a note once it’s published. Rolf Claessen: That would be great. It has been really great to have you as a guest in this interview, and I’m very grateful that you took the time. It’s not often that I have the chance to meet someone who has helped shape the IP landscape in Germany and Europe as much as you have. So, thank you very much. J. Christian Wichard: Just to say: I’m not doing this alone, of course. We have very qualified colleagues here in the Ministry who are in charge of copyright, patent law, trademark law, and fair competition. I’m not the only one working on these issues. Rolf Claessen: Of course. But you oversee the efforts — and your insight has been very valuable. Thank you so much again. J. Christian Wichard: Thank you for having me. It was a pleasure.
• 
  AI Tools For IP Lawyers – Cost Savings – Real World Examples – Human Oversight – Interview With Arthur Rothrock and Nicholas Sarokhanian – EPO Enlarged Board of Appeal Decision G1/24 Regarding Patent Claims – USPTO Discontinuing Accelerated Examination For Utility Patents – Octoberfest Decision of the European Court of Justice – IP Fridays – Episode 164 27.06.2025 35m

  I am Rolf Claessen and my co-host Ken Suzan and I are welcoming you to episode 164 of our podcast IP Fridays! Today’s interview guests are Arthur Rothrock and Nicholas Sarokhanian. My co-host Ken Suzan talks with them about AI tools for IP lawyers. Arthur Rothrock https://www.linkedin.com/in/rothrocka/ Nicholas Sarokhanian https://btlaw.com/en/people/nicholas-sarokhanian Podcast: The Litigator’s Path – https://podcasts.apple.com/us/podcast/the-litigators-path/id1765423485 Podcast: Minds & Machines – https://podcasts.apple.com/us/podcast/minds-machines-navigating-ai-and-the-law/id1801779390 U.S. Copyright Office, Report on Copyright and Artificial Intelligence https://www.copyright.gov/ai Before we jump into the interview, we have news for you! The USPTO is discontinuing Accelerated Examination program for utility applications. The USPTO is currently facing staff-related challenges including a hiring freeze, which seems to just have ended, return-to-office mandates, and potential attrition due to these policies. These issues seem to impact employee morale, potentially increasing the backlog of unexamined patents, and creating uncertainty about the future of the agency. The USPTO has experienced a significant leadership vacuum following abrupt emails earlier this February encouraging early retirement of all Federal employees, and an unusual level direct outside communication and control of employees from OPM/DOGE. The first office action pendency for patents increased from 19.9 months in 2024 to 23.4 months in May 2025. On 19 June the CJEU opened oral argument in the “Oktoberfest” trademark dispute. Munich is defending its EU mark against the EUIPO, and the coming judgment could redefine the protectability of geographic event titles. On 18 June the EPO’s Enlarged Board in G 1/24 confirmed that claims are the starting point of examination, yet description and drawings must always be consulted for the  interpretation of the claims, bringing EPO practice closer to UPC jurisprudence. Meanwhile representatives of all 39 EPC member states met the EPO in Reykjavík to discuss IP-backed financing tools aimed at giving research-intensive SMEs better access to capital. Since 11 June, the EPO has also been offering its “Deep Tech Finder” as an iOS and Android app. The application links patent data with the financial metrics of European start-ups and facilitates cooperation between mid-sized companies, investors, and universities. In this episode of IP Fridays, co-host Ken Suzan welcomes two distinguished guests to explore one of the most dynamic and fast-moving topics in the legal field: Artificial Intelligence (AI) tools for IP lawyers. Arthur Rothrock, co-founder and CEO of Legion, and Nicholas Sarokhanian, Chair of the Artificial Intelligence Practice at Barnes & Thornburg LLP, join the podcast to discuss how AI is transforming the way intellectual property lawyers work—today and in the near future. Meet the Guests Arthur Rothrock is the founder of Legion, a legal tech startup offering an AI-powered litigation support platform. It helps attorneys draft pleadings, discovery responses, motions, and other legal documents. Arthur is also the host of the Legal Entrepreneur Podcast and brings a strong background in legal innovation. Nicholas Sarokhanian leads the AI Practice Group at Barnes & Thornburg and is based in Minneapolis. He is a recognized thought leader on generative AI, large language models (LLMs), and the broader legal implications of these technologies. Nick also hosts the Minds and Machines Podcast, where he regularly shares insights into the evolving digital landscape. Key Talking Points from the Interview 1. The Rise of Generative AI in LawNick explains how generative AI tools like GPT are already being adopted by major law firms. These tools are not meant to replace attorneys, but rather to augment their work by streamlining drafting tasks, enabling more efficient legal research, and improving turnaround time for clients. 2. From Experimentation to IntegrationArthur emphasizes the importance of integrating AI not just as a novelty, but as a core part of legal workflows. His platform, Legion, allows lawyers to quickly generate work product that can be reviewed, refined, and filed—saving hours of manual work without compromising quality. 3. Use Cases for IP LawyersBoth speakers explore practical examples for trademark and patent lawyers. These include: Drafting cease-and-desist letters Preparing office action responses Assisting with prior art searches Creating internal knowledge databases Translating complex legal issues for clients 4. Ethical and Professional ResponsibilityA major theme in the conversation is how lawyers can responsibly use AI. Nick cautions against over-reliance and emphasizes the need for human oversight. Accuracy, client confidentiality, and compliance with ethical duties remain critical. Arthur adds that lawyers must be trained to ask the right questions and apply sound judgment when using AI-generated output. 5. The Future of Legal WorkThe guests agree that AI will not replace IP lawyers, but IP lawyers using AI will likely outpace those who don’t. As generative tools evolve, attorneys who embrace and understand them will be better equipped to deliver faster, more strategic value to their clients. 6. Tips for Getting StartedNick suggests that lawyers start small by experimenting with legal-specific AI tools in low-risk scenarios. Arthur recommends being intentional about which parts of the practice to automate and continually reassessing the tool’s value through feedback loops. Final Thoughts This episode provides a practical, experience-based look at how AI is reshaping the intellectual property profession. Whether you’re a solo practitioner, part of a boutique firm, or in-house counsel at a tech company, this discussion offers insights you can use today. You can listen to the full episode and access additional resources, including a recording of the webinar and a written summary of the key takeaways, on our website or your favorite podcast platform. Here is the transcript: Kenneth Suzan: Our guest today on the IP Fridays podcast are Arthur Rothrock and Nicholas Sarakhanian. And our topic is AI tools for lawyers. Arthur is the co-founder and CEO of Legion, an AI-powered litigation support platform which enables users to draft pleadings, discovery, motions, and other legal documents. Arthur is also the host of the Legal Entrepreneur podcast. He holds a BA from Indiana University of Pennsylvania and a JD from Santa Clara University School of Law. Nick is the chair of the artificial intelligence practice at Barnes and Thornburg LLP and is based in Minneapolis, Minnesota. Nick is dedicated to remaining at the forefront of emerging legal issues related to generative AI, large language models or LLMs, and the evolving digital landscape. Nick is also the host of the podcast Minds and Machines. A thought leader in this space, Nick frequently writes and presents on AI-related issues and guides his clients through the labyrinth of opportunities and challenges inherent in today’s transformative technological ecosystem. Nick holds a BA from Virginia Tech and a JD from Baylor University School of Law. Welcome Arthur and Nick to the IP Fridays podcast. Arthur Rothrock: Thank you for having us. I’m really excited to be here and to do this with Nick. Nicholas Sarokhanian: Yeah, thank you so much. And what a great intro. You made me sound far more interesting and important than I think I am. So thank you for that. That’s great. Kenneth Suzan: Excellent. Welcome both to the podcast. We’ll start out with Arthur. Arthur, tell us about your AI litigation support platform known as Legion. How does it work? Arthur Rothrock: Sure. So Legion uses AI to draft fully formatted pleadings, discovery, and motions in minutes. Eventually, we’ll become a litigation operating system by offering case analytics, automatic deadline tracking, billing, eDiscovery—all that good stuff. But for now, we’re laser-focused on nailing the most tedious and time-consuming drafting parts of litigation. This is all possible because Legion is built from the ground up with AI instead of being an existing platform with AI bolted on. For example, Legion has context awareness of every document that is uploaded, allowing it to suggest relevant drafting tasks. The drafting process uses a mix of advanced models, prompt engineering, and my experience as a litigator. We treat AI like a scalpel, not a sledgehammer. Kenneth Suzan: Arthur, what jurisdictions does Legion currently apply to? Arthur Rothrock: Right now, Legion is focused on U.S. federal court litigation, but we’re expanding into state courts and are exploring international applications. Smaller firms and solo practitioners have been the fastest adopters—they’re excited about how this levels the playing field. In-house teams are more cautious but curious. Kenneth Suzan: What motivated you exactly to create Legion? Arthur Rothrock: It started from a place of frustration. I saw firsthand how expensive and time-consuming litigation is, especially for people with limited resources. One woman had a clear defamation case but couldn’t afford the $100,000 it would cost to get to trial. That stuck with me. I wanted to build something that could help people like her access justice without going bankrupt. AI can dramatically reduce drafting time and litigation costs. Kenneth Suzan: Nick, is AI a fad? Or is this something that is here to stay? Nicholas Sarokhanian: It’s absolutely here to stay. Maybe in 2022 or early 2023, some thought it was a passing trend, but the pace of development since then has made it clear this is permanent. As others have said: the AI we have now is the worst we’ll ever have—it’s only getting better. Yes, it will change workflows and increase demand for elite legal minds who can go beyond what AI can do. But it will also democratize access to legal tools. Those who adapt will benefit most. Kenneth Suzan: Arthur, how is AI improving efficiency in litigation preparation? Arthur Rothrock: It speeds up almost everything. Drafting takes a tenth of the time. Reviewing deposition transcripts, finding that obscure case you used years ago—AI handles that efficiently. It all adds up to huge gains in productivity. Kenneth Suzan: Nick, what are your thoughts about Arthur’s position? Would you use an AI litigation support platform? Nicholas Sarokhanian: I already do. I’ve been using generative AI since late 2022, personally and professionally. When firm policies and client consent allow, I use it in litigation too. It’s not magical, but it’s incredibly useful. For instance, I recently had a legal AI tool generate a discovery tracker spreadsheet from a PDF with over 80 objections. It did it in a minute. That saved hours of associate or paralegal time. It’s not perfect, but it’s a fantastic head start. Kenneth Suzan: Now, there are limitations. Arthur, how do AI tools still struggle and require human oversight? Arthur Rothrock: The big issue is hallucination—AI making things up. Lawyers are getting sanctioned for citing fake cases. Long and complex tasks are still a problem unless broken down. Tools like retrieval-augmented generation (RAG) aren’t foolproof, and success often depends on user skill. AI agents are improving, but they still need supervision. AI can’t yet replace human judgment in seeing the bigger legal picture. For now, and probably for a long time, a lawyer must be in the loop. Kenneth Suzan: Nick, your thoughts on the hallucination issue? Nicholas Sarokhanian: It’s inherent in how large language models work—they make predictions based on probability. That means sometimes they get it wrong. Improvements are happening quickly, but hallucinations remain a real issue. My advice to young lawyers: don’t be the cat lawyer. Learn the tools on low-risk tasks, like personal life stuff. Get comfortable before using it in client work. And always double-check the output, especially citations. Even big firms make mistakes. Ethically, lawyers are expected to be competent with technology, so you can’t just ignore it. Kenneth Suzan: We’re almost out of time. Arthur, can you comment on real-world time and cost savings? Arthur Rothrock: Sure. A 15-page complaint might take 15 hours to draft, costing $7,500. Legion can do it in a few minutes for $150, plus an hour of review—so $650. Motions to compel, which usually cost $15,000 in attorney time, can be done for under $1,000 with Legion. Even with general AI tools, if you’re savvy, you can cut time by two-thirds. AI is best when you already understand the subject—it’s a great drafting assistant, but shouldn’t be your source of truth. Kenneth Suzan: Well said. Arthur, Nick—thank you so much for spending time with us today on the IP Fridays podcast. This has been truly fascinating. Nicholas Sarokhanian: Yeah, thanks for having us. Kenneth Suzan: Thank you.
• 
  Interview with Lucy Wojcik, Chief Intellectual Property Counsel at OCADO GROUP – Cross-Border Patent Litigation – In-House Organization of IP Teams – Agile IP – IP Fridays Podcast – Episode 163 30.05.2025 46m

  My Co-Host Ken Suzan and I are welcoming you to episode 163 of our podcast IP Fridays! Today’s interview guest is Lucy Wojcik, who is Chief Intellectual Property Counsel at OCADO GROUP PLC, and we talk about cross-border patent litigation, in-house organization of IP teams, agile IP and much more! Lucy has just been inducted into the IP hall of fame. But before we jump into this very interesting interview, I have some news for you. On May 22, the European Commission released its biennial report on the protection and enforcement of intellectual property rights in third countries. The report identifies countries where IP deficiencies cause significant economic harm to EU interests. China remains a top priority, followed by India and Türkiye. The accompanying Counterfeit and Piracy Watch List details trends in counterfeiting and piracy, listing problematic websites and marketplaces. In May, the Trump administration dismissed Shira Perlmutter, the top U.S. copyright official, shortly after removing Librarian of Congress Carla Hayden. These actions followed the Copyright Office’s report expressing concerns about using copyrighted content to train AI systems. The dismissals have sparked significant backlash from the copyright community. The UK government’s proposal to amend copyright laws to benefit AI developers has faced criticism. The plan would allow tech firms to use copyrighted content unless creators opt out, a mechanism deemed impractical by industry stakeholders like Sony Music. Critics argue that such changes could jeopardize investments and disrupt existing licensing negotiations. In May 2025, the U.S. Patent and Trademark Office (USPTO) rejected Tesla’s attempt to trademark the term “Robotaxi” for its vehicles, citing that the term is too generic and merely descriptive. The USPTO issued a “nonfinal office action,” providing Tesla with a three-month window to respond before the application is potentially abandoned. A separate application by Tesla to trademark “Robotaxi” for its upcoming ride-hailing service remains under examination. Additionally, Tesla’s efforts to trademark “Cybercab” have been delayed due to conflicts with existing trademarks containing the word “Cyber.” On May 9, 2025, the WHO and the Medicines Patent Pool (MPP) announced a sublicensing deal with Nigeria’s Codix Bio to locally produce rapid diagnostic tests using SD Biosensor technology. The agreement, part of WHO’s Health Technology Access Programme, aims to improve access to affordable diagnostics in low- and middle-income countries, initially targeting HIV and adaptable for other diseases and future health emergencies. Now, let’s jump into the interview with Lucy Wojcik! From Consultant to Chief IP Counsel: How Lucy Wojcik Built Ocado’s IP Powerhouse In the latest episode of IP Fridays, I had the pleasure of speaking with Lucy Wojcik, Chief IP Counsel at Ocado Group PLC, who shared her remarkable journey from external consultant to head of one of the most dynamic in-house IP teams in Europe. Recently inducted into the IP Hall of Fame and awarded “In-House IP Leader of the Year” by Managing IP, Lucy offered deep insights into how to build a scalable, resilient IP strategy inside a fast-growing tech company. A Career Built on Curiosity and Timing Lucy began her journey with Ocado in 2014, initially working just one day a month as an external consultant. It didn’t take long before she realized the company’s immense innovation potential. Gradually increasing her involvement, she joined full-time two and a half years later as Ocado’s first Head of IP. Today, she leads a team of 11–12 people, reflecting not only the company’s growth but also its expanding innovation pipeline in robotics, automation, and AI-driven logistics. IP Strategy in a Complex Business Model Ocado’s business model is unique: while the company operates its own online grocery platform in the UK, it also licenses its proprietary logistics and automation systems to other grocery retailers internationally. This dual role—as both operator and service provider—demands a sophisticated and forward-thinking IP strategy. According to Lucy, about 40% of Ocado’s patent portfolio protects technologies actively in use, with the remainder covering speculative innovations and future business directions. Some speculative patents filed as early as 2015 have since become core to the company’s latest commercial offerings. Orchestrating One of the Largest IP Litigations in Europe One of the most impressive parts of Lucy’s story is her leadership during Ocado’s multi-jurisdictional litigation against AutoStore. Beginning in October 2020, this sprawling legal battle involved more than 150 lawyers across forums such as the US International Trade Commission, the UK High Court, the EPO, and courts in Germany and Israel. At its peak, Ocado faced 28 EPO oppositions and simultaneous proceedings in numerous jurisdictions. Lucy candidly described the experience as “the world’s biggest project management challenge.” She served as the linchpin between Ocado’s executive team and its external counsel, ensuring a tightly coordinated response across legal, technical, and commercial teams. Her team developed simple tools—like one-slide patent summaries with visual elements—that proved essential in communicating complex legal developments to non-IP stakeholders across the business. Embedding IP into Agile Engineering Workflows One of Lucy’s most forward-looking approaches is how she embedded her team into Ocado’s agile engineering culture. Rather than acting as gatekeepers who respond to invention disclosures, the IP team participates in sprint planning, stand-ups, and engineering away-days. This integration allows the team to identify and protect innovations in real-time—even if it means occasionally filing imperfect or early-stage patents. Lucy sees this as a worthwhile trade-off for ensuring IP is deeply connected to the business’s fast-paced product development. A Culture of Practical IP Leadership Throughout the interview, Lucy emphasized the importance of delivering IP value that aligns with business reality. Her mantra: “Do the best you can in the moment with the resources you have.” Whether it’s advising on NDAs, coaching engineers on what they can say at conferences, or managing overlapping international filings, Lucy’s philosophy is grounded in practical, context-aware decision-making. Advice to In-House Counsel: Know Your Audience Lucy closed the conversation with timeless advice for IP professionals working in-house: always tailor your communication to the recipient. Whether writing to the CFO, CEO, or a junior engineer, it’s essential to consider what that person needs to know—and to deliver it clearly. She even introduced a practice borrowed from engineering culture: the “TL;DDR” (Too Long; Didn’t Read) summary at the top of her emails, followed by deeper analysis below. Lucy Wojcik’s journey is not just about managing patents—it’s about aligning IP with business strategy, empowering engineering teams, and leading under pressure. Her experience is a masterclass in modern in-house IP leadership. Rolf Claessen: Today’s interview guest is Lucy Wojcik. If you don’t know her, she’s the Chief IP Counsel at Ocado Group. She was recently inducted into the IP Hall of Fame and is also a member of the IAM Strategy 300. She was awarded “In-House IP Leader of the Year” by Managing IP. Thank you very much for being on IP Fridays, Lucy. Lucy Wojcik: It’s a pleasure. Nice to talk to you. Rolf Claessen: You lead quite a large IP team. Maybe you can tell us first how you got there. What was your role at the beginning, and how did you become Chief IP Counsel? Lucy Wojcik: It’s quite an interesting story. I sometimes call it the longest job interview in history. I started as a consultant in January 2014 for just one day a month. Over time, I realized there was a great team with lots of innovation and opportunity, so I gradually increased my involvement. After two and a half years, I officially joined as Head of IP—the first person in that role. Over time, I grew the team to around 11 or 12 people, especially as we faced significant litigation and an increase in R&D activity. I was named Chief IP Counsel in April 2021. Rolf Claessen: Let’s talk about your patent portfolio. It’s very diverse—autonomous vehicles, robotic arms, software. Can you give us an overview? Lucy Wojcik: The portfolio mirrors what the company does. Around 40% protects our active work—robots, software, methods. Some of it is speculative, and sometimes that pays off. For example, a speculative filing from 2015 turned out to be vital for a major new piece of equipment. We also invest in other ventures, like a 3D printing company or vertical farming, and our IP strategy reflects that diversity. Rolf Claessen: Ocado also licenses its systems to other retailers, who might be seen as competitors. How do you manage that? Lucy Wojcik: Ocado Retail operates only in the UK, in a joint venture with Marks & Spencer. Outside the UK, we are a systems provider. It avoids direct competition and allows us to test and showcase innovations in the UK before offering them abroad. Our retail operations also help us understand our partners’ challenges. Rolf Claessen: You’ve become well known for managing large-scale litigation. Can you walk us through that? Lucy Wojcik: We had extensive litigation with AutoStore, which started in October 2020. It involved cases in the US, UK, EPO, Germany, Israel, and even the UPC. At the peak, we were handling 28 oppositions at the EPO and coordinating over 100 legal professionals globally. My role was project management—connecting external counsel with internal stakeholders and ensuring a coherent strategy across jurisdictions. Rolf Claessen: How did you manage such complexity? Lucy Wojcik: Early on, we created one-slide summaries for each patent, which helped communicate internally. It’s about translating legal risk into business terms—especially when communicating with 5,000 employees who aren’t IP experts. Rolf Claessen: I was surprised to hear that your IP team works closely with engineers using agile methods, sprints, and scrums. That’s unusual for IP departments. Lucy Wojcik: Yes! We are deeply embedded in the tech teams. We join their meetings and sprints, which lets us identify protectable inventions early—even if that means filing provisional or imperfect patents. It’s not always efficient from a classic IP perspective, but it makes our work relevant and timely. Rolf Claessen: You’ve said that your role is about delivering the best IP value given commercial realities. Can you elaborate? Lucy Wojcik: In-house work is about context. You never have all the resources or time you’d like. Sometimes a “good enough” patent is all that’s needed to enable a commercial move. We try not to let IP slow things down—we offer practical solutions instead. Rolf Claessen: What’s your most important advice for in-house IP professionals? Lucy Wojcik: Always think about your audience. Tailor your communication. I often use the TL;DR method—”Too Long; Didn’t Read”—with key points at the top of an email, followed by analysis. Different stakeholders need different things: the CFO wants to know the cost, the CEO wants strategy, and engineers want to know what they can and can’t do. Rolf Claessen: What’s one thing you wish outside counsel would do differently? Lucy Wojcik: Honestly, I’ve had great experiences. But early in my time at Ocado, I was frustrated by firms charging for travel time. It might be better for law firms to take a long-term view, especially with smaller clients—build trust first, revenue later. And always be honest about your capacity and fit. Rolf Claessen: Thank you so much for this fascinating and wide-ranging conversation! I’m sure our listeners will find a lot of inspiration in your story. Lucy Wojcik: Thank you for having me. It was a pleasure.
• 
  Bequeathing Bitcoin – What Happens to Bitcoin After Death – Interview With Debbie Hoffman and Anna Mouland – UPC Decisions About Anti-Anti-Suit Injunctions – Podcast IP Fridays – Episode 162 25.04.2025 32m

  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.  
• 
  Interview With António Campinos, President of the European Patent Office – Draghi Report – Unified Patent Court – Patent Quality – Challenges – IP Fridays Podcast – Episode 161 28.03.2025 39m

  I am Rolf Claessen and my co-host Ken Suzan and I are welcoming you to episode 161 of our podcast IP Fridays! Today’s guest is António Campinos, who is the president of the European Patent Office. We talk about the Draghi report, patent quality, the Unified Patent Court, AI, validation in non-European countries and many other topics! But before we jump into this interview, I have news for you: Our podcast IP Fridays has been named as one of the best intellectual property podcasts in the world by FeedSpot! You can find the link in the shownotes. The European Patent Office has published the Patent Index 2024. The US, Germany and Japan are the strongest patent filers at the European Patent Office, followed by China, South Korea and France. The biggest three patent filers are all from Asia, namely Samsung, Huawei and LG. The strongest US filer is Qualcomm in fourth place and the biggest German filer is Siemens at 6th place. Now for an unusual decision of a patent judge: magistrate Judge Valerie Figueredo of the US District Court for the Southern District of New York has ordered a patent litigator Bill Ramey to pay the attorney fees of the opponent Google. She said that the attorney “failed to conduct an adequate pre-suit investigation that would have uncovered information demonstrating that the patent-infringement claim lacked merit and also ‘unreasonably continued pursuing’ the claim despite notice from the defendant that the claim lacked a colorable basis,”. Google was represented by Barnes & Thornburg. The EUIPO has published CP15 Common Communication “Comparison of goods and services: treatment of terms lacking clarity and precision and common interpretation of Canon criteria and other factors”. It enhances consistency in the comparison of goods and services across the EU. Terms lacking clarity and precision must not be excluded from the outset but should be interpreted based on their natural and literal meaning, considering the Nice Classification. Such terms cannot be interpreted in a way that benefits the trade mark owner. If identical or synonymous unclear terms appear in both the earlier and the contested mark, they are deemed identical. Additionally, a single factor—such as intended purpose, relevant public, or distribution channels—may be sufficient to establish similarity. By introducing common definitions and interpretations of key comparison criteria, CP15 promotes transparency, legal certainty, and harmonized decision-making among IP offices. I have published a book “Marken. Recht. Einfach.” With the publisher Frankfurter Allgemeine Buch on 5th March 2025. Today I learned that I my book entered the bestselling list of manger magazine for business books at 8th place! I am very grateful for all who have helped me with this huge success! And now let us jump into the interview with António Campinos! In this episode of IP Fridays, Rolf Claessen interviewed António Campinos, who has been the President of the European Patent Office since July 1, 2018, and was previously the head of the European Union Intellectual Property Office (EUIPO). The first topic centered around the Draghi Report, which Campinos described as a much-needed wake-up call for Europe. He emphasized that the report underlined the continent’s innovation gap in comparison to global powers such as the United States and China. One of the critical messages of the Draghi Report, according to Campinos, is that Europe is hindered by excessive regulation, which weakens its internal market and impairs its ability to compete economically. He noted that although Europe has produced more startups than the US over the past five years, many of these startups eventually relocate to the US due to the lack of sufficient scale-up funding and a highly fragmented internal market. This fragmentation brings bureaucratic complexity, which especially impacts micro-entities and startups. Campinos argued that, to maintain its welfare model and remain competitive, Europe must become more productive by investing not just more, but smarter in innovation. Campinos continued by pointing out that while Europe leads in certain technological areas—such as transportation, mechanical engineering, chemistry, and clean technologies (especially hydrogen, power grids, and plastics recycling)—it lags behind in others. Batteries, for instance, remain a major area of concern where Asia is leading. In AI, although patent filings have grown significantly in Europe, the US and China are still far ahead. Similar gaps were observed in biotech and pharmaceuticals. He stressed that if Europe wishes to accelerate its innovation trajectory, it must both increase and improve the efficiency of its innovation investments. Rolf then asked how the European patent system could help mitigate fragmentation and complexity. Campinos responded with two perspectives. From a legal standpoint, the EPO launched a convergence program in collaboration with its member states to harmonize legal practices across Europe. This includes standardizing approaches in the granting process for computer-implemented inventions and AI-related patents. He argued that harmonized practices significantly reduce administrative burdens, particularly for SMEs and research institutions. The second and more strategic angle focused on improving data accessibility and usability. Campinos emphasized the importance of converting raw data into actionable knowledge and business intelligence. The EPO has made patent data available through tools like Espacenet, which saw over 18 million visits in the past year. The EPO is now investing in advanced technologies like large language models and natural language processing to make this data more readable and accessible. A notable example is the new “Technology Intelligence Platform,” which allows users—whether researchers, businesses, or policymakers—to explore innovation trends, leading companies, and technology landscapes without requiring prior expertise. Rolf brought up the unitary patent and the Unified Patent Court (UPC), asking about the insights gained since its launch. Campinos called it a “huge success,” citing over 50,000 requests for unitary protection and more than 700 court decisions delivered within six months. He highlighted that the system was deliberately designed to be attractive to smaller entities. Data shows that one-third of unitary patent requests came from SMEs and individual inventors, with half of these SMEs choosing the unitary effect after grant—figures that outpace participation in traditional European patents. He expressed hope that more EU member states would soon join the system, encouraged by the success and efficiency of the UPC. Ultimately, he suggested that political will could extend the system’s reach even beyond the EU. Reflecting on the long road to establishing the UPC, Campinos acknowledged past mistakes, particularly the lack of early stakeholder involvement. He believes the key lesson is the importance of listening to and working with all stakeholders—including industry, judges, and professionals—early in the process. Applying this lesson to current topics like standard-essential patents (SEPs) and supplementary protection certificates (SPCs), Campinos supported the European Commission’s decision to withdraw its SEP proposal, which he said had been widely criticized. However, he still sees the need for measures to improve transparency and licensing practices in SEPs, and he noted that any SPC reform should involve the jurisdiction of the UPC. The conversation then shifted to digital transformation and AI. Campinos stated that the primary challenge for any organization, including the EPO, is simplification. Digital tools must support simplified legal and administrative processes, otherwise, transformation efforts fail. He emphasized the importance of change management and the need to adopt an iterative development mindset with minimally viable products that evolve over time. With regard to AI specifically, the EPO maintains a “human-in-the-loop” approach, ensuring that all final decisions are made by humans, even when AI tools are used in the process. Rolf raised the issue of maintaining quality amid high user expectations and a growing volume of work. Campinos highlighted the EPO’s objective strengths: a highly skilled workforce of over 4,000 examiners, access to the world’s largest collection of patent and non-patent literature, and powerful search tools. One unique feature of the EPO’s process is the preliminary opinion on patentability included in the search report, typically delivered within six months. This early insight helps applicants secure funding and plan business strategies. Campinos also mentioned that the EPO has strengthened its quality control processes, expanded user consultations through stakeholder panels (SQUAPs), and introduced pragmatic quality assessments involving external patent attorneys and internal examiners. On the topic of applicant engagement, Rolf noted that informal in-person meetings with examiners had been helpful in the past and asked whether such interactions might return. Campinos responded that while all meetings are formally structured, the EPO has made extensive efforts to engage applicants through one-on-one meetings, company visits (virtual, in-person, or hybrid), and even company-led training sessions. A new initiative will send EPO teams to trade fairs to meet with multiple companies, including competitors, to learn about emerging technologies and collect feedback on the EPO’s processes and services. The discussion turned global as Rolf asked about the EPO’s efforts to meet the needs of international users. Campinos described the growth of validation agreements, which allow EPO patents to be recognized in non-member countries. From just 1.6 million global filings 15 years ago, the number has grown to over 3 million in 2023. The EPO now has agreements with six countries outside Europe, with Laos and Costa Rica recently joining. Together with its member states, the EPO’s validation system now covers a market of 720 million consumers. Campinos expressed optimism that further expansion in Latin America is likely in the future. In closing, Rolf asked Campinos for a message to users, innovators, and policymakers. Campinos responded by reaffirming the EPO’s commitment to delivering the highest-quality services and products. He acknowledged that mistakes may happen but emphasized that the office learns from them. To policymakers, he echoed a quote from Michel Barnier: “We have to understand before we act,” underlining the need for thoughtful, evidence-based policymaking in intellectual property matters. The interview concluded with mutual thanks and an appreciation of the opportunity to reflect on the EPO’s work, its role in the innovation ecosystem, and the future of patent law in Europe and beyond.
• 
  Interview with James E. Malackowski, the Founder of Ocean Tomo – Patent Auctions, Managing Patent Portfolios, Blockchain in the Field of IP, the Market For Data Rights – IP Fridays – Episode 160 31.01.2025 36m

  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 400 people to that first auction? Jim Malackowski: There were three reasons: First, it was price discovery—they wanted to know what these patents would sell for. Second, it was a market-building networking opportunity, as dedicated IP brokerage and valuation conferences didn’t exist back then. And third, fear—fear that a patent that could impact their business might sell, and they’d miss the chance to acquire it. Rolf Claessen: Very interesting. And it’s always a recurring question: How much is a patent worth? Many of my clients, especially medium-sized companies with maybe 500 to 1,000 employees, ask me, “We’ve filed all these patents—how much are they worth?” My response is often that the value of a patent is what someone is willing to pay for it. Do you agree? Jim Malackowski: Absolutely. The worth of patents can be evaluated in two ways. First, how do they help you build value in your business? If you’re able to raise capital or introduce products with unique features that maintain a proprietary position, there’s obvious value. Second, how do they create value for others? If others are using your intellectual property to generate revenue or capture market share, then it’s valuable to them. Ideally, those situations lead to win-win transactions where value is shared. Rolf Claessen: That’s a great point. Now, imagine you’re the CEO of a medium-sized, tech-driven company. What would you tell yourself to maximize the value of your research and patents? Jim Malackowski: Great question. Let’s break it down into three levels. At the highest level: Plan for it. Failing to plan is planning to fail, and that applies to intellectual property. I recommend designating someone on your board or advisory team to oversee IP. This ensures it becomes a regular part of board discussions and elevates the role of intangibles in your company strategy. Jim Malackowski: Next, develop a strategic IP plan. For us, that starts with a landscape analysis—understanding what you own and what your competitors own. Then, determine your principles: Are you willing to out-license, enforce, or in-license? Are you managing IP holistically across the business or within divisions? Once you know these principles, you can align your IP strategy with your business plan. Finally, educate your team about the importance of IP. Share your plan with the board, the C-suite, and even the broader organization so everyone understands the role of intellectual property in supporting the business. Rolf Claessen: That’s incredibly helpful. Now, let’s shift to new technologies like blockchain. I believe blockchain has great potential for patent licensing. Can you explain why blockchain is suitable and why it’s not widely used yet? Jim Malackowski: I agree that blockchain holds tremendous potential for IP, including patents, copyrights, data, and trade secrets. Blockchain is efficient, transparent, and immutable, making it ideal for documenting and packaging IP for transfer. For example, it allows you to wrap trade secrets or know-how into a blockchain container, ensuring everyone understands its scope and creation date. Jim Malackowski: Blockchain also enables valuation, balance sheet recognition, and secondary trading. Imagine licensing a patent wrapped in blockchain data—you could later sell that right to a third party. While adoption has been slow, it’s starting to gain traction, especially in data rights. Blockchain tools are now being used to codify, package, and transact data, and I believe we’ll see similar developments in patents. Rolf Claessen: That’s exciting. You mentioned earlier the idea of a blockchain-based IP coin. Could you elaborate on that? Jim Malackowski: Sure. An IP coin could function as a cryptocurrency secured by patents. For example, you could create a portfolio-backed cryptocurrency where each token represents a specific IP right. This could be used for financing, with patents serving as collateral. While we’re not there yet, it’s an area we continue to explore. Rolf Claessen: Interesting. But the legal framework for blockchain-based licensing seems outdated, at least here in Germany. Do you think the law will adapt? Jim Malackowski: It will have to. One exciting concept is using blockchain to unitize IP rights. For example, if a patent portfolio covers automotive technology, you could create a million unit license rights using blockchain. A manufacturer could buy 100,000 units today and sell unused rights to a competitor later. This approach benefits patent owners because they get paid upfront while allowing buyers flexibility. Blockchain makes this possible by enabling transportable, easily tradeable rights. Rolf Claessen: That’s a compelling vision. Before we move on, you mentioned the idea of considering the complete economic chain for IP licensing. What does that mean? Jim Malackowski: It’s about ensuring value is recognized and royalties are shared across the entire supply chain, from the original innovator to the final product manufacturer. Today, patent owners often have to approach each link in the chain separately, which is inefficient. A better approach would involve assigning royalties at the start and passing them along the chain in a clear, explicit way. This would reduce litigation and uncertainty while ensuring everyone is fairly compensated. Rolf Claessen: That makes sense. Now, let’s switch to data rights, another emerging topic. You’ve mentioned the need for a market for data rights. Can you explain what you mean by that? Jim Malackowski: Sure. Data rights can be viewed from two perspectives: personal and business. On a personal level, we often give apps permission to collect our data without receiving any compensation. There’s an opportunity to create a market that recognizes the value of individual data. Jim Malackowski: On the business side, there’s already an active market for data—like mailing lists or data sets used for AI and machine learning. Blockchain and other tools can make these markets more efficient by enabling secure, transparent transactions. We’re excited to see these markets evolve. Rolf Claessen: That’s a fascinating area to watch. Finally, Ocean Tomo is now part of J.S. Held. What services do you offer beyond auctions? Jim Malackowski: Ocean Tomo has always been known for different things by different people. Lawyers know us for litigation expertise, while others associate us with valuation or auctions. Today, as part of J.S. Held, we’ve expanded our offerings. We have four main practice areas: opinion services for litigation, management consulting for IP strategy and valuation, investment banking for transactions, and technical services like patent analytics and reverse engineering. Jim Malackowski: The partnership with J.S. Held has been transformative. With over 500 engineers on their team, we can now tap into deep technical expertise for any industry or technology. It’s been a very effective collaboration. Rolf Claessen: That’s fantastic. If listeners want to connect with you or learn more, what’s the best way to reach you? Jim Malackowski: They can email me directly at james.malackowski@jsheld.com or visit our website, where they’ll find an option to connect with us. We’re always happy to brainstorm and see how we can help. Rolf Claessen: Jim, thank you so much for this excellent interview. We covered so many exciting topics, and I’ve really enjoyed our conversation. It was a pleasure having you on IP Fridays. Jim Malackowski: Thank you, Rolf. It’s been a pleasure, and I look forward to doing this again.
• 
  Update on IP Laws in Argentina – Interview With Ricardo E. Amigo – the Patagonia Issue – Changes in the Opposition Procedure – Publication of the Book “Marken. Recht. Einfach.” – Happy Holidays! – Episode 159 – IP Fridays Podcast 20.12.2024 30m

  My co-host Ken Suzan and I are welcoming you to the last edition #159 of IP Fridays in the year 2024 before the holiday season. We wish you all happy holidays and a successful year 2025! Our interview guest Ricardo Amigo is an IP lawyer in Argentina and will give us an update of the recent changes of the trademark law including the new Patagonia issue, the new trademark opposition procedure and much more. You can find the profiles of Ricardo here: https://bertonmoreno.com.ar/ricardo-e-amigo-en https://www.linkedin.com/in/ricardo-e-amigo-2b97467 Before we jump into this interview, I have news for you! First of all, my book “Marken. Recht. Einfach.” (translated into trademark law made simple) on trademarks will be published in March 2025. Many entrepreneurs and decision-makers feel overwhelmed by trademark law and make unnecessarily expensive mistakes – often out of ignorance. I am changing that with my book. I explain trademark law to the readers in an understandable way, without legalese, and show the readers how to recognize risks at an early stage and how to protect and enforce their trademarks securely. My knowledge from over 20 years of experience in this field will help the readers to make the right decisions with confidence. The link to the book is in the show notes (https://amzn.to/3D6IDKe, affiliate link). The European Patent Office has released its updated Guidelines for Examination, set to take effect on March 1, 2025. These revisions incorporate recent legal developments, user feedback, and the latest case law to ensure greater clarity and consistency in patent examination. By refining procedures and clarifying key points, the EPO aims to improve user experience and enhance the quality of granted patents. Users are encouraged to review the changes, as the Guidelines serve as an essential reference for navigating the European patent system. The United States Patent and Trademark Office (USPTO) has announced changes to its patent-related fees, effective January 19. These updates will impact various patent-related services, including filing, search, examination, and maintenance fees. The adjustments aim to reflect current cost recovery requirements and continue supporting the high quality of the U.S. patent system. Stakeholders should review the new fee schedule to ensure compliance and budget accordingly for upcoming filings and maintenance activities. The European Union Intellectual Property Office (EUIPO) has released a new report on the state of online piracy and copyright infringement in Europe, revealing that while overall piracy rates have declined, challenges persist. In particular, TV content accounts for half of all digital piracy, with viewers tuning into illegal TV content five times per month. To address these issues, the report emphasizes the importance of ongoing enforcement efforts, consumer education, and the availability of legal, affordable, and high-quality content. It also highlights the need for international collaboration to protect creators’ rights and nurture a healthy digital content market. Now let us jump into the interview with Ricardo Amigo with his update on the IP laws in Argentina! In this episode of the IP Friday’s podcast, intellectual property expert Ricardo Amigo, a partner at the Berton Moreno IP law firm in Buenos Aires, Argentina, provided insights into significant developments and best practices in Argentine trademark law. With over three decades of experience in IP, Amigo advises both local and international clients across a wide spectrum of industries. His areas of expertise include trademarks—both prosecution and litigation—as well as copyrights, industrial models, designs, patents, genetically modified organisms, biotechnology, and entertainment law. He is actively involved in professional associations such as the International Trademark Association, including its famous and well-known marks committee, and has academic credentials from the University of Buenos Aires and the Franklin Pierce Law Center’s IP Summer Institute. A central topic of the interview focused on a recent decision by the Argentine government to seek recognition of the term “patagonia” as an emblem under Article 6ter of the Paris Convention. The World Intellectual Property Organization’s recognition of this emblem, granted on September 30, 2023, has broad implications for trademark owners. In practice, since that date the Argentine trademark office has been rejecting all new applications containing the word “patagonia,” regardless of whether the applicant already owns a related mark. This situation puts established rights holders in a difficult position, with the only viable remedy being to challenge the decision in court. Amigo believes that, eventually, judicial rulings may force the Argentine trademark office to reconsider its stance, but warns that such a legal battle could span several years. Beyond these recent developments, Amigo emphasized the importance of thorough preparation before seeking trademark protection in Argentina. He recommends conducting comprehensive searches—identical, phonetic, and online—prior to filing an application. Many trademarks remain unregistered but are in active use, sometimes only on social media, so researching both official registries and the broader internet is crucial. Although unregistered trademarks may sometimes be enforced through the courts, the Argentine IP system, as an attribution-based one, places far more weight on registered marks. Securing a trademark registration ensures a stronger position when it comes to enforcement and can significantly improve the chances of obtaining injunctions against infringers. Amigo also discussed how the trademark opposition system in Argentina changed in 2018. Historically, an opposition would block the registration and require the applicant to pursue negotiations, mediation, and potentially lengthy court proceedings. Under the revised system, the burden has shifted more to the opponent. After a brief negotiation window, the opponent must ratify and provide additional arguments to the trademark office, leading to an administrative ruling rather than an immediate judicial case. This structural shift helps deter ill-founded oppositions and speeds up resolution times. In terms of maintaining rights, trademark owners in Argentina must declare use of their marks every five years and upon renewal. While the trademark office does not routinely verify the veracity of such declarations, use is essential for sustaining protection. Amigo also noted that the law now allows for partial cancellations: trademarks can be canceled for non-use of specific goods or services, although related goods may be considered a valid defense if the mark is used for them. Well-known trademarks, although not formally categorized in Argentine law, have long enjoyed judicial protection. Courts recognize and safeguard famous marks against unauthorized registrations or use, even if they are not registered. Nevertheless, Amigo recommends that owners of well-known marks should not rely solely on fame. Registering and using marks in the relevant classes of goods and services provides a stronger foundation for enforcement, whether through negotiations or legal actions. In summary, Amigo’s guidance for foreign and local businesses includes conducting careful pre-filing research, ensuring timely use and maintenance of marks, and understanding the complexities of Argentina’s evolving legal landscape. His advice underscores the importance of proactive IP strategies, from diligent searches to securing rights through registration, thereby providing trademark owners with a more secure footing in the Argentine market. Here is the transcript: Kenneth Suzan:Our guest today on the IP Friday’s podcast is Ricardo Amigo. Ricardo is a partner at the Berton Moreno IP law firm located in Buenos Aires, Argentina, and has been working as a lawyer specializing in IP since 1989. Ricardo represents local and foreign clients alike in almost all industries and has broad experience in trademark law—both prosecution and litigation—as well as copyrights, industrial models and designs, patents, genetically modified organisms, biotechnology, and entertainment law issues. He is a member of the International Trademark Association, including its famous and well-known marks committee, the Argentine Association of Industrial Property Agents, and the Coligio Publico de Abigados de la Capital Federal. Ricardo graduated as a lawyer from the University of Buenos Aires in 1994 and attended the Intellectual Property Summer Institute at Franklin Pierce Law Center in 1996. Welcome, Ricardo, to the IP Friday’s podcast. Ricardo Amigo:Thank you, Ken. Thank you very much for inviting me. Kenneth Suzan:Excellent, Ricardo. So I’ve heard there have been some recent developments in trademark law in Argentina in the last year. Can you share some information with our listeners? Ricardo Amigo:Yes, sure. The most relevant new issue that affects trademark rights in Argentina is that the Argentine government applied in 2023 for the term “patagonia” as an emblem under Article 6ter of the Paris Convention. On September 30, 2023, the World Intellectual Property Organization recognized the emblem “patagonia” in favor of the Argentine government. This is a very big issue for many trademark owners in Argentina who have acquired rights over trademarks that include the term “patagonia.” Since the emblem’s recognition, the Argentine trademark office has been rejecting all new trademark applications including “patagonia.” Even if you already own a “patagonia” mark and try to file a new design or variation, it is automatically rejected. This situation is disturbing for trademark owners—local companies, Argentine individuals, US companies—basically everyone. We are dealing with acquired trademark rights here. Kenneth Suzan:Wow. Are there any legal remedies that trademark owners have so they can fight back, or do they have to live with this ruling? Ricardo Amigo:When the trademark office issues an official action rejecting a trademark with “patagonia,” you can file an answer with all the arguments at hand, including that you already have an acquired right. But the trademark office won’t consider these arguments and automatically rejects the application. The only legal remedy would be to go to court and seek to have the administrative ruling reversed. You would argue that it’s unconstitutional because you already have property rights recognized under the Argentine constitution. We don’t know how the first ruling will go, but eventually I believe judges may rule in favor of trademark owners, forcing the trademark office to change its stance. Kenneth Suzan:We’ll have to keep an eye on that. Do you think a ruling might come out in the next year or two? Ricardo Amigo:No, it will take longer. Complaints were filed in 2024, and I expect at least four years until the first instance ruling, with the potential for appeals all the way to the Supreme Court. We’re talking about at least seven or eight years until we have a final ruling. Unfortunately, that’s the current situation in Argentina. Kenneth Suzan:We’ll certainly monitor that. Let’s shift topics. What do you consider the main issues that a trademark owner should address when seeking protection in Argentina? Any best practices? Ricardo Amigo:First of all, don’t use an emblem as a trademark. For any foreign company seeking trademark protection, it’s crucial to conduct a search—at least an identical search in the class of interest, and if possible a full phonetic search. This helps you find both identical and confusingly similar marks. Given today’s importance of social media, I also recommend conducting an internet and social media search. Many trademarks in Argentina are used but not registered. You don’t want to apply for a mark, start using it, and then face a claim from a third party claiming prior unregistered use. So, searches in the registry and online are both very important. Kenneth Suzan:You have many years of experience with trademark enforcement. Is it important to obtain a registration in Argentina to enforce trademark rights there? Ricardo Amigo:Yes, Argentina uses an attribution system where ownership and the right to exclusive use are obtained through registration. Courts have protected unregistered marks based on notoriety and evidence of use, but having a registered mark puts you in a much stronger position to enforce your rights and obtain injunctions. Without registration, it’s much harder and you need to prove extensive use. Kenneth Suzan:The trademark opposition system in Argentina was modified a few years ago. What changes can you share with us? Ricardo Amigo:Before 2018, when an opposition was filed, the application was blocked. The applicant had to negotiate, attempt mediation, and, if unresolved, go to court. This put the burden on the applicant. Under the new system, after the opposition is filed, there is a brief negotiation period of 90 days. Then the opponent must ratify the opposition and provide additional arguments. If the opponent doesn’t ratify, the opposition falls. If they do, it leads to administrative proceedings before the trademark office rather than a court action. Both sides present arguments and evidence. If the trademark office rules against the applicant, they can appeal directly to the Court of Appeals. This system shifts the burden to the opponent and reduces ill-founded oppositions. It also speeds up the process compared to the old system. Kenneth Suzan:What about trademark renewals in Argentina? Do you have to declare or prove use to keep a registration alive? Ricardo Amigo:Yes. You must file an affidavit under oath declaring that the trademark was used in the last five years. The trademark office doesn’t examine the truth of the declaration, but you need this to renew. Also, you must file a mid-term declaration of use after five years of registration. This helps prevent cancellations for non-use and strengthens your position against third parties. Kenneth Suzan:Can a trademark be partially cancelled for lack of use? Ricardo Amigo:Yes, under the new law. Previously, a cancellation action cancelled the entire mark. Now, a third party with a legitimate interest can seek partial cancellation for certain goods or services. You can defend against this by proving use of related goods or services, even if not exactly those specified. Defining what counts as “related” is complex and case-specific. Kenneth Suzan:What about well-known brands? How are they protected in Argentina? Ricardo Amigo:Well-known brands are not specially categorized in the Argentine law, but courts have long recognized their protection. Even without prior registration, courts have granted rights to owners of famous marks when someone tries to register or use them without authorization. That said, it’s always better to register the trademark in the relevant classes before entering the market. Don’t rely solely on fame. Have your trademark registered to put yourself in a better position when dealing with potential infringers. Kenneth Suzan:Ricardo, thank you for sharing your insights into Argentine trademark law. We appreciate your time on the IP Friday’s podcast. Ricardo Amigo:Thank you very much, Ken.
• 
  Key Insights on IP Management – Interview with Prof. Dr. Martin Bader – Black Friday Trademarks – Trump Guitars vs. Gibson Les Paul – IP Fridays – Episode 158 29.11.2024 44m

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