I am Rolf Claessen and my Co-Host Ken Suzan and I are welcoming you to episode 166 of the IP Fridays Podcast. Today’s interview guest is Joshua Cunnington, who is Managing Associate at Stephenson Harwood in the UK. My Co-Host Ken Suzan talks with him about an update on Trademark Caselaw in the UK, e.g. the Doctrine of Postsale Confusion.

Before we jump into the interview, I have news for you

The U.S. Patent and Trademark Office (USPTO) has removed more than 52,000 fraudulent trademark applications and registrations from the register. On August 6, 2025, the agency sanctioned a foreign filing firm that had submitted large numbers of applications using forged signatures, fake attorney identities, and manipulated specimens of use.

Reports from the United States describe an unusual funding proposal: according to the Wall Street Journal, Commerce Secretary Lutnick is considering imposing a levy of 1% to 5% of a patent’s value on patent owners. This possible “patent-value fee” would raise additional budget funds. Details remain unclear, and the idea is already stirring controversy in the IP community.

On August 4, 2025, the USPTO’s patent division issued new guidance on the patent eligibility of AI and software inventions. The “Kim Memo” stresses that examiners should not hastily label software-related claims as abstract ideas. Instead, all claim elements should be evaluated together; where eligibility is uncertain, no Section 101 rejection should be made absent clear exclusionary grounds.

In its first costs decision, the Unified Patent Court (UPC) Court of Appeal dismissed Expert klein’s appeal and declined to refer questions to the CJEU. The judges confirmed that applications for costs must be filed no later than one month after judgment and saw no reason to seek guidance from the CJEU. It seems that the Court of Appeal generally rejects the idea that decisions of the UPC could potentially be brought before the CJEU.

I am Rolf Claessen and my co-host Ken Suzan and I are welcoming you to episode 165 of our IP Fridays podcast!

Today’s interview guest is Christian Wichard, who is the Deputy Director General of at the Federal Ministry of Justice and Consumer Protection and he has been doing that for about 14 years, with a short brek from 2009 to 2014, where he as Deputy Director General at the WIPO. He is overseeing all legislative efforts of the German government related to intellectual property and we talk about many interesting topics. He had large contributions to the becoming of the Unified Patent Court, we talk about the role of AI in IP, about new reforms in the IP world. Stay tuned for this interesting interview!

Before we jump into this interview, I have news for you:

The USPTO has launched DesignVision, the first AI-powered image search tool available to design patent examiners through the Patents End-to-End (PE2E) system. This tool uses artificial intelligence to support prior art searches in design patent examination and is part of the agency’s broader efforts to modernize workflows and reduce pendency.

In Europe, the EPO’s Enlarged Board of Appeal issued a much-anticipated decision in G 1/23 on July 2. The Board clarified that a product already on the market before the filing date of a European patent application cannot be excluded from the state of the art under Article 54(2) EPC merely because its internal structure or composition could not be analysed or reproduced. Furthermore, any technical information about that product that was publicly available before the filing date forms part of the state of the art—regardless of whether the product itself could be reverse-engineered.

Just weeks earlier, on June 18, the same Board issued another important decision in G 1/24, ruling that claims must always be interpreted in the context of the description and drawings—not only when ambiguities arise. This decision aligns EPO practice more closely with that of the Unified Patent Court and is a major step toward harmonization.

Speaking of the UPC, its case management system (CMS) transitioned to a new platform between July 3 and July 8. During the switchover, certain functionalities—like opt-out requests and representative registrations—were temporarily limited. Since July 8, all filing capabilities have resumed, supported by updated FAQs and training materials.

Finally, the EUIPO has expanded its mediation service to cover all inter partes proceedings in the areas of trademarks and designs. As of June 2, 2025, parties in opposition or invalidity proceedings can now opt into mediation free of charge, fully online, and on a voluntary basis.

Now let’s jump into the interview:

In this episode of IP Fridays, Rolf Claessen speaks with J. Christian Wichard, Deputy Director General at the German Federal Ministry of Justice and Consumer Protection. Wichard has been one of the most influential figures in shaping intellectual property law and policy in Germany and Europe over the past two decades.

He reflects on the most significant developments in European IP law during this time. First and foremost is the creation of the Unitary Patent and the Unified Patent Court (UPC), which he describes as a historic milestone for patent protection and enforcement across Europe. He explains why this new system makes litigation more accessible, enhances legal certainty, and strengthens Europe’s competitiveness.

The second major development he highlights is the EU Directive on Copyright in the Digital Single Market, particularly the implementation of Article 17 concerning the liability of content-sharing platforms. He outlines the challenges of balancing copyright protection with fundamental rights and explains how Germany approached the directive’s implementation.

Third, Wichard discusses the Second Patent Modernization Act in Germany, which addressed some of the systemic effects of bifurcation in patent litigation. He explains how the reform introduced measures to better synchronize infringement and invalidity proceedings, and how it introduced a safety valve allowing courts to deny injunctions in exceptional cases.

In a detailed discussion about the UPC, Wichard shares his personal involvement in both the early conceptual phase and the more recent ratification process. He explains why it took so long to bring the UPC into force and how political, legal, and procedural hurdles—especially in Germany—had to be overcome. He also outlines the core advantages of the UPC: its broad territorial scope, procedural efficiency, cost-effectiveness, and the expertise of its judges. According to Wichard, the UPC is well positioned to become one of the leading patent litigation venues worldwide.

The conversation then turns to the current EU IP reform package. Wichard explains the status of various legislative dossiers, including the proposal for compulsory licensing in crisis situations, the introduction of unitary supplementary protection certificates (SPCs), and the regulation of standard-essential patents (SEPs). He offers insights into the controversial withdrawal of the SEP proposal and the diverging views among member states.

Another focal point of the interview is the intersection of copyright and artificial intelligence. Wichard discusses whether copyrighted works can be used to train AI systems, whether AI-generated content can be protected under copyright law, and what challenges generative AI poses for the remuneration of human creators. He emphasizes the need for legal clarity, transparency, and a fair remuneration system in the age of AI.

Finally, Wichard talks about a new official expert opinion on remuneration in the platform economy and for private copying in Germany. Although the report had not yet been published at the time of the interview, he reveals that its main conclusion is that the current system does not require fundamental reform, but that improvements in transparency and efficiency are necessary. The report is expected to be published shortly and may already be available when this episode airs.

This is a rare opportunity to hear from someone who has been deeply involved in drafting and negotiating major pieces of IP legislation at the national and European levels. Whether you are a practitioner, policymaker, or simply interested in the future of IP in Europe, this episode offers valuable insights into where we stand and where we are heading.

If you don’t know Christian Wichard, he is the Deputy Director General at the Federal Ministry of Justice and Consumer Protection of the German government, and I’m very happy that you are taking your time to be on IP Fridays.

J. Christian Wichard: Thank you for having me. Thanks.

Rolf Claessen: Thank you very much for being here. Just to clarify, and that’s important: everything that you mention here in this interview is your personal opinion and you don’t speak for the government of Germany. That is clear. And you have been Deputy Director General at the Federal Ministry of Justice and Consumer Protection for over 10 years now and you are in charge of everything related to intellectual property in the government of Germany and so that’s very interesting for our listeners of IP Fridays, of course.

What have been the top three things you remember from this whole time that in your personal opinion have the biggest impact in the intellectual property world?

J. Christian Wichard: First let me start with a small clarification. I’ve been Deputy Director General in charge of IP matters twice: first between 2006 and 2010. Then I moved to WIPO as DDG, came back in 2015 to the ministry, and back again in 2019.

And yes, I mean there are a number of IP issues that have been around during the last 10 years. And I think by far number one is the creation of the unitary patent and the Unified Patent Court. I think in my view this is almost a once-in-a-lifetime event, at least in the area of intellectual property. You have a patent that is valid currently in 18 countries and possibly in the future in the whole European Union.

You have a specialized patent jurisdiction with judgments that are enforceable in all 18 participating countries. I think that in itself is already a huge achievement that makes patent litigation much easier in Europe. It lowers the threshold for SMEs to enter the patent system. It also contributes to Europe’s competitiveness and I think it’s also a unifying force beyond the patent family. So it’s the first civil or private law European litigation system we have.

Number two was already a bit more difficult. So here I’m hesitating a little, but probably it’s the EU directive on copyright and related rights in the digital single market that was passed in 2019 and our implementation in Germany. In translation, that would mean the law on the responsibility of service providers under copyright for the sharing of content. Already the directive was hotly disputed and heavily criticized, but in the end I think it did its job. It aims at extending copyright and related rights into the digital environment, including all limitations and exceptions, and this is a very complex process.

And hotly debated in particular was Article 17 of the directive, which clarifies the responsibilities of content-sharing platforms. And here just to explain a little: these platforms make a business out of making content available online, but traditionally they haven’t really borne any responsibility for copyright infringements that happen on these platforms.

So new is now that they can be held accountable for material that is on their platform. The directive considers this posting by third parties by users as an act of communication to the public by the platform itself, which might trigger liability.

So that means that they must either try to get the license for the copyright-protected works that are posted there or must prevent it from being made available even if they haven’t received a warning. So this goes beyond the notice-and-take-down system that was established by the e-commerce directive and this also provoked the discussion on upload filters, with demonstrations in the streets and everything.

But at the same time, the DSM directive also stipulates a principle of proportionality. It explicitly states that there should be no general obligation for providers to monitor everything at all times and it also safeguards exceptions and limitations. So in a way you’re looking at a difficult balance to implement into national law, given also the different legal traditions that we have.

So that was the challenge we were facing: trying to implement that while doing justice both to copyright protection as well as to exceptions and limitations — the countervailing freedoms and rights that have to be guaranteed — and to make that implementable in a way that is also possible in a technical environment. I think in the end, in our implementation, we’ve done a reasonably good job. That was indirectly confirmed by the guidelines that were later passed by the EU Commission — after we had already passed our law — and also by the ECJ judgment that came out a bit later. So I think that was number two.

And perhaps number three is the Second Patent Law Modernization Act, which we passed in 2021. Not so much for all the rules that are new or have been reformed there, but more because it touches on some key features of the German patent litigation system.

In its key part, this modernization act seeks to address certain consequences of the bifurcation we have — the separation between, on the one hand, invalidity actions that are handled by the Federal Patent Court, which includes technical judges, and on the other hand, infringement actions that go to the general civil courts, some of which are rather specialized.

This bifurcation is a very German tradition. The reason why we have it is that patents are granted only after extensive examination by technical experts at the patent office, and they should not be declared invalid quickly by legal judges. So that’s why the infringement court should normally treat a patent as valid — unless they have very clear indications that it might not be valid — and then they can hold the procedure. But typically, they would have to treat a patent as valid because it has been examined. That also means that infringement actions can proceed really quickly.

So under a year you can have a judgment that is enforceable in Germany, and you can have a strong injunction against an infringer. That, in a way, is the strength of the German system — the speed with which you can get an infringement judgment.

But the declaration of invalidity then takes place, as I said, before the Federal Patent Court in a separate procedure involving technical expert judges. Those principles are still valid and Germany is keeping them. Problems sometimes arise because there often is a time gap between the invalidity action at the Federal Patent Court and the infringement action. The invalidity action often starts later and takes longer than the infringement proceedings. That means that in extreme cases it might happen that you get an injunction issued on the basis of a patent that is later declared invalid by the Federal Patent Court.

In extreme cases only — but still, it might happen. Then there is the question of patent quality. Is the assumption still correct that patents are granted on the basis of a thorough technical examination? Some are questioning that — less so with regard to the German office, but more so with regard to the European Patent Office. I’m not saying that EPO patents are bad, but there has been a patent quality debate relating to the EPO.

The Second Patent Modernization Act has made efforts to address the negative consequences and to address them within the system — without changing bifurcation, but to make it a bit more viable. So there is a shorter deadline: it is meant to speed up invalidity proceedings. There are shorter deadlines for filing a response in invalidity actions before the Federal Patent Court.

And then the Federal Patent Court also should issue a first early substantive assessment as to the validity within six months. So parties should get an indication of whether the court thinks that a patent is valid or not reasonably early in the procedure. That can then also be included in the infringement procedure. The infringement court can decide whether — on the basis of this early opinion — it might have to hold the proceedings until the invalidity action is over, because there may be indications that the patent is invalid. That is meant to bring both procedures closer together.

Another aspect of the act was that we also expressly included a provision into the law that now allows a court — in exceptional cases — to grant damages rather than an injunction, where granting an injunction would be disproportionate. So that is meant to serve as a safety valve and not meant to undercut the strong and enforceable patent rights, which are a cornerstone of the German patent system.

Sorry, that was a bit long, but I think those are still three key things that happened over the last ten years.

Rolf Claessen: Yeah.

J. Christian Wichard: But again, I mean, I think number one definitely is the unitary patent and the Unified Patent Court.

Rolf Claessen: We will talk about the Unified Patent Court. But first, maybe also my feeling is that the German patent system — one of the major differences compared to other important jurisdictions — is the injunction. That you can get an injunction, compared for example to the US, where it is very difficult to get one. And my understanding and feeling is that since the reform, there has not been a lot of case law denying injunctions and just awarding damages. So I think the big fears of patentees have not become true so far. Let’s see how this develops.

J. Christian Wichard: It’s just a safety valve. So it’s not meant to be the regular feature of patent litigation.

Rolf Claessen: You have watched very closely how the Unified Patent Court was established — and in fact, you have played an important role in its formation. Can you briefly describe your role in the process that brought the UPC into reality?

J. Christian Wichard: Yes. I participated in two phases, in a way. First, in the early and formative phase between 2006 and 2009. And then in 2023 again, as Deputy Director General here in the ministry.

In the early phase, our job was to voice the key concerns of the German government. Those concerns were regarding the Community Patent system, as it was called at the time — which then became the Unitary Patent.

The aim was an efficient patent granting system with a limited language regime that would lower translation costs, but also reduce legal uncertainty arising from translation requirements. Because you never really know whether there are differences between the different language versions, especially with regard to the claims.

Also, the price of a unitary patent should not exceed that of a European patent valid in four countries — cost-benefit efficiency was key. The second major concern was to ensure a high-quality and efficient court system. High quality also meant specialization: a specialized patent court with expert judges, including technical judges.

So that was the German position from the outset — an official procedure that should run quickly and effectively. The key decisions in this regard were already taken in 2009 and 2010, when the EU Council adopted the first common position. Most of the substance had already been developed by then.

Then in 2019, when I was back at the ministry, we had to address a lot of difficulties, both constitutional and political. This included legal challenges in Germany, and of course, the Brexit. Trying to sort all of that out was quite a handful.

We had to pass the ratification law, oversee the development of secondary legislation like the Rules of Procedure — which were the first European set of rules for a private court system — as well as the schedule of fees and so on. In the end, we supported the establishment of the court, which administratively still functions like a startup with a very small secretariat and administrative unit. So they still need a lot of help from the member states.

Rolf Claessen: Right. It took a couple of decades, as you mentioned, for the UPC to finally open its doors. The idea is really old, and the process has been quite long and tedious in some phases. Why, in your personal opinion, did it take so long to establish the Unified Patent Court?

J. Christian Wichard: I’m not going to talk about the period before 2009, because I think there was quite a mix of factors. One was the tension between linguistic diversity and efficiency — between a multilingual approach and a more streamlined system.

After the key features were established in 2010, the difficulties arose not so much from the substance of the system, but from external factors. First, there was an opinion from the ECJ that was necessary. Member states had asked the ECJ for an opinion, which was delivered in 2011. Everything was fine, we just needed to make a few adjustments.

Then Spain and Italy didn’t want to participate — again, for linguistic reasons. So in 2012, for the first time in EU history, reinforced cooperation was used. The Council adopted the European Patent Package without Spain and Italy. That included the Unitary Patent.

In 2013, the Agreement on the establishment of the Unified Patent Court was signed by almost all member states. But then Spain challenged the Council decision before the ECJ, and it took until 2015 to get a decision confirming everything was in order.

Next came difficulties in Germany. A constitutional complaint was filed in 2017, which meant we had to suspend ratification. We wanted to be one of the first countries to ratify, but couldn’t. The Federal Constitutional Court issued a decision in 2020 — not on substance, but on procedural grounds. So we had to pass a new law, which we did quickly.

Then another constitutional complaint was filed, which again delayed things, but this time the court acted faster and confirmed the law in 2021. Only then were we able to ratify.

And of course, there was the Brexit. The UK was one of the three countries with the most patent activity, whose ratification was required for the system to enter into force — alongside Germany and France. When the UK left the EU, we had to adjust the agreement, and Italy was determined to be the third country based on patent activity.

Once all these complications were cleared, we formally ratified the system in February 2023, and the court system officially started in June 2023.

Rolf Claessen: The idea is really old and the process has been quite long and tedious in some phases. Why, in your personal opinion, did it take so long to establish the Unified Patent Court?

J. Christian Wichard: I think the key advantages of the Unified Patent Court system are, first, the territorial scope. That’s a big achievement. You have only one procedure for handling a patent dispute, and the resulting judgment is valid and enforceable in all 18 participating member states.

Also, you have a procedure that will contribute to the development of a unified European patent case law. That, in turn, will lead to more legal certainty throughout what you might call a single European patent litigation space.

Second, there is procedural efficiency. A single action before the UPC in most cases will be more cost-effective than multiple national actions. Even if you look at the current fees, a UPC procedure can often be cheaper than a German court procedure — if you consider the need to go through both infringement and validity procedures in several national courts, possibly including appeal instances.

The UPC Rules of Procedure are designed to expedite proceedings. Typically, the first instance decision is issued within 12 months after commencement. They are still managing to stick to that timeline for now.

Then you have a limited language regime. Typically, the language of the proceedings is the language of the patent. But importantly, English can be used before all local chambers, and that has been authorized. This makes it easier to access for international companies.

The third major advantage is expertise. The court consists of the most experienced patent judges from the participating member states. They were selected not by the member states, but by an independent expert panel, which makes the selection process less susceptible to political pressure. That is a real benefit and contributes to the UPC being recognized as a high-quality patent court — at least equivalent to the respected German system.

And of course, legal and technical judges sit together on the bench in many cases. Technical judges are not just expert advisors; they participate fully in the decision-making process. That really adds value when dealing with technically complex matters.

Rolf Claessen: And more countries are joining. So it’s really a growing system. I think Ireland might be joining sometime soon, and other countries have expressed interest. So yes, it’s growing. And the usage is increasing a lot — we see that in the monthly figures published by the UPC, which are all going up. So the acceptance is clearly rising.

J. Christian Wichard: Yes.

Rolf Claessen: Let’s switch topics a bit and talk about the EU’s IP harmonization package. The European Union wants to reform and harmonize intellectual property. What is the goal of this package, and what are the most important components in your view?

J. Christian Wichard: What we currently have is what’s referred to as the patent package. It includes three dossiers, each of which is quite substantial.

First, there is a proposed regulation aimed at establishing an EU-wide compulsory licensing system. That is a politically hot topic.

Second, there are dossiers relating to Supplementary Protection Certificates (SPCs). This includes a regulation to harmonize the granting of national SPCs through a single European procedure — that’s two regulations — and another regulation to establish a unitary SPC as the long-awaited complement to the unitary patent.

The third element is a regulation on standard-essential patents (SEPs) aimed at increasing transparency and facilitating the licensing process. This is also a very complex and hotly debated issue.

Rolf Claessen: The EU Commission has announced its intention to withdraw the SEP component of the package. What is the current status, particularly with regard to SPCs and compulsory licenses in your opinion?

J. Christian Wichard: The SEP dossier has not yet been officially withdrawn, but the Commission has indeed announced its intention to do so. It has given the Council and the European Parliament an opportunity to comment.

The European Parliament was very clear in its response — it is clearly against a withdrawal. The Parliament made this position very clear to the Commission. Unfortunately, the Council is split. We didn’t really have the possibility to discuss the substance of the SEP proposal thoroughly because we were so busy dealing with compulsory licensing and SPCs. The Presidencies so far have not scheduled in-depth discussions of the SEP dossier.

But in the end, 10 countries — including Germany, France, and Italy — opposed the withdrawal very clearly. About the same number supported the withdrawal, including Sweden, Finland, and the Netherlands. So in a way, the Council was divided.

From the point of view of the German government, a withdrawal would be unfortunate. While we were not happy with every single element of the SEP proposal, we still think it is better than having no instrument at all. It provides a good basis for substantive discussion in the Council with the aim of reaching a qualified majority necessary to adopt legislation. The alternative would be nothing — and we think that would not be a good outcome. At least from the German government’s perspective, there is a clear need to enhance transparency and to provide guidance for licensing negotiations. That is obviously quite difficult at the moment, as we see from the divergent court decisions emerging in the EU.

Regarding the compulsory licensing proposal: an agreement was reached between the Commission, the Council, and the European Parliament in the so-called trilogue negotiations in May 2025. Currently, we are in the legal scrubbing phase, which means that the legal services are reviewing the text for consistency and correctness. The formal adoption will take place at one of the next Council meetings — we don’t know exactly when, but it will happen.

So compulsory licensing — which, incidentally, was the proposal we cared the least about — will be the first to be finalized.

The SPC discussions are significantly more complicated — at least for three reasons.

First, the Council Legal Service — unprompted — questioned the legal basis used by the Commission for the proposal. The legal basis is Article 118 of the Treaty on the Functioning of the EU. The argument is that a unitary SPC would only be valid in the 18 member states currently participating in the unitary patent system, and that therefore it doesn’t qualify as a title valid “throughout the EU,” which is what Article 118 requires.

We don’t agree with that assessment, and neither does the Commission’s Legal Service. Still, this point has become a stumbling block.

Second, there is the question of judicial competence. Not all member states agree on whether the Unified Patent Court should be responsible for invalidity actions — both direct and indirect. If the EUIPO were to grant the title, then, according to the Commission Legal Service, direct invalidity actions might fall under the jurisdiction of the ECJ. That’s not ideal. So some member states suggested involving the EPO instead.

However, involving a non-EU body like the EPO as the granting authority poses another problem — you have to stretch EU law considerably to allow for that. It may not even be possible legally.

So we are facing a complicated mix of legal and political issues — regarding the legal basis, the competence of the UPC, and the choice of granting institution.

Fortunately, the Danish Presidency is very ambitious. They have declared that they want to bring the SPC negotiations to a conclusion by the end of their term — at least by reaching a qualified majority in Council.

Rolf Claessen: So interesting to hear the status from you because you are an insider — you are in discussion with your colleagues from other countries, trying to reach agreement and achieve the best outcomes for users of the system. I’m very grateful that you are participating there.

Since you are here in the podcast, I also wanted to ask you something else — a topic that has been in the news and is also hotly debated among IP professionals. What are the current discussions about copyright versus artificial intelligence on a government level?

Can artificial intelligence be a creator? And can copyrighted material be used to train artificial intelligence without the consent of the creator? There are already some early court decisions on this around the world. What is your view — and what is the current status?

J. Christian Wichard: This is definitely an extremely hot topic and one that raises deep concern among stakeholders in the creative industries.

On the one hand, generative AI is a helpful tool. It can increase efficiency and assist in creative work. But on the other hand, there’s a fear that it might replace human-created content. And we are already seeing that. Machine translations are becoming common. Background music can be generated by AI. Even press articles and news items can now be produced by algorithms.

So the fundamental question is: How can copyright still support human creators in making a living from their work?

That is why this discussion is both difficult and politically charged. At the Ministry — where we are also responsible for copyright — we are very active in this area. Not always in the media, but we’ve been working behind the scenes. For example, we organized an international conference early last year. That was one of the first in a long series of events on this topic. We’ve also actively contributed to the debate in the Council of the EU.

Perhaps most importantly, we are in touch with the European Commission to prepare a broader policy discussion at EU level. We believe that this debate should not be limited to the text and data mining (TDM) exception that already exists in the Digital Single Market Directive.

There will be an evaluation of that exception next year, but we think we shouldn’t wait. The debate is broader, and it should start now — with a view to finding practical solutions.

To your questions: Can copyrighted material be used to train AI without the consent of the creator? The answer is: To a certain extent, yes.

It depends on whether the training qualifies as commercial text and data mining. If it does, then the copyright owner has the right to opt out of the exception. They can simply say “no,” and then their works must not be used for training purposes.

This opt-out right was introduced to encourage the development of a licensing market. If you can say no, then you can also ask for a fee in exchange for a license.

The problem, however, is transparency. You don’t really know whether your work has been used, because text and data mining happens invisibly. There’s no trace in your work showing whether it was part of an AI training dataset.

The EU AI Act has introduced some transparency obligations. For example, AI providers must publish a summary of the works used for training. This summary must be meaningful — meaning it should be sufficient to form the basis of a claim in court, for example.

Currently, several working groups are preparing a code of practice and a standard template for such summaries. These processes are led by the European Commission.

As for your second question — can AI be a “creator”? I would say: not in itself. A work generated entirely by AI is not a copyright-protected work in our current legal system.

But a work created with the help of AI — where a human uses the AI tool in a creative way — can still qualify for copyright protection. It depends on the degree of human input.

And can AI-generated output infringe copyright? Possibly — if the output is more or less identical to a copyrighted work. Even if the algorithm says it was a coincidence, if the result is substantially the same as an existing work, it might still be considered infringement.

Should AI-generated works themselves be protected by copyright or related rights? Our position is: not at this point. We don’t see a need to incentivize investment in AI-generated content by granting copyright.

The bigger question, however, is: How do we ensure fair remuneration for human creators in the digital and AI age?

Rolf Claessen: I think there has been an official opinion by the government regarding the remuneration of creators — for streaming or private copies. Can you summarize the main findings and suggestions from this official opinion?

J. Christian Wichard: It hasn’t been published yet — but it will be published in the coming weeks.

We’ve received the report recently, and we are currently preparing it for publication. This expert opinion, which we commissioned, deals with two central questions.

The first part concerns the remuneration of creators in the platform economy — particularly in relation to streaming. That covers all sectors except music, because a separate study on music was already commissioned by the Federal Commissioner for Culture and Media.

The second part of the opinion deals with the remuneration system for private copying — which is authorized under German law. We have a fairly elaborate system in place, which dates back to the late 1960s and early 1970s, and has been reformed several times.

The question was: Does this system still work as intended?

I won’t go into the details of the results yet — but the good news is that there’s no need for a fundamental overhaul. The core elements of the system can remain in place.

That said, the opinion does include some suggestions to improve transparency — for example, who receives how much, how value is calculated, and what constitutes adequate remuneration. It also includes proposals for increasing efficiency within the system.

Rolf Claessen: Do you have an idea when the report will be publicly available?

J. Christian Wichard: We’ve just requested authorization for publication. Normally, our political leadership is rather quick with granting that authorization.

So it could happen within the next two weeks — just in time for the summer, maybe as reading material by the pool.

Rolf Claessen: And we’re recording this in mid-July — so by the time this podcast is published, the report might already be available. If so, I will include a link in the description below this episode.

J. Christian Wichard: I’ll send you a note once it’s published.

Rolf Claessen: That would be great. It has been really great to have you as a guest in this interview, and I’m very grateful that you took the time. It’s not often that I have the chance to meet someone who has helped shape the IP landscape in Germany and Europe as much as you have. So, thank you very much.

J. Christian Wichard: Just to say: I’m not doing this alone, of course. We have very qualified colleagues here in the Ministry who are in charge of copyright, patent law, trademark law, and fair competition. I’m not the only one working on these issues.

Rolf Claessen: Of course. But you oversee the efforts — and your insight has been very valuable.

Thank you so much again.

J. Christian Wichard: Thank you for having me. It was a pleasure.

I am Rolf Claessen and my co-host Ken Suzan and I are welcoming you to episode 164 of our podcast IP Fridays!

Today’s interview guests are Arthur Rothrock and Nicholas Sarokhanian. My co-host Ken Suzan talks with them about AI tools for IP lawyers.

Arthur Rothrock https://www.linkedin.com/in/rothrocka/

Nicholas Sarokhanian https://btlaw.com/en/people/nicholas-sarokhanian

Podcast: The Litigator’s Path – https://podcasts.apple.com/us/podcast/the-litigators-path/id1765423485

Podcast: Minds & Machines – https://podcasts.apple.com/us/podcast/minds-machines-navigating-ai-and-the-law/id1801779390

U.S. Copyright Office, Report on Copyright and Artificial Intelligence

https://www.copyright.gov/ai

Before we jump into the interview, we have news for you!

The USPTO is discontinuing Accelerated Examination program for utility applications.

The USPTO is currently facing staff-related challenges including a hiring freeze, which seems to just have ended, return-to-office mandates, and potential attrition due to these policies. These issues seem to impact employee morale, potentially increasing the backlog of unexamined patents, and creating uncertainty about the future of the agency.

The USPTO has experienced a significant leadership vacuum following abrupt emails earlier this February encouraging early retirement of all Federal employees, and an unusual level direct outside communication and control of employees from OPM/DOGE.

The first office action pendency for patents increased from 19.9 months in 2024 to 23.4 months in May 2025.

On 19 June the CJEU opened oral argument in the “Oktoberfest” trademark dispute. Munich is defending its EU mark against the EUIPO, and the coming judgment could redefine the protectability of geographic event titles.

On 18 June the EPO’s Enlarged Board in G 1/24 confirmed that claims are the starting point of examination, yet description and drawings must always be consulted for the  interpretation of the claims, bringing EPO practice closer to UPC jurisprudence.

Meanwhile representatives of all 39 EPC member states met the EPO in Reykjavík to discuss IP-backed financing tools aimed at giving research-intensive SMEs better access to capital.

Since 11 June, the EPO has also been offering its “Deep Tech Finder” as an iOS and Android app. The application links patent data with the financial metrics of European start-ups and facilitates cooperation between mid-sized companies, investors, and universities.

In this episode of IP Fridays, co-host Ken Suzan welcomes two distinguished guests to explore one of the most dynamic and fast-moving topics in the legal field: Artificial Intelligence (AI) tools for IP lawyers.

Arthur Rothrock, co-founder and CEO of Legion, and Nicholas Sarokhanian, Chair of the Artificial Intelligence Practice at Barnes & Thornburg LLP, join the podcast to discuss how AI is transforming the way intellectual property lawyers work—today and in the near future.

Meet the Guests

Arthur Rothrock is the founder of Legion, a legal tech startup offering an AI-powered litigation support platform. It helps attorneys draft pleadings, discovery responses, motions, and other legal documents. Arthur is also the host of the Legal Entrepreneur Podcast and brings a strong background in legal innovation.

Nicholas Sarokhanian leads the AI Practice Group at Barnes & Thornburg and is based in Minneapolis. He is a recognized thought leader on generative AI, large language models (LLMs), and the broader legal implications of these technologies. Nick also hosts the Minds and Machines Podcast, where he regularly shares insights into the evolving digital landscape.

Key Talking Points from the Interview

1. The Rise of Generative AI in Law
Nick 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 Integration
Arthur 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 Lawyers
Both speakers explore practical examples for trademark and patent lawyers. These include:

4. Ethical and Professional Responsibility
A 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 Work
The 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 Started
Nick suggests that lawyers start small by experimenting with legal-specific AI tools in low-risk scenarios. Arthur recommends being intentional about which parts of the practice to automate and continually reassessing the tool’s value through feedback loops.

Final Thoughts

This episode provides a practical, experience-based look at how AI is reshaping the intellectual property profession. Whether you’re a solo practitioner, part of a boutique firm, or in-house counsel at a tech company, this discussion offers insights you can use today.

You can listen to the full episode and access additional resources, including a recording of the webinar and a written summary of the key takeaways, on our website or your favorite podcast platform.

Here is the transcript:

Kenneth Suzan: Our guest today on the IP Fridays podcast are Arthur Rothrock and Nicholas Sarakhanian. And our topic is AI tools for lawyers. Arthur is the co-founder and CEO of Legion, an AI-powered litigation support platform which enables users to draft pleadings, discovery, motions, and other legal documents. Arthur is also the host of the Legal Entrepreneur podcast. He holds a BA from Indiana University of Pennsylvania and a JD from Santa Clara University School of Law. Nick is the chair of the artificial intelligence practice at Barnes and Thornburg LLP and is based in Minneapolis, Minnesota. Nick is dedicated to remaining at the forefront of emerging legal issues related to generative AI, large language models or LLMs, and the evolving digital landscape. Nick is also the host of the podcast Minds and Machines. A thought leader in this space, Nick frequently writes and presents on AI-related issues and guides his clients through the labyrinth of opportunities and challenges inherent in today’s transformative technological ecosystem. Nick holds a BA from Virginia Tech and a JD from Baylor University School of Law. Welcome Arthur and Nick to the IP Fridays podcast.

Arthur Rothrock: Thank you for having us. I’m really excited to be here and to do this with Nick.

Nicholas Sarokhanian: Yeah, thank you so much. And what a great intro. You made me sound far more interesting and important than I think I am. So thank you for that. That’s great.

Kenneth Suzan: Excellent. Welcome both to the podcast. We’ll start out with Arthur. Arthur, tell us about your AI litigation support platform known as Legion. How does it work?

Arthur Rothrock: Sure. So Legion uses AI to draft fully formatted pleadings, discovery, and motions in minutes. Eventually, we’ll become a litigation operating system by offering case analytics, automatic deadline tracking, billing, eDiscovery—all that good stuff. But for now, we’re laser-focused on nailing the most tedious and time-consuming drafting parts of litigation. This is all possible because Legion is built from the ground up with AI instead of being an existing platform with AI bolted on. For example, Legion has context awareness of every document that is uploaded, allowing it to suggest relevant drafting tasks. The drafting process uses a mix of advanced models, prompt engineering, and my experience as a litigator. We treat AI like a scalpel, not a sledgehammer.

Kenneth Suzan: Arthur, what jurisdictions does Legion currently apply to?

Arthur Rothrock: Right now, Legion is focused on U.S. federal court litigation, but we’re expanding into state courts and are exploring international applications. Smaller firms and solo practitioners have been the fastest adopters—they’re excited about how this levels the playing field. In-house teams are more cautious but curious.

Kenneth Suzan: What motivated you exactly to create Legion?

Arthur Rothrock: It started from a place of frustration. I saw firsthand how expensive and time-consuming litigation is, especially for people with limited resources. One woman had a clear defamation case but couldn’t afford the $100,000 it would cost to get to trial. That stuck with me. I wanted to build something that could help people like her access justice without going bankrupt. AI can dramatically reduce drafting time and litigation costs.

Kenneth Suzan: Nick, is AI a fad? Or is this something that is here to stay?

Nicholas Sarokhanian: It’s absolutely here to stay. Maybe in 2022 or early 2023, some thought it was a passing trend, but the pace of development since then has made it clear this is permanent. As others have said: the AI we have now is the worst we’ll ever have—it’s only getting better. Yes, it will change workflows and increase demand for elite legal minds who can go beyond what AI can do. But it will also democratize access to legal tools. Those who adapt will benefit most.

Kenneth Suzan: Arthur, how is AI improving efficiency in litigation preparation?

Arthur Rothrock: It speeds up almost everything. Drafting takes a tenth of the time. Reviewing deposition transcripts, finding that obscure case you used years ago—AI handles that efficiently. It all adds up to huge gains in productivity.

Kenneth Suzan: Nick, what are your thoughts about Arthur’s position? Would you use an AI litigation support platform?

Nicholas Sarokhanian: I already do. I’ve been using generative AI since late 2022, personally and professionally. When firm policies and client consent allow, I use it in litigation too. It’s not magical, but it’s incredibly useful. For instance, I recently had a legal AI tool generate a discovery tracker spreadsheet from a PDF with over 80 objections. It did it in a minute. That saved hours of associate or paralegal time. It’s not perfect, but it’s a fantastic head start.

Kenneth Suzan: Now, there are limitations. Arthur, how do AI tools still struggle and require human oversight?

Arthur Rothrock: The big issue is hallucination—AI making things up. Lawyers are getting sanctioned for citing fake cases. Long and complex tasks are still a problem unless broken down. Tools like retrieval-augmented generation (RAG) aren’t foolproof, and success often depends on user skill. AI agents are improving, but they still need supervision. AI can’t yet replace human judgment in seeing the bigger legal picture. For now, and probably for a long time, a lawyer must be in the loop.

Kenneth Suzan: Nick, your thoughts on the hallucination issue?

Nicholas Sarokhanian: It’s inherent in how large language models work—they make predictions based on probability. That means sometimes they get it wrong. Improvements are happening quickly, but hallucinations remain a real issue. My advice to young lawyers: don’t be the cat lawyer. Learn the tools on low-risk tasks, like personal life stuff. Get comfortable before using it in client work. And always double-check the output, especially citations. Even big firms make mistakes. Ethically, lawyers are expected to be competent with technology, so you can’t just ignore it.

Kenneth Suzan: We’re almost out of time. Arthur, can you comment on real-world time and cost savings?

Arthur Rothrock: Sure. A 15-page complaint might take 15 hours to draft, costing $7,500. Legion can do it in a few minutes for $150, plus an hour of review—so $650. Motions to compel, which usually cost $15,000 in attorney time, can be done for under $1,000 with Legion. Even with general AI tools, if you’re savvy, you can cut time by two-thirds. AI is best when you already understand the subject—it’s a great drafting assistant, but shouldn’t be your source of truth.

Kenneth Suzan: Well said. Arthur, Nick—thank you so much for spending time with us today on the IP Fridays podcast. This has been truly fascinating.

Nicholas Sarokhanian: Yeah, thanks for having us.

Kenneth Suzan: Thank you.

My Co-Host Ken Suzan and I are welcoming you to episode 163 of our podcast IP Fridays! Today’s interview guest is Lucy Wojcik, who is Chief Intellectual Property Counsel at OCADO GROUP PLC, and we talk about cross-border patent litigation, in-house organization of IP teams, agile IP and much more! Lucy has just been inducted into the IP hall of fame.

But before we jump into this very interesting interview, I have some news for you.

On May 22, the European Commission released its biennial report on the protection and enforcement of intellectual property rights in third countries. The report identifies countries where IP deficiencies cause significant economic harm to EU interests. China remains a top priority, followed by India and Türkiye. The accompanying Counterfeit and Piracy Watch List details trends in counterfeiting and piracy, listing problematic websites and marketplaces.

In May, the Trump administration dismissed Shira Perlmutter, the top U.S. copyright official, shortly after removing Librarian of Congress Carla Hayden. These actions followed the Copyright Office’s report expressing concerns about using copyrighted content to train AI systems. The dismissals have sparked significant backlash from the copyright community.

The UK government’s proposal to amend copyright laws to benefit AI developers has faced criticism. The plan would allow tech firms to use copyrighted content unless creators opt out, a mechanism deemed impractical by industry stakeholders like Sony Music. Critics argue that such changes could jeopardize investments and disrupt existing licensing negotiations.

In May 2025, the U.S. Patent and Trademark Office (USPTO) rejected Tesla’s attempt to trademark the term “Robotaxi” for its vehicles, citing that the term is too generic and merely descriptive. The USPTO issued a “nonfinal office action,” providing Tesla with a three-month window to respond before the application is potentially abandoned.

A separate application by Tesla to trademark “Robotaxi” for its upcoming ride-hailing service remains under examination. Additionally, Tesla’s efforts to trademark “Cybercab” have been delayed due to conflicts with existing trademarks containing the word “Cyber.”

On May 9, 2025, the WHO and the Medicines Patent Pool (MPP) announced a sublicensing deal with Nigeria’s Codix Bio to locally produce rapid diagnostic tests using SD Biosensor technology. The agreement, part of WHO’s Health Technology Access Programme, aims to improve access to affordable diagnostics in low- and middle-income countries, initially targeting HIV and adaptable for other diseases and future health emergencies.

Now, let’s jump into the interview with Lucy Wojcik!

From Consultant to Chief IP Counsel: How Lucy Wojcik Built Ocado’s IP Powerhouse

In the latest episode of IP Fridays, I had the pleasure of speaking with Lucy Wojcik, Chief IP Counsel at Ocado Group PLC, who shared her remarkable journey from external consultant to head of one of the most dynamic in-house IP teams in Europe. Recently inducted into the IP Hall of Fame and awarded “In-House IP Leader of the Year” by Managing IP, Lucy offered deep insights into how to build a scalable, resilient IP strategy inside a fast-growing tech company.

A Career Built on Curiosity and Timing

Lucy began her journey with Ocado in 2014, initially working just one day a month as an external consultant. It didn’t take long before she realized the company’s immense innovation potential. Gradually increasing her involvement, she joined full-time two and a half years later as Ocado’s first Head of IP. Today, she leads a team of 11–12 people, reflecting not only the company’s growth but also its expanding innovation pipeline in robotics, automation, and AI-driven logistics.

IP Strategy in a Complex Business Model

Ocado’s business model is unique: while the company operates its own online grocery platform in the UK, it also licenses its proprietary logistics and automation systems to other grocery retailers internationally. This dual role—as both operator and service provider—demands a sophisticated and forward-thinking IP strategy. According to Lucy, about 40% of Ocado’s patent portfolio protects technologies actively in use, with the remainder covering speculative innovations and future business directions. Some speculative patents filed as early as 2015 have since become core to the company’s latest commercial offerings.

Orchestrating One of the Largest IP Litigations in Europe

One of the most impressive parts of Lucy’s story is her leadership during Ocado’s multi-jurisdictional litigation against AutoStore. Beginning in October 2020, this sprawling legal battle involved more than 150 lawyers across forums such as the US International Trade Commission, the UK High Court, the EPO, and courts in Germany and Israel. At its peak, Ocado faced 28 EPO oppositions and simultaneous proceedings in numerous jurisdictions.

Lucy candidly described the experience as “the world’s biggest project management challenge.” She served as the linchpin between Ocado’s executive team and its external counsel, ensuring a tightly coordinated response across legal, technical, and commercial teams. Her team developed simple tools—like one-slide patent summaries with visual elements—that proved essential in communicating complex legal developments to non-IP stakeholders across the business.

Embedding IP into Agile Engineering Workflows

One of Lucy’s most forward-looking approaches is how she embedded her team into Ocado’s agile engineering culture. Rather than acting as gatekeepers who respond to invention disclosures, the IP team participates in sprint planning, stand-ups, and engineering away-days. This integration allows the team to identify and protect innovations in real-time—even if it means occasionally filing imperfect or early-stage patents. Lucy sees this as a worthwhile trade-off for ensuring IP is deeply connected to the business’s fast-paced product development.

A Culture of Practical IP Leadership

Throughout the interview, Lucy emphasized the importance of delivering IP value that aligns with business reality. Her mantra: “Do the best you can in the moment with the resources you have.” Whether it’s advising on NDAs, coaching engineers on what they can say at conferences, or managing overlapping international filings, Lucy’s philosophy is grounded in practical, context-aware decision-making.

Advice to In-House Counsel: Know Your Audience

Lucy closed the conversation with timeless advice for IP professionals working in-house: always tailor your communication to the recipient. Whether writing to the CFO, CEO, or a junior engineer, it’s essential to consider what that person needs to know—and to deliver it clearly. She even introduced a practice borrowed from engineering culture: the “TL;DDR” (Too Long; Didn’t Read) summary at the top of her emails, followed by deeper analysis below.

Lucy Wojcik’s journey is not just about managing patents—it’s about aligning IP with business strategy, empowering engineering teams, and leading under pressure. Her experience is a masterclass in modern in-house IP leadership.

Rolf Claessen: Today’s interview guest is Lucy Wojcik. If you don’t know her, she’s the Chief IP Counsel at Ocado Group. She was recently inducted into the IP Hall of Fame and is also a member of the IAM Strategy 300. She was awarded “In-House IP Leader of the Year” by Managing IP. Thank you very much for being on IP Fridays, Lucy.

Lucy Wojcik: It’s a pleasure. Nice to talk to you.

Rolf Claessen: You lead quite a large IP team. Maybe you can tell us first how you got there. What was your role at the beginning, and how did you become Chief IP Counsel?

Lucy Wojcik: It’s quite an interesting story. I sometimes call it the longest job interview in history. I started as a consultant in January 2014 for just one day a month. Over time, I realized there was a great team with lots of innovation and opportunity, so I gradually increased my involvement. After two and a half years, I officially joined as Head of IP—the first person in that role. Over time, I grew the team to around 11 or 12 people, especially as we faced significant litigation and an increase in R&D activity. I was named Chief IP Counsel in April 2021.

Rolf Claessen: Let’s talk about your patent portfolio. It’s very diverse—autonomous vehicles, robotic arms, software. Can you give us an overview?

Lucy Wojcik: The portfolio mirrors what the company does. Around 40% protects our active work—robots, software, methods. Some of it is speculative, and sometimes that pays off. For example, a speculative filing from 2015 turned out to be vital for a major new piece of equipment. We also invest in other ventures, like a 3D printing company or vertical farming, and our IP strategy reflects that diversity.

Rolf Claessen: Ocado also licenses its systems to other retailers, who might be seen as competitors. How do you manage that?

Lucy Wojcik: Ocado Retail operates only in the UK, in a joint venture with Marks & Spencer. Outside the UK, we are a systems provider. It avoids direct competition and allows us to test and showcase innovations in the UK before offering them abroad. Our retail operations also help us understand our partners’ challenges.

Rolf Claessen: You’ve become well known for managing large-scale litigation. Can you walk us through that?

Lucy Wojcik: We had extensive litigation with AutoStore, which started in October 2020. It involved cases in the US, UK, EPO, Germany, Israel, and even the UPC. At the peak, we were handling 28 oppositions at the EPO and coordinating over 100 legal professionals globally. My role was project management—connecting external counsel with internal stakeholders and ensuring a coherent strategy across jurisdictions.

Rolf Claessen: How did you manage such complexity?

Lucy Wojcik: Early on, we created one-slide summaries for each patent, which helped communicate internally. It’s about translating legal risk into business terms—especially when communicating with 5,000 employees who aren’t IP experts.

Rolf Claessen: I was surprised to hear that your IP team works closely with engineers using agile methods, sprints, and scrums. That’s unusual for IP departments.

Lucy Wojcik: Yes! We are deeply embedded in the tech teams. We join their meetings and sprints, which lets us identify protectable inventions early—even if that means filing provisional or imperfect patents. It’s not always efficient from a classic IP perspective, but it makes our work relevant and timely.

Rolf Claessen: You’ve said that your role is about delivering the best IP value given commercial realities. Can you elaborate?

Lucy Wojcik: In-house work is about context. You never have all the resources or time you’d like. Sometimes a “good enough” patent is all that’s needed to enable a commercial move. We try not to let IP slow things down—we offer practical solutions instead.

Rolf Claessen: What’s your most important advice for in-house IP professionals?

Lucy Wojcik: Always think about your audience. Tailor your communication. I often use the TL;DR method—”Too Long; Didn’t Read”—with key points at the top of an email, followed by analysis. Different stakeholders need different things: the CFO wants to know the cost, the CEO wants strategy, and engineers want to know what they can and can’t do.

Rolf Claessen: What’s one thing you wish outside counsel would do differently?

Lucy Wojcik: Honestly, I’ve had great experiences. But early in my time at Ocado, I was frustrated by firms charging for travel time. It might be better for law firms to take a long-term view, especially with smaller clients—build trust first, revenue later. And always be honest about your capacity and fit.

Rolf Claessen: Thank you so much for this fascinating and wide-ranging conversation! I’m sure our listeners will find a lot of inspiration in your story.

Lucy Wojcik: Thank you for having me. It was a pleasure.

My co-host Ken Suzan and I are welcoming you to episode 162 of our podcast IP Fridays! Today’s interview guests are Debbie Hoffman and Anna Mouland and my co-host Ken Suzan talks with them about bequeathing bitcoin, so what happens to cryptocurrency after death?

“Bequeathing Bitcoin, Storing and Transferring Cryptocurrency Upon Death” published in the November/December 2024 issue of the American Bar Association Probate & Property Magazine

 URL: https://issuu.com/rptelaw/docs/2024-aba-rpte-v38-06-november-december-issue/s/59716998

Debbie Hoffman

https://www.linkedin.com/in/debbiekhoffman

 Anna Mouland

https://www.linkedin.com/in/annam44

https://bequest.com

Before we jump into this interview, I have news for you!

My book “Marken. Recht. Einfach.“ (which can be translated into something like trademarks in laymen’s terms) entered the bestseller charts of manager magazine in Germany for business books on rank 8! I am very proud and thankful for all the support by so many people, who made this happen!

First I want to talk about two recent decisions by the Munich Local Division of the Unified Patent Court (UPC), where the court issued Anti-Anti-Suit Injunctions (AASIs) to prevent defendants from seeking legal orders in U.S. courts that would block European patent enforcement actions. In these cases, the patent holders owned standard-essential patents (SEPs) and had initiated infringement proceedings in Germany. The defendants attempted to obtain U.S. court orders—known as Anti-Suit Injunctions (ASIs)—to halt these European proceedings. The UPC responded by issuing AASIs, thereby prohibiting the defendants from pursuing such U.S. court orders. The court justified its decisions by emphasizing the need to protect the patent holders’ rights to legal recourse under European law and the EU Charter of Fundamental Rights. It also highlighted the urgency of the matter and proceeded without a prior hearing to prevent potential counteractions in the U.S. courts. These rulings align with existing German case law and underscore the UPC’s commitment to safeguarding the integrity of European patent enforcement.

For laypersons, an Anti-Anti-Suit Injunction (AASI) is a legal measure used to counteract an Anti-Suit Injunction (ASI). An ASI is a court order that prevents a party from initiating or continuing legal proceedings in another jurisdiction. In this context, U.S. courts issued ASIs to stop European patent enforcement actions. In response, the European court issued AASIs to prevent the defendants from obtaining or enforcing those U.S. court orders, thereby ensuring that European legal proceedings could continue without interference from foreign courts.​

The president of the EPO has submitted his opinion regarding the case G 1 /24 pending before the Enlarged Board of Appeals of the European Patent Office. The President’s submission supports the view that interveners should have full party status, including the right to bring forward new arguments and requests, as long as this does not put other parties at a procedural disadvantage. This case could clarify important aspects of procedural law at the EPO, especially concerning third-party involvement in opposition and appeal proceedings.

I just found out in Reuters that Chinese automaker Geely plans to open its pool of battery safety patents to the entire auto industry, the company said at a media event at the Shanghai auto show last Wednesday. Geely said it has obtained more than 1,500 safety patents.  

I am Rolf Claessen and my co-host Ken Suzan and I are welcoming you to episode 161 of our podcast IP Fridays!

Today’s guest is António Campinos, who is the president of the European Patent Office. We talk about the Draghi report, patent quality, the Unified Patent Court, AI, validation in non-European countries and many other topics!

But before we jump into this interview, I have news for you:

Our podcast IP Fridays has been named as one of the best intellectual property podcasts in the world by FeedSpot! You can find the link in the shownotes.

The European Patent Office has published the Patent Index 2024. The US, Germany and Japan are the strongest patent filers at the European Patent Office, followed by China, South Korea and France. The biggest three patent filers are all from Asia, namely Samsung, Huawei and LG. The strongest US filer is Qualcomm in fourth place and the biggest German filer is Siemens at 6th place.

Now for an unusual decision of a patent judge: magistrate Judge Valerie Figueredo of the US District Court for the Southern District of New York has ordered a patent litigator Bill Ramey to pay the attorney fees of the opponent Google. She said that the attorney “failed to conduct an adequate pre-suit investigation that would have uncovered information demonstrating that the patent-infringement claim lacked merit and also ‘unreasonably continued pursuing’ the claim despite notice from the defendant that the claim lacked a colorable basis,”. Google was represented by Barnes & Thornburg.

The EUIPO has published CP15 Common Communication “Comparison of goods and services: treatment of terms lacking clarity and precision and common interpretation of Canon criteria and other factors”. It enhances consistency in the comparison of goods and services across the EU. Terms lacking clarity and precision must not be excluded from the outset but should be interpreted based on their natural and literal meaning, considering the Nice Classification. Such terms cannot be interpreted in a way that benefits the trade mark owner. If identical or synonymous unclear terms appear in both the earlier and the contested mark, they are deemed identical. Additionally, a single factor—such as intended purpose, relevant public, or distribution channels—may be sufficient to establish similarity. By introducing common definitions and interpretations of key comparison criteria, CP15 promotes transparency, legal certainty, and harmonized decision-making among IP offices.

I have published a book “Marken. Recht. Einfach.” With the publisher Frankfurter Allgemeine Buch on 5th March 2025. Today I learned that I my book entered the bestselling list of manger magazine for business books at 8th place! I am very grateful for all who have helped me with this huge success!

And now let us jump into the interview with António Campinos!

In this episode of IP Fridays, Rolf Claessen interviewed António Campinos, who has been the President of the European Patent Office since July 1, 2018, and was previously the head of the European Union Intellectual Property Office (EUIPO).

The first topic centered around the Draghi Report, which Campinos described as a much-needed wake-up call for Europe. He emphasized that the report underlined the continent’s innovation gap in comparison to global powers such as the United States and China. One of the critical messages of the Draghi Report, according to Campinos, is that Europe is hindered by excessive regulation, which weakens its internal market and impairs its ability to compete economically. He noted that although Europe has produced more startups than the US over the past five years, many of these startups eventually relocate to the US due to the lack of sufficient scale-up funding and a highly fragmented internal market. This fragmentation brings bureaucratic complexity, which especially impacts micro-entities and startups. Campinos argued that, to maintain its welfare model and remain competitive, Europe must become more productive by investing not just more, but smarter in innovation.

Campinos continued by pointing out that while Europe leads in certain technological areas—such as transportation, mechanical engineering, chemistry, and clean technologies (especially hydrogen, power grids, and plastics recycling)—it lags behind in others. Batteries, for instance, remain a major area of concern where Asia is leading. In AI, although patent filings have grown significantly in Europe, the US and China are still far ahead. Similar gaps were observed in biotech and pharmaceuticals. He stressed that if Europe wishes to accelerate its innovation trajectory, it must both increase and improve the efficiency of its innovation investments.

Rolf then asked how the European patent system could help mitigate fragmentation and complexity. Campinos responded with two perspectives. From a legal standpoint, the EPO launched a convergence program in collaboration with its member states to harmonize legal practices across Europe. This includes standardizing approaches in the granting process for computer-implemented inventions and AI-related patents. He argued that harmonized practices significantly reduce administrative burdens, particularly for SMEs and research institutions.

The second and more strategic angle focused on improving data accessibility and usability. Campinos emphasized the importance of converting raw data into actionable knowledge and business intelligence. The EPO has made patent data available through tools like Espacenet, which saw over 18 million visits in the past year. The EPO is now investing in advanced technologies like large language models and natural language processing to make this data more readable and accessible. A notable example is the new “Technology Intelligence Platform,” which allows users—whether researchers, businesses, or policymakers—to explore innovation trends, leading companies, and technology landscapes without requiring prior expertise.

Rolf brought up the unitary patent and the Unified Patent Court (UPC), asking about the insights gained since its launch. Campinos called it a “huge success,” citing over 50,000 requests for unitary protection and more than 700 court decisions delivered within six months. He highlighted that the system was deliberately designed to be attractive to smaller entities. Data shows that one-third of unitary patent requests came from SMEs and individual inventors, with half of these SMEs choosing the unitary effect after grant—figures that outpace participation in traditional European patents. He expressed hope that more EU member states would soon join the system, encouraged by the success and efficiency of the UPC. Ultimately, he suggested that political will could extend the system’s reach even beyond the EU.

Reflecting on the long road to establishing the UPC, Campinos acknowledged past mistakes, particularly the lack of early stakeholder involvement. He believes the key lesson is the importance of listening to and working with all stakeholders—including industry, judges, and professionals—early in the process. Applying this lesson to current topics like standard-essential patents (SEPs) and supplementary protection certificates (SPCs), Campinos supported the European Commission’s decision to withdraw its SEP proposal, which he said had been widely criticized. However, he still sees the need for measures to improve transparency and licensing practices in SEPs, and he noted that any SPC reform should involve the jurisdiction of the UPC.

The conversation then shifted to digital transformation and AI. Campinos stated that the primary challenge for any organization, including the EPO, is simplification. Digital tools must support simplified legal and administrative processes, otherwise, transformation efforts fail. He emphasized the importance of change management and the need to adopt an iterative development mindset with minimally viable products that evolve over time. With regard to AI specifically, the EPO maintains a “human-in-the-loop” approach, ensuring that all final decisions are made by humans, even when AI tools are used in the process.

Rolf raised the issue of maintaining quality amid high user expectations and a growing volume of work. Campinos highlighted the EPO’s objective strengths: a highly skilled workforce of over 4,000 examiners, access to the world’s largest collection of patent and non-patent literature, and powerful search tools. One unique feature of the EPO’s process is the preliminary opinion on patentability included in the search report, typically delivered within six months. This early insight helps applicants secure funding and plan business strategies. Campinos also mentioned that the EPO has strengthened its quality control processes, expanded user consultations through stakeholder panels (SQUAPs), and introduced pragmatic quality assessments involving external patent attorneys and internal examiners.

On the topic of applicant engagement, Rolf noted that informal in-person meetings with examiners had been helpful in the past and asked whether such interactions might return. Campinos responded that while all meetings are formally structured, the EPO has made extensive efforts to engage applicants through one-on-one meetings, company visits (virtual, in-person, or hybrid), and even company-led training sessions. A new initiative will send EPO teams to trade fairs to meet with multiple companies, including competitors, to learn about emerging technologies and collect feedback on the EPO’s processes and services.

The discussion turned global as Rolf asked about the EPO’s efforts to meet the needs of international users. Campinos described the growth of validation agreements, which allow EPO patents to be recognized in non-member countries. From just 1.6 million global filings 15 years ago, the number has grown to over 3 million in 2023. The EPO now has agreements with six countries outside Europe, with Laos and Costa Rica recently joining. Together with its member states, the EPO’s validation system now covers a market of 720 million consumers. Campinos expressed optimism that further expansion in Latin America is likely in the future.

In closing, Rolf asked Campinos for a message to users, innovators, and policymakers. Campinos responded by reaffirming the EPO’s commitment to delivering the highest-quality services and products. He acknowledged that mistakes may happen but emphasized that the office learns from them. To policymakers, he echoed a quote from Michel Barnier: “We have to understand before we act,” underlining the need for thoughtful, evidence-based policymaking in intellectual property matters.

The interview concluded with mutual thanks and an appreciation of the opportunity to reflect on the EPO’s work, its role in the innovation ecosystem, and the future of patent law in Europe and beyond.

My co-host Ken Suzan and I are welcoming you to episode 160 of the IP Fridays podcast!

Today`s interview guest is James E. Malackowski, the founder of Ocean Tomo, in my view the first successful patent auction venue. We talk about monetization and auctioning patents, use of blockchain technology for IP and especially for licensing, the economics of data rights and much more. But before we jump into this interview, I have news for you:

The EUIPO and the EPO just released a new study ““Intellectual Property Rights and Firm Performance in the European Union.” on how intellectual property rights (IPRs) boost business performance in the EU. It looks at trade marks, designs, and patents, and shows that companies owning IPRs earn more revenue per employee and pay higher wages. Small and medium-sized enterprises benefit the most, with a 44% increase in revenue per employee compared to firms without IPRs. Yet, fewer than 10% of SMEs use registered IPRs—showing big untapped potential.

https://www.euipo.europa.eu/de/news/observatory/epo-and-euipo-study-highlights-the-impact-of-intellectual-property-rights-on-firm-performance-in-the-eu

The USPTO has unveiled a new strategy to guide the responsible development of artificial intelligence. This plan aims to clarify patent rules for AI inventions, foster public-private collaboration, and address ethical considerations like transparency and fairness. By creating clear guidelines and balanced regulations, the USPTO hopes to empower innovators and bring more AI-driven solutions to market. This strategy underscores the growing impact of AI on all industries and highlights the USPTO’s commitment to shaping the future of innovation.

https://www.uspto.gov/subscription-center/2025/uspto-announces-new-artificial-intelligence-strategy-empower-responsible

The European Patent Office (EPO) has introduced a new investor-mapping initiative to strengthen Europe’s innovation ecosystem. By identifying key investors, the project aims to bridge the gap between invention and market, helping inventors and businesses find the right funding and partners. The report introduces a new metric, the Technology Investor Score (TIS), which is the proportion of companies in an investor’s portfolio that have filed patent applications. This effort is designed to boost Europe’s competitiveness and foster greater collaboration across industries, research institutions, and venture capital.

https://www.epo.org/en/news-events/news/bridging-gap-mapping-investors-strengthen-europes-innovation-ecosystem

In this episode of IP Fridays, I speak with James E. Malackowski, an intellectual property (IP) pioneer best known for founding Ocean Tomo. James shares how Ocean Tomo introduced the world’s first large-scale public auctions for patents, trademarks, and copyrights. He also explains how these auctions helped create market-based “price discovery” for IP assets—something that had never been done so openly before.

Beyond auctions, James discusses strategies for CEOs of mid-sized tech companies to extract real value from their R&D and patents. He emphasizes the importance of planning ahead, understanding your own portfolio, and making IP a regular topic at the board level. We also talk about why early, strategic patent filings can protect your company from missing out when others file first.

Another major topic is the potential of blockchain technology for patent licensing. James outlines how blockchain can offer an immutable and transparent way to package and transfer patent rights—potentially even creating an “IP coin” to finance innovation. He notes that while blockchain is already starting to be used in data rights, it could reshape the entire licensing landscape by allowing more efficient trading and tracking of IP.

We also cover the idea of the complete economic chain for IP licensing, which means recognizing everyone’s contribution from the first supplier all the way to the final product manufacturer. James says it may be more efficient to handle royalties and costs at the beginning rather than chasing every link in the chain later.

Finally, we explore how the merger with J.S. Held has expanded Ocean Tomo’s services. With over 500 in-house engineers, J.S. Held brings deep technical expertise to help Ocean Tomo’s clients in areas such as valuation, expert witness services, litigation support, and more.

Key Topics

Connect with James

Enjoy the episode, and let us know your thoughts on these emerging trends in the IP world!

Jim Malackowski: Hello everyone, my name is Jim Malackowski. I am the co-founder and senior managing director of Ocean Tomo, and I’m thrilled to be here on IP Fridays.

Rolf Claessen: Today’s interview guest is James Malackowski, the co-founder and senior managing director of Ocean Tomo, a part of J.S. Held. Before founding Ocean Tomo over 21 years ago in 2003, Jim had several positions in the IP field. He holds a degree in business administration from Notre Dame in Indiana, and in 2022, Jim was inducted into the IP Hall of Fame. Thank you very much for being on our IP Fridays podcast, Jim.

Jim Malackowski: Rolf, thank you for having me. I’m excited for the conversation.

Rolf Claessen: Alright. So, I already mentioned that you are the founder of Ocean Tomo, and you introduced the world to the first public auctions of patents, trademarks, and copyrights. In my personal recollection, it was the first patent auction site that really worked on a larger scale. I think there were some tries before that, but no one really succeeded. So, tell me more about the story behind Ocean Tomo and why you think it was successful.

Jim Malackowski: Sure, and Rolf, your question is actually a question within a question. Let me tell you about Ocean Tomo, and then let’s talk specifically about the auction, because that itself is a really interesting story. With respect to the firm, the history of Ocean Tomo is really very similar to the history of my career. So, we can trace our activities back to the Court of Appeals for the Federal Circuit in the United States changing and forming a new way of looking at intellectual property back in the 1980s.

Jim Malackowski: I started my career as an accountant shortly thereafter and opportunistically happened to work on calculating damages for patent infringement litigation. I was the first in a very small team to do that straight out of college. Because I worked on the first assignment, they gave me the second. After the second, the third, and then I was declared a member of a small expert team as a result. So, I spent the early part of my career, the first three years, doing nothing but looking at intellectual property in a litigated situation.

Jim Malackowski: In the late 1980s, a client came back and asked me to value a patent, not for the courtroom, but for a business transaction. I can remember that day well. I literally ran down the hall to the senior partner’s office talking about my first piece of revenue credit. His answer was no. He said it’s not something that we do. It wasn’t something covered by the accounting standards or their insurance. So, a week after my 25th birthday, I left the firm. Four of my peers came with me, and we started what was the first-ever intellectual property dispute accounting and valuation boutique. We got lucky. That firm grew from five people, later partnered with private equity, and ended up selling nearly 300 people in the late 1990s.

Jim Malackowski: After that, I went to work at one of the investment houses that had invested in us and really had my eyes opened to the power and impact of intangible assets and intellectual property, particularly as it relates to investment decisions. I worked on that for two years. Then, when the non-compete was over from the sale, literally to the day, we started Ocean Tomo in 2003. My history has been an amalgamation of those experiences.

Jim Malackowski: Your question also asked about the auction, which is one of our favorite chapters within the firm in the early 2000s. One of my partners at that time, our vice chairman, was a very serious car collector. As we were explaining to him the frustration we had of selling patents as a broker, he basically said to me, “Jim, why do you make it so hard? Why don’t you try to sell patents like Sotheby’s would sell art, or like Gooding & Company sells cars? Publish a catalog, pick a date, hire an auctioneer, and let the buyers determine the market.”

Jim Malackowski: That idea stuck with me. Within six months, we had our first auction in San Francisco in 2006. We published a fancy catalog, hired a British-accented auctioneer experienced in antiques and automobiles, and assembled 80 lots of patents for sale. That day, more than 400 people showed up, including CIPO’s, former directors of patent offices worldwide, and a large media presence. When the auction started, the room went silent—it was the first time anyone understood what manageable patent portfolios were worth. Up to that point, patent sales weren’t disclosed, and this was true price discovery.

Jim Malackowski: At that first auction, we sold about a third of the catalog for several million dollars. In the years that followed, we sold over $100 million on the auction floor. That event was a game-changer in recognizing intellectual property and patent value.

Rolf Claessen: Fascinating. So, what do you think attracted those 400 people to that first auction?

Jim Malackowski: There were three reasons: First, it was price discovery—they wanted to know what these patents would sell for. Second, it was a market-building networking opportunity, as dedicated IP brokerage and valuation conferences didn’t exist back then. And third, fear—fear that a patent that could impact their business might sell, and they’d miss the chance to acquire it.

Rolf Claessen: Very interesting. And it’s always a recurring question: How much is a patent worth? Many of my clients, especially medium-sized companies with maybe 500 to 1,000 employees, ask me, “We’ve filed all these patents—how much are they worth?” My response is often that the value of a patent is what someone is willing to pay for it. Do you agree?

Jim Malackowski: Absolutely. The worth of patents can be evaluated in two ways. First, how do they help you build value in your business? If you’re able to raise capital or introduce products with unique features that maintain a proprietary position, there’s obvious value. Second, how do they create value for others? If others are using your intellectual property to generate revenue or capture market share, then it’s valuable to them. Ideally, those situations lead to win-win transactions where value is shared.

Rolf Claessen: That’s a great point. Now, imagine you’re the CEO of a medium-sized, tech-driven company. What would you tell yourself to maximize the value of your research and patents?

Jim Malackowski: Great question. Let’s break it down into three levels. At the highest level: Plan for it. Failing to plan is planning to fail, and that applies to intellectual property. I recommend designating someone on your board or advisory team to oversee IP. This ensures it becomes a regular part of board discussions and elevates the role of intangibles in your company strategy.

Jim Malackowski: Next, develop a strategic IP plan. For us, that starts with a landscape analysis—understanding what you own and what your competitors own. Then, determine your principles: Are you willing to out-license, enforce, or in-license? Are you managing IP holistically across the business or within divisions? Once you know these principles, you can align your IP strategy with your business plan. Finally, educate your team about the importance of IP. Share your plan with the board, the C-suite, and even the broader organization so everyone understands the role of intellectual property in supporting the business.

Rolf Claessen: That’s incredibly helpful. Now, let’s shift to new technologies like blockchain. I believe blockchain has great potential for patent licensing. Can you explain why blockchain is suitable and why it’s not widely used yet?

Jim Malackowski: I agree that blockchain holds tremendous potential for IP, including patents, copyrights, data, and trade secrets. Blockchain is efficient, transparent, and immutable, making it ideal for documenting and packaging IP for transfer. For example, it allows you to wrap trade secrets or know-how into a blockchain container, ensuring everyone understands its scope and creation date.

Jim Malackowski: Blockchain also enables valuation, balance sheet recognition, and secondary trading. Imagine licensing a patent wrapped in blockchain data—you could later sell that right to a third party. While adoption has been slow, it’s starting to gain traction, especially in data rights. Blockchain tools are now being used to codify, package, and transact data, and I believe we’ll see similar developments in patents.

Rolf Claessen: That’s exciting. You mentioned earlier the idea of a blockchain-based IP coin. Could you elaborate on that?

Jim Malackowski: Sure. An IP coin could function as a cryptocurrency secured by patents. For example, you could create a portfolio-backed cryptocurrency where each token represents a specific IP right. This could be used for financing, with patents serving as collateral. While we’re not there yet, it’s an area we continue to explore.

Rolf Claessen: Interesting. But the legal framework for blockchain-based licensing seems outdated, at least here in Germany. Do you think the law will adapt?

Jim Malackowski: It will have to. One exciting concept is using blockchain to unitize IP rights. For example, if a patent portfolio covers automotive technology, you could create a million unit license rights using blockchain. A manufacturer could buy 100,000 units today and sell unused rights to a competitor later. This approach benefits patent owners because they get paid upfront while allowing buyers flexibility. Blockchain makes this possible by enabling transportable, easily tradeable rights.

Rolf Claessen: That’s a compelling vision. Before we move on, you mentioned the idea of considering the complete economic chain for IP licensing. What does that mean?

Jim Malackowski: It’s about ensuring value is recognized and royalties are shared across the entire supply chain, from the original innovator to the final product manufacturer. Today, patent owners often have to approach each link in the chain separately, which is inefficient. A better approach would involve assigning royalties at the start and passing them along the chain in a clear, explicit way. This would reduce litigation and uncertainty while ensuring everyone is fairly compensated.

Rolf Claessen: That makes sense. Now, let’s switch to data rights, another emerging topic. You’ve mentioned the need for a market for data rights. Can you explain what you mean by that?

Jim Malackowski: Sure. Data rights can be viewed from two perspectives: personal and business. On a personal level, we often give apps permission to collect our data without receiving any compensation. There’s an opportunity to create a market that recognizes the value of individual data.

Jim Malackowski: On the business side, there’s already an active market for data—like mailing lists or data sets used for AI and machine learning. Blockchain and other tools can make these markets more efficient by enabling secure, transparent transactions. We’re excited to see these markets evolve.

Rolf Claessen: That’s a fascinating area to watch. Finally, Ocean Tomo is now part of J.S. Held. What services do you offer beyond auctions?

Jim Malackowski: Ocean Tomo has always been known for different things by different people. Lawyers know us for litigation expertise, while others associate us with valuation or auctions. Today, as part of J.S. Held, we’ve expanded our offerings. We have four main practice areas: opinion services for litigation, management consulting for IP strategy and valuation, investment banking for transactions, and technical services like patent analytics and reverse engineering.

Jim Malackowski: The partnership with J.S. Held has been transformative. With over 500 engineers on their team, we can now tap into deep technical expertise for any industry or technology. It’s been a very effective collaboration.

Rolf Claessen: That’s fantastic. If listeners want to connect with you or learn more, what’s the best way to reach you?

Jim Malackowski: They can email me directly at [email protected] or visit our website, where they’ll find an option to connect with us. We’re always happy to brainstorm and see how we can help.

Rolf Claessen: Jim, thank you so much for this excellent interview. We covered so many exciting topics, and I’ve really enjoyed our conversation. It was a pleasure having you on IP Fridays.

Jim Malackowski: Thank you, Rolf. It’s been a pleasure, and I look forward to doing this again.

My co-host Ken Suzan and I are welcoming you to the last edition #159 of IP Fridays in the year 2024 before the holiday season. We wish you all happy holidays and a successful year 2025!

Our interview guest Ricardo Amigo is an IP lawyer in Argentina and will give us an update of the recent changes of the trademark law including the new Patagonia issue, the new trademark opposition procedure and much more. You can find the profiles of Ricardo here:

https://bertonmoreno.com.ar/ricardo-e-amigo-en

https://www.linkedin.com/in/ricardo-e-amigo-2b97467

Before we jump into this interview, I have news for you!

First of all, my book “Marken. Recht. Einfach.” (translated into trademark law made simple) on trademarks will be published in March 2025. Many entrepreneurs and decision-makers feel overwhelmed by trademark law and make unnecessarily expensive mistakes – often out of ignorance. I am changing that with my book. I explain trademark law to the readers in an understandable way, without legalese, and show the readers how to recognize risks at an early stage and how to protect and enforce their trademarks securely. My knowledge from over 20 years of experience in this field will help the readers to make the right decisions with confidence. The link to the book is in the show notes (https://amzn.to/3D6IDKe, affiliate link).

The European Patent Office has released its updated Guidelines for Examination, set to take effect on March 1, 2025. These revisions incorporate recent legal developments, user feedback, and the latest case law to ensure greater clarity and consistency in patent examination. By refining procedures and clarifying key points, the EPO aims to improve user experience and enhance the quality of granted patents. Users are encouraged to review the changes, as the Guidelines serve as an essential reference for navigating the European patent system.

The United States Patent and Trademark Office (USPTO) has announced changes to its patent-related fees, effective January 19. These updates will impact various patent-related services, including filing, search, examination, and maintenance fees. The adjustments aim to reflect current cost recovery requirements and continue supporting the high quality of the U.S. patent system. Stakeholders should review the new fee schedule to ensure compliance and budget accordingly for upcoming filings and maintenance activities.

The European Union Intellectual Property Office (EUIPO) has released a new report on the state of online piracy and copyright infringement in Europe, revealing that while overall piracy rates have declined, challenges persist. In particular, TV content accounts for half of all digital piracy, with viewers tuning into illegal TV content five times per month. To address these issues, the report emphasizes the importance of ongoing enforcement efforts, consumer education, and the availability of legal, affordable, and high-quality content. It also highlights the need for international collaboration to protect creators’ rights and nurture a healthy digital content market.

Now let us jump into the interview with Ricardo Amigo with his update on the IP laws in Argentina!

In this episode of the IP Friday’s podcast, intellectual property expert Ricardo Amigo, a partner at the Berton Moreno IP law firm in Buenos Aires, Argentina, provided insights into significant developments and best practices in Argentine trademark law. With over three decades of experience in IP, Amigo advises both local and international clients across a wide spectrum of industries. His areas of expertise include trademarks—both prosecution and litigation—as well as copyrights, industrial models, designs, patents, genetically modified organisms, biotechnology, and entertainment law. He is actively involved in professional associations such as the International Trademark Association, including its famous and well-known marks committee, and has academic credentials from the University of Buenos Aires and the Franklin Pierce Law Center’s IP Summer Institute.

A central topic of the interview focused on a recent decision by the Argentine government to seek recognition of the term “patagonia” as an emblem under Article 6ter of the Paris Convention. The World Intellectual Property Organization’s recognition of this emblem, granted on September 30, 2023, has broad implications for trademark owners. In practice, since that date the Argentine trademark office has been rejecting all new applications containing the word “patagonia,” regardless of whether the applicant already owns a related mark. This situation puts established rights holders in a difficult position, with the only viable remedy being to challenge the decision in court. Amigo believes that, eventually, judicial rulings may force the Argentine trademark office to reconsider its stance, but warns that such a legal battle could span several years.

Beyond these recent developments, Amigo emphasized the importance of thorough preparation before seeking trademark protection in Argentina. He recommends conducting comprehensive searches—identical, phonetic, and online—prior to filing an application. Many trademarks remain unregistered but are in active use, sometimes only on social media, so researching both official registries and the broader internet is crucial. Although unregistered trademarks may sometimes be enforced through the courts, the Argentine IP system, as an attribution-based one, places far more weight on registered marks. Securing a trademark registration ensures a stronger position when it comes to enforcement and can significantly improve the chances of obtaining injunctions against infringers.

Amigo also discussed how the trademark opposition system in Argentina changed in 2018. Historically, an opposition would block the registration and require the applicant to pursue negotiations, mediation, and potentially lengthy court proceedings. Under the revised system, the burden has shifted more to the opponent. After a brief negotiation window, the opponent must ratify and provide additional arguments to the trademark office, leading to an administrative ruling rather than an immediate judicial case. This structural shift helps deter ill-founded oppositions and speeds up resolution times.

In terms of maintaining rights, trademark owners in Argentina must declare use of their marks every five years and upon renewal. While the trademark office does not routinely verify the veracity of such declarations, use is essential for sustaining protection. Amigo also noted that the law now allows for partial cancellations: trademarks can be canceled for non-use of specific goods or services, although related goods may be considered a valid defense if the mark is used for them.

Well-known trademarks, although not formally categorized in Argentine law, have long enjoyed judicial protection. Courts recognize and safeguard famous marks against unauthorized registrations or use, even if they are not registered. Nevertheless, Amigo recommends that owners of well-known marks should not rely solely on fame. Registering and using marks in the relevant classes of goods and services provides a stronger foundation for enforcement, whether through negotiations or legal actions.

In summary, Amigo’s guidance for foreign and local businesses includes conducting careful pre-filing research, ensuring timely use and maintenance of marks, and understanding the complexities of Argentina’s evolving legal landscape. His advice underscores the importance of proactive IP strategies, from diligent searches to securing rights through registration, thereby providing trademark owners with a more secure footing in the Argentine market.

Here is the transcript:

Kenneth Suzan:
Our guest today on the IP Friday’s podcast is Ricardo Amigo. Ricardo is a partner at the Berton Moreno IP law firm located in Buenos Aires, Argentina, and has been working as a lawyer specializing in IP since 1989.

Ricardo represents local and foreign clients alike in almost all industries and has broad experience in trademark law—both prosecution and litigation—as well as copyrights, industrial models and designs, patents, genetically modified organisms, biotechnology, and entertainment law issues. He is a member of the International Trademark Association, including its famous and well-known marks committee, the Argentine Association of Industrial Property Agents, and the Coligio Publico de Abigados de la Capital Federal.

Ricardo graduated as a lawyer from the University of Buenos Aires in 1994 and attended the Intellectual Property Summer Institute at Franklin Pierce Law Center in 1996.

Welcome, Ricardo, to the IP Friday’s podcast.

Ricardo Amigo:
Thank you, Ken. Thank you very much for inviting me.

Kenneth Suzan:
Excellent, Ricardo. So I’ve heard there have been some recent developments in trademark law in Argentina in the last year. Can you share some information with our listeners?

Ricardo Amigo:
Yes, sure. The most relevant new issue that affects trademark rights in Argentina is that the Argentine government applied in 2023 for the term “patagonia” as an emblem under Article 6ter of the Paris Convention. On September 30, 2023, the World Intellectual Property Organization recognized the emblem “patagonia” in favor of the Argentine government.

This is a very big issue for many trademark owners in Argentina who have acquired rights over trademarks that include the term “patagonia.” Since the emblem’s recognition, the Argentine trademark office has been rejecting all new trademark applications including “patagonia.” Even if you already own a “patagonia” mark and try to file a new design or variation, it is automatically rejected.

This situation is disturbing for trademark owners—local companies, Argentine individuals, US companies—basically everyone. We are dealing with acquired trademark rights here.

Kenneth Suzan:
Wow. Are there any legal remedies that trademark owners have so they can fight back, or do they have to live with this ruling?

Ricardo Amigo:
When the trademark office issues an official action rejecting a trademark with “patagonia,” you can file an answer with all the arguments at hand, including that you already have an acquired right. But the trademark office won’t consider these arguments and automatically rejects the application.

The only legal remedy would be to go to court and seek to have the administrative ruling reversed. You would argue that it’s unconstitutional because you already have property rights recognized under the Argentine constitution. We don’t know how the first ruling will go, but eventually I believe judges may rule in favor of trademark owners, forcing the trademark office to change its stance.

Kenneth Suzan:
We’ll have to keep an eye on that. Do you think a ruling might come out in the next year or two?

Ricardo Amigo:
No, it will take longer. Complaints were filed in 2024, and I expect at least four years until the first instance ruling, with the potential for appeals all the way to the Supreme Court. We’re talking about at least seven or eight years until we have a final ruling. Unfortunately, that’s the current situation in Argentina.

Kenneth Suzan:
We’ll certainly monitor that. Let’s shift topics. What do you consider the main issues that a trademark owner should address when seeking protection in Argentina? Any best practices?

Ricardo Amigo:
First of all, don’t use an emblem as a trademark. For any foreign company seeking trademark protection, it’s crucial to conduct a search—at least an identical search in the class of interest, and if possible a full phonetic search. This helps you find both identical and confusingly similar marks.

Given today’s importance of social media, I also recommend conducting an internet and social media search. Many trademarks in Argentina are used but not registered. You don’t want to apply for a mark, start using it, and then face a claim from a third party claiming prior unregistered use. So, searches in the registry and online are both very important.

Kenneth Suzan:
You have many years of experience with trademark enforcement. Is it important to obtain a registration in Argentina to enforce trademark rights there?

Ricardo Amigo:
Yes, Argentina uses an attribution system where ownership and the right to exclusive use are obtained through registration. Courts have protected unregistered marks based on notoriety and evidence of use, but having a registered mark puts you in a much stronger position to enforce your rights and obtain injunctions. Without registration, it’s much harder and you need to prove extensive use.

Kenneth Suzan:
The trademark opposition system in Argentina was modified a few years ago. What changes can you share with us?

Ricardo Amigo:
Before 2018, when an opposition was filed, the application was blocked. The applicant had to negotiate, attempt mediation, and, if unresolved, go to court. This put the burden on the applicant.

Under the new system, after the opposition is filed, there is a brief negotiation period of 90 days. Then the opponent must ratify the opposition and provide additional arguments. If the opponent doesn’t ratify, the opposition falls. If they do, it leads to administrative proceedings before the trademark office rather than a court action. Both sides present arguments and evidence. If the trademark office rules against the applicant, they can appeal directly to the Court of Appeals.

This system shifts the burden to the opponent and reduces ill-founded oppositions. It also speeds up the process compared to the old system.

Kenneth Suzan:
What about trademark renewals in Argentina? Do you have to declare or prove use to keep a registration alive?

Ricardo Amigo:
Yes. You must file an affidavit under oath declaring that the trademark was used in the last five years. The trademark office doesn’t examine the truth of the declaration, but you need this to renew. Also, you must file a mid-term declaration of use after five years of registration. This helps prevent cancellations for non-use and strengthens your position against third parties.

Kenneth Suzan:
Can a trademark be partially cancelled for lack of use?

Ricardo Amigo:
Yes, under the new law. Previously, a cancellation action cancelled the entire mark. Now, a third party with a legitimate interest can seek partial cancellation for certain goods or services. You can defend against this by proving use of related goods or services, even if not exactly those specified. Defining what counts as “related” is complex and case-specific.

Kenneth Suzan:
What about well-known brands? How are they protected in Argentina?

Ricardo Amigo:
Well-known brands are not specially categorized in the Argentine law, but courts have long recognized their protection. Even without prior registration, courts have granted rights to owners of famous marks when someone tries to register or use them without authorization.

That said, it’s always better to register the trademark in the relevant classes before entering the market. Don’t rely solely on fame. Have your trademark registered to put yourself in a better position when dealing with potential infringers.

Kenneth Suzan:
Ricardo, thank you for sharing your insights into Argentine trademark law. We appreciate your time on the IP Friday’s podcast.

Ricardo Amigo:
Thank you very much, Ken.

You can find the profile of Prof. Martin Bader here:

https://www.thi.de/en/persons/prof-dr-oec-hsg-martin-bader

My co-host Ken Suzan and I are welcoming you to episode 158 of IP Fridays. Today’s interview guest is Prof. Martin Bader. In my view, he is THE expert when it comes to IP management and in particular patent management. He is consulting some of the top patent filers in the world and I can pick his brain today.

But before we jump into the interview, I have news for you!

For years, German retailers faced legal uncertainties when using the term “Black Friday” in promotions, as it was registered as a trademark. Unauthorized use risked costly cease-and-desist letters. However, after multiple legal challenges, the German Federal Court of Justice (BGH) confirmed that “Black Friday” is no longer protected as a trademark. This decision allows retailers to freely use the term in their marketing without fear of legal repercussions.

On November 25, 2024, the German Patent and Trade Mark Office (DPMA) began participating in WIPO’s Digital Access Service (DAS) as a depositing office for patents and utility models. This allows applicants to request priority documents electronically through WIPO DAS, enabling secure and efficient sharing of these documents with participating IP offices worldwide. Applicants can request electronic priority documents for free using Form A 9164 or opt for paper copies at a fee. Upon processing, the DPMA provides a confidential access code for retrieval of the documents via DAS.

On October 31, 2024, the European Commission fined Teva Pharmaceuticals €462.6 million for abusing its dominant market position to delay competition against its multiple sclerosis drug, Copaxone. The Commission determined that Teva misused the patent system by filing multiple divisional patents to extend Copaxone’s exclusivity and engaged in a systematic campaign to spread misleading information about a competing glatiramer acetate product, thereby hindering its market entry. This decision underscores the EU’s commitment to maintaining competitive markets in the pharmaceutical sector, ensuring affordable drug prices, and fostering innovation.

The Unified Patent Court’s Düsseldorf Local Division ruled that Aarke AB’s “Carbonator Pro” infringed SodaStream Industries Ltd.’s European Patent EP 1 793 917, which pertains to a device for carbonating liquids with pressurized gas. The court interpreted the term “flask” in the patent claims broadly, encompassing Aarke’s design despite differences from SodaStream’s illustrations. Aarke’s defense, invoking the “Gillette defense”—asserting that their product mirrored prior art and thus couldn’t infringe a valid patent—was rejected, as Aarke hadn’t filed a counterclaim challenging the patent’s validity. Consequently, the court granted SodaStream a permanent injunction against Aarke’s product in seven UPC member states, reinforcing the importance of precise claim interpretation and the limitations of the Gillette defense in infringement-only proceedings.

Gibson has issued a cease-and-desist letter to 16 Creative, the company behind the newly launched Trump Guitars, alleging that the design of their electric models infringes upon Gibson’s protected Les Paul body shape. The Trump-endorsed guitars, marketed as the “only guitar officially endorsed by President Donald J. Trump,” feature designs with slogans like “Make America Great Again” and are priced up to $11,500 for autographed versions. Gibson, known for vigorously protecting its intellectual property, has previously taken similar legal actions against other manufacturers to safeguard its iconic designs.

Key Insights on IP Management: Interview with Prof. Dr. Martin Bader

In a recent episode of IP Fridays, I had the pleasure of interviewing Prof. Dr. Martin Bader, an esteemed expert in intellectual property (IP) management and Professor of Technology and Management at the Technical University in Ingolstadt, Germany, as well as an Adjunct Professor at McGill University, Canada. Over his extensive career, Prof. Bader has consulted numerous companies, authored a standard book on patent management, and shared his expertise on navigating IP challenges in today’s dynamic business environment. Here are the key takeaways from our conversation:

1. The Growing Importance of Innovation for SMEs

Prof. Bader emphasized that medium-sized enterprises (SMEs) are under increasing pressure to innovate. Customers are less willing to pay premium prices, and SMEs face fierce competition from global players, particularly from emerging markets like China and India. This situation is compounded by technological shifts, such as digitalization and artificial intelligence (AI), which require companies to rethink their value chains and adapt their IP strategies accordingly.

For instance, SMEs in engineering must shift focus from traditional hardware protection to safeguarding services and software. Companies that fail to adapt risk losing ground to competitors who understand the new value drivers.

2. Overcoming the Challenges of IP Collection and Management

One striking insight was the difficulty SMEs face in identifying and managing IP effectively. Prof. Bader noted that many potential inventors within companies don’t even realize the value of their innovations, especially in areas like software development or new business models. Without an IP-savvy management team, companies may miss out on critical opportunities.

Large corporations often struggle with similar challenges, particularly in global organizations where identifying inventors across departments and geographies is daunting. Prof. Bader stressed the importance of fostering an internal culture that encourages innovation and supports IP awareness across all levels of the organization.

3. Lessons from 20 Years of Patent Management

While the fundamentals of IP strategy have remained consistent—focusing on strategy, implementation, and execution—the dynamics of value creation have shifted dramatically. Prof. Bader highlighted that companies now need to integrate IP into agile project teams and adapt their processes to keep up with technological advancements, such as AI-driven innovations.

He also warned against relying entirely on external law firms for IP management. While external advisors are valuable, companies must build internal IP competencies to effectively steer their strategies and ensure alignment with long-term goals.

4. Prof. Bader’s Top Three Tips for SMEs

For medium-sized companies looking to improve their IP portfolios, Prof. Bader offered the following advice:

5. What Investors Look for in IP

Investors and corporations evaluating startups place significant importance on IP. Prof. Bader pointed out that beyond having patents, the strength and relevance of those patents to the market and competitors are crucial. Investors also value teams with IP expertise and strategies that align with their business models. Startups without a strong understanding of their IP landscape may face challenges in attracting serious investment.

Final Thoughts

Prof. Bader’s insights underscore the evolving nature of IP management and the need for companies to stay proactive and adaptive. SMEs, in particular, must recognize the importance of IP as a driver of value creation and competitiveness. By building internal capabilities, focusing on where value is created, and aligning IP strategies with business goals, companies can position themselves for success in today’s fast-changing market.

If you’d like to learn more or connect with Prof. Martin Bader, he’s available on LinkedIn. For the full interview, tune in to the latest episode of IP Fridays.

Transcript:

Dr. Rolf Claessen: Today’s interview guest is Professor Dr. Martin Bader. He is a Professor of Technology and Management and Entrepreneurship at the Technical University in Ingolstadt, Germany, and an Adjunct Professor at McGill University in Quebec, Canada. He is the founder of BGW IP in St. Gallen, Switzerland, and Chairman of the Supervisory Board of BGW Management Advisory Group in Switzerland. Before that, he held several industry positions at MTU, ABB, Siemens, and Infineon, where he served as Vice President and Chief IP Counsel. Most importantly, he is an expert in IP management. Thank you very much for being on the show.

Prof. Martin Bader: Yeah, thank you for your invitation.

Dr. Rolf Claessen: You are the expert, in my view, in patent management, and you are the author of the standard book on patent management, now in its fifth edition. For over 20 years, you’ve been distilling advisory and research insights into practical takeaways and consulting with many companies in this field. What are the top challenges for medium-sized technology-driven companies, let’s say with 500 employees, compared to the top challenges for large corporations?

Prof. Martin Bader: Thank you for the introduction and the first question. The challenges for SMEs today are significant. One major challenge is innovation. European SMEs, in particular, are under pressure to remain innovative. Customers no longer want to pay top prices for top quality, which increases the need for these companies to innovate continuously. This challenge is compounded by technological changes, like digitalization, which forced many SMEs to rethink their value chains and adapt their IP strategies. For instance, a shift from protecting static machines to focusing on services and software has been a major change.

Additionally, globalization has brought increased competition from emerging countries like China and India, adding further cost pressure, particularly for Swiss companies dealing with unfavorable currency exchange rates. Compared to large corporations, SMEs face a more significant struggle in maintaining a strong IP position while managing resources efficiently. This includes challenges in identifying inventions, particularly in new areas like digitalization, where traditional R&D methods might not capture the full spectrum of innovation happening in software or services.

Dr. Rolf Claessen: What do you think about collecting ideas or new inventions—do you think it is more difficult for smaller companies or for large corporations?

Prof. Martin Bader: I have a quote from a global corporation executive who said, “You don’t know how lucky you are if you know where your inventors are.” The challenge lies in finding inventors and inventions that may not be obvious, especially in areas like software development or new business models, where employees might not traditionally think of themselves as contributors to IP. This issue is compounded by a lack of IP-savvy management, which may miss out on opportunities in these emerging areas.

Dr. Rolf Claessen: What are the topics that have remained the same in IP management over the past 20 years, and what has changed the most?

Prof. Martin Bader: The foundational structure, based on the St. Gallen Management Model—strategy, conceptual, and implementation levels—has stayed consistent. However, the main change is that SMEs have become more familiar with basic IP tools, like patents, trademarks, and trade secrets. Yet, as value creation shifts from traditional engineering to software, services, and systems, SMEs need to adapt their IP strategies to these new realities. Companies also need to be proactive in integrating IP functions into agile project teams and ensuring they keep up with technological advancements, such as AI, which require both internal expertise and efficient use of external advisors.

Dr. Rolf Claessen: What are your three most important tips for medium-sized companies to improve their IP portfolios and IP management?

Prof. Martin Bader: First, take IP seriously. Management must understand both risks and opportunities, and not just view IP as a cost. Second, focus on protecting where value is truly created—this may now be in services or software rather than traditional engineering. Third, develop an internal IP function with proper processes and organizational structures. Avoid relying entirely on external law firms; instead, actively manage and steer outsourced activities to ensure they align with your company’s strategic goals.

Dr. Rolf Claessen: Thank you for these insights. If listeners want to reach you, where can they find you?

Prof. Martin Bader: The easiest way is via LinkedIn. You can find me under Martin Bader, and my email is also available there or via my affiliations.

Dr. Rolf Claessen: Thank you very much for being on IP Fridays.

Prof. Martin Bader: Thank you for the opportunity to share my thoughts.

https://www.bobross.com

The iconic artist Bob Ross, known for his gentle demeanor and captivating landscapes, continues to inspire millions around the world. Behind the scenes, a dedicated team works tirelessly to protect his legacy and intellectual property (IP). In a recent interview on the IP Friday’s podcast, Joan Kowalski, President of Bob Ross, Inc., shed light on the challenges and strategies involved in safeguarding the valuable IP of Bob Ross.

Joan’s journey with Bob Ross, Inc. began in 1988, a few years after she graduated from college. Her family’s relationship with Bob Ross dates back even further. Joan’s mother attended one of Bob’s painting classes in 1982 and was so impressed that she and Joan’s father partnered with Bob to form a company aimed at promoting his work. This partnership laid the foundation for what would become a global phenomenon.

One of the primary challenges Joan highlighted is the difficulty of protecting the IP of a person rather than a static piece of art or literature. Bob Ross’s image, voice, catchphrases, and even his mannerisms are all integral parts of his brand.

“When your intellectual property is a person… it’s a different ballgame,” Joan explained. Many people mistakenly believe that Bob Ross is a public domain figure, freely available for use. This misunderstanding complicates efforts to control how his image and likeness are used commercially.

The internet has amplified both the reach of Bob Ross’s work and the challenges of protecting it. While online platforms have introduced Bob to new generations, they have also made it easier for unauthorized use of his image and content.

“The internet is both a gem and a curse,” Joan noted. Unauthorized merchandise, digital forgeries, and misuse of Bob’s image in ways that do not align with his values have proliferated online. To combat this, Bob Ross, Inc. employs professional monitoring services and relies on vigilant fans who report infringements.

Joan emphasized the importance of being selective with licensing agreements. Over-licensing can dilute the brand and make it harder to control IP use. Bob Ross, Inc. carefully chooses partners who align with Bob’s legacy and values.

“Be a little bit choosy about who you give a license to… It just makes it easier to protect your assets,” Joan advised.

Emerging technologies like Non-Fungible Tokens (NFTs) and Artificial Intelligence (AI) present new IP challenges. Joan shared that the company was cautious about entering the NFT space, granting licenses only to a select few like Funko to maintain control and monitor the market effectively.

Regarding AI, Joan expressed concern over AI-generated images and voices that mimic Bob Ross without authorization. The company is exploring ways to address these issues, often relying on the right of publicity laws to protect Bob’s likeness.

The right of publicity is a legal doctrine that protects a person’s image, name, and likeness from unauthorized commercial use. Joan mentioned the company’s reliance on this right to enforce IP protections, especially as it pertains to new laws like Tennessee’s “Elvis Act,” which prohibits the unauthorized use of a person’s likeness through AI.

Towards the end of the interview, Joan offered valuable advice for others looking to protect their IP:

Joan and the team at Bob Ross, Inc. remain committed to preserving the integrity of Bob’s work. Their efforts ensure that fans worldwide can continue to enjoy and be inspired by Bob Ross while respecting the legal protections that keep his legacy intact.

“We’ve been at this for 40 years now. I think we’re doing pretty good,” Joan concluded with pride.

The full transcript:

Kenneth Suzan: Our guest today on the IP Friday’s podcast is Joan Kowalski. Joan is the president of Bob Ross, Inc. Bob Ross is a true icon in the art world. He is an American painter, art instructor, and both creator and host of the acclaimed television series, The Joy of Painting, which aired from 1983 through 1994 on public television, both in the United States and in other markets around the world.

Kenneth Suzan: Joan started working for Bob Ross, Inc. in 1988, a few years after graduating from college. She answered 1-800 number phone calls, wrote letters, and processed mail orders with Jane Ross as her supervisor.

Kenneth Suzan: On the official website for Bob Ross at bobross.com, Bob’s legacy is captured best. Quote, “He’s recognized everywhere as one of the most iconic and memorable personalities on public television, with his gentle approach and homespun humor. Bob Ross has taught, inspired, and entertained millions of people around the country and around the world.” Close quote.

Kenneth Suzan: Branding, licensing, monitoring, and enforcement are front and center for Bob Ross, Inc. And I am pleased to have Joan Kowalski on our podcast today so we can get a clear picture on how this innovative company protects the valuable IP of Bob Ross worldwide.

Kenneth Suzan: Welcome, Joan, to the IP Friday’s podcast.

Joan Kowalski: Hi, Kenneth. Thank you for having me.

Kenneth Suzan: Joan, can you tell our listeners a bit about your family, their relationship to Bob Ross, and how you became president of Bob Ross, Inc.?

Joan Kowalski: I sure can. My mother took a painting class with Bob all the way back probably in 1982. She thought he was so remarkable that she went home at night and told my father, “I think I’ve stumbled on something. Let’s have dinner with him one night and talk to him.” And so they went to the local Waffle House because Bob loved eating breakfast for dinner. And they talked a little bit about what they could do to enhance his attendance in his classes. He was teaching up and down the East Coast pretty much. And they just sort of talked, and Bob told them some of his dreams and ideas.

Joan Kowalski: And they decided to form a little company and promote Bob wherever they could. And the classes turned into a television series, turned into what you see today, couldn’t be more proud.

Kenneth Suzan: Let’s dive right into the IP issues, Joan. What are some of the key issues that face your company with respect to protecting Bob Ross’s IP?

Joan Kowalski: There are some challenges, certainly. Most notably when your intellectual property is a person as opposed to a piece of art or a storyline or a book or something like that. When you are protecting a person, it’s a different ballgame, sort of, first of all, in that most people don’t realize that you can protect a person—his image, his name, the way he speaks, his voice, his mannerisms, his little quotes that he uses. These are, in fact, all protectable, which I think the vast majority of the public don’t realize. And that, I would say, is our biggest challenge, is trying to sort of overcome the idea that he’s sort of a public domain figure or he’s something that is sort of free to everyone to use, that his family is the owner, those sorts of things. I think the biggest challenge being protecting a person. It’s called right of publicity, and not everybody understands it.

Kenneth Suzan: What about the internet, Joan? How has the internet impacted brand protection? And what are some of the ways in which you monitor for infringing activity?

Joan Kowalski: So the internet is both a gem, a treasure, and a curse, which is probably true of anybody that has the need to protect intellectual property. You can lose control as it just sort of morphs farther and farther away from the core, and it just sort of becomes its own thing that you then have to try and rein in, explain that this isn’t necessarily—because it’s on the internet, it’s not necessarily available to you for your product. And it doesn’t help also that Bob Ross being just such a gentle, wonderful man, that he still did have in place certain controls over the way that people would portray him, both in life and online. And it’s just hard—I would say, again, the public just doesn’t necessarily understand. And the internet just doesn’t wholly understand that it’s not just a free-for-all.

Kenneth Suzan: What are some of the tools that you use to find out what’s going on? Do you work with services to monitor for infringement? Or do you yourself look at the internet? Or do you have fans that are writing to you? Or is it a combination of all of these things?

Joan Kowalski: So I will tell you that we do use a monitoring organization. And we’ve given them all of our literally hundreds of trademark certificates that we’ve applied for and been granted from around the world. They’ve put all of that into their database, and they go to town. And they start just scrubbing the internet of infringements. And again, right of publicity was sort of a hard concept for us to explain, even to the monitoring system. But they are getting the hang of that as well. And I will tell you also that we get a lot of emails from fans that just want to make sure they know that we are ferocious in making sure that Bob is shown and identified in the best positive light. We get a lot of emails from them saying, “Such and such company is using Bob’s face, and I just don’t like it, and I don’t think you will either.” Our fans are like our little policemen. They know that the goal is to keep Bob as wonderful as he is.

Kenneth Suzan: Now, I’ve seen a lot of merchandise in the last few years in my travels. I assume these were all mostly licensed products. What’s driving this trend? And can you comment on the need to protect IP?

Joan Kowalski: Yes. So the reason for the sudden—maybe in the last, I’d say, five, six, seven years, you may have started noticing a lot of product, a lot of non-painting products like socks and sweaters and t-shirts and puzzles and that sort of thing. And that comes from, first and foremost, Bob experienced an enormous and just lovely resurgence when we allowed Twitch TV, which is a very—it’s something that the kids watch, Twitch TV. They play video games on it. Yes. And they were opening a new channel called Creative, and they wanted to do a Bob Ross marathon to open this channel seven-ish years ago. And it was a huge success, a huge success. And this just created—it didn’t really create Bob Ross fans. They had always been fans. They just didn’t know that half of their friends were already fans and half of their family were already fans. So it’s like fans identified each other with each other, and it just exploded. It just exploded. And in response to that, we did start doing finally what Bob had always wanted, which was to kind of become a household name. And so we started satisfying this younger generation with lots and lots of products that they could enjoy and collect. And today’s younger generation loves to collect things and show them off to their friends and that sort of thing. So that’s where—but then again, that’s where we realized the intellectual property, the images, the name, the voice, his little quotes, that sort of thing started leaving us, started floating out farther and farther from our arm’s reach. This is about the time also that we determined that we could not scour the internet by ourselves anymore, which we had been doing for years, but just in-house, but that we had to sort of find ways to reach out as far as the intellectual property was going to try and maintain. There are certain things that Bob really, really wanted and that sort of fit into this. The one thing that I can think of is he was very, very proud of his painting technique, and he didn’t really want his name being used for other painting techniques. He had worked hard to develop this wet-on-wet technique of his. And so that’s one thing that we were and still are having to really be careful of is that people aren’t using his name and face to show other forms of painting with teachers that are not certified. That sort of thing has really, really, really bothered Bob and made him worry that the technique of his would sort of fade away as more and more people started sort of using his image to describe and teach other methods of painting. So that’s one thing that we’re doing a lot of. The other thing is that because there are not a lot of Bob Ross original paintings for sale out in the wild, we’re now having to deal with forgeries, which is something a little bit new for us. But we’re working on that as well. It’s funny because people that aren’t really used to art and studying various artists—Bob’s fans, by and large, aren’t studying artists and going to museums and that sort of thing. Their approach to art is something they can do themselves. And normally, if they see a painting that’s got a tree in it, they just naturally assume that Bob painted it. And forgers are sort of taking advantage of that. They’ll take a painting that’s not a Bob Ross painting, but it’s a landscape, and they’ll forge his signature on there and try to sell it. So we’re having to work with our monitor and with our attorneys with that particular subject, which is awfully painful. And I think Bob would have been terrified to think that people were doing that.

Kenneth Suzan: And another thing Bob probably would take issue at are these NFTs. I had read a few years ago that NFTs are an issue for your company. What do you do to protect against unauthorized NFTs bearing Bob’s work or his image?

Joan Kowalski: So NFTs are a very interesting animal. Maybe three years ago, they were absolutely the biggest thing ever. And we were very careful to only license maybe two of our licensees with the ability to create one NFT. We were really—mostly for the ability to monitor, we weren’t going gung-ho with NFTs so that we could watch better. And so that we knew that if there were only these two—Funko was one of the companies that we licensed an NFT to—but that we could chase and monitor and make sure that it wasn’t going out of control. So we were very hesitant to sign on with NFT creators. And there were bunches that came to us. And we knew that NFTs, unless it was Funko’s, could be scrubbed from the internet. Now, the good news is—or maybe not good news—but the thing about NFTs is they have quieted down quite a bit now. And they really—our monitor, again, is just in all the NFT marketplaces daily. And they’ve only found one in a very long time that is using our intellectual property to create NFTs. So I think the reason that we were able to sort of maintain and protect in regards to NFTs is because we just didn’t give licenses out like—we had a tight control over the market. Yeah. Very tight control. And I’ll tell you why. It’s because I didn’t understand NFTs enough to feel comfortable to hand out licenses. It’s a silly reason, but I just could never wrap my head around the appeal or how they work and what they were. But boy, we got pressure like crazy. We got inquiries daily to get a license for NFTs. And we just held back on that. And I think in the end, mostly just to be able to control and to watch and be able to see clearly what is the infringement and what has to be studied and that sort of thing.

Kenneth Suzan: Joan, let’s talk about AI because there’s not a day that goes by that I don’t hear something about AI. Are you worried about the threat of AI? Have you seen anything yet with respect to Bob’s image and likeness and voice? What are your plans in dealing with AI?

Joan Kowalski: I think everybody’s a little nervous about AI. And it could also be because, again, I don’t think we have a full understanding of it. I only know that we’re being infringed on in regards to AI when I see it. Otherwise, I wouldn’t be able to explain it to you from the ground up because it’s just still very complicated in my mind. But again, with AI—and we are seeing some images that are being created of Bob. Lately, we’ve been seeing a lot of pictures of Bob looking like he’s been beat up and bleeding and black eyes and cuts on his face and that sort of thing. And that’s when I know that AI has been in play because it’s clearly not real, but it sure does look like him. So there is fear always in that way. It’s not like it used to be where you could just tell automatically that this was a picture that was taken from somewhere and used for something, end of story. But now with this, there’s—and again, I think it has to do with just not handing out licenses right and left and worrying about the consequences later. We’ve been approached by lots of entities that we’ve rejected a licensing opportunity just because the protection—the more you give out, the more you’re having to monitor and protect. So we’re a little bit choosy, and I think we’ll be the same where AI is concerned if it’s controllable. Again, I have to say that with us having the protective tool of right of publicity, it does help that it’s much more definable that the person, if used in commerce—and Bob had granted right of publicity to his company—that you can more quickly and easily identify AI fake voice sounds, fake signatures, fake faces, AI-generated sort of things that normally, if it’s a person and you’ve got right of publicity, it’s an easier go to attempt to protect and enforce and litigate if needed.

Kenneth Suzan: Earlier this year, Joan, in March, the state of Tennessee signed into law the Ensuring, Likeness, Voice, and Image Security Act, or known as the Elvis Act, which is designed to protect musicians from the unauthorized use of artificial intelligence. In particular, this state law prohibits people from using AI from mimicking an individual’s voice without first obtaining their permission. Violation carries a Class A misdemeanor under Tennessee law, and civil actions can also be filed. Your thoughts about this new law?

Joan Kowalski: I actually, when I heard about it, I freaked out a little bit because it’s almost identical to what it is that we’ve been able to protect through right of publicity. Voice—people don’t understand that your voice is still yours. It is protectable, depending on how you do that, whether the person is living or deceased. And it’s very close. I’ve read a little bit about it. And it’s just sort of very close to what we’re dealing with protecting Bob Ross, the full person. And I think that the idea that you don’t have to sort of splice away and explain using somebody’s voice or mimicking somebody’s voice is really the same as using somebody’s face or name. There isn’t any—if protected properly and if given the rights to the certain attributes of a human, it makes it just a lot easier moving forward.

Kenneth Suzan: But with respect to the right of publicity, Joan, I understand back in 2018 that your company ran into a challenge with respect to the right of publicity. What was that challenge? And can you comment on how that was resolved?

Joan Kowalski: We were challenged in 2018 simply because of, again, the public not understanding right of publicity. And by public, I mean that one of Bob’s family members didn’t understand Bob’s company and what he had set up within his corporation that would then carry us after his death into being able to, in his honor, commercialize his features, his being. And again, I think because of what I said at the top of the hour, it’s a hard concept unless you really understand it. So the family member just did sort of naturally assume that Bob being his relative and a lot of the public behind him thinking that these Bob Ross attributes would belong to Bob’s family. Now, the part that was missing was that Bob had already granted the rights of publicity to his company that he and three other partners—his wife and my parents—had already granted to the corporation back in the 1980s that he wanted and he knew. He knew that the company could do what he wanted once he died. And this is the reason that he granted these rights to the company so that we could continue. We’ve been at this for 40 years now. I think we’re doing pretty good. Do you agree?

Kenneth Suzan: Oh, yes. No, I’ve been a fan of Bob Ross for many, many years. So it’s certainly an honor to talk with you.

Joan Kowalski: That is wonderful.

Kenneth Suzan: We’re coming up towards the end of our interview today. But I was wondering, can you provide to our listeners any best practices for protecting IP? What should they be doing? Are there things that you do regularly that you could share with them?

Joan Kowalski: I would say I have two things, and I’m so glad you’re asking. The first thing being to be a little bit choosy about who you give a license to. And not because you do or don’t like the product, or do or don’t like the company, or whatever. But it just makes it easier to protect your assets when you are very diligent in who you give a license to. If you start sending licenses to everyone that inquires, it just gets farther and farther and farther away from you. The second thing I would suggest is don’t try to protect everything yourself. We did try to do that for years. And it just—something that goes out into the internet just multiplies like crazy. You need a professional monitor to help with that.

Kenneth Suzan: Very, very important words of wisdom. Joan, I want to thank you so much for spending time with us today on the IP Friday’s podcast. This has been fascinating. And I thank you for your time today.

Joan Kowalski: Thank you very much. I enjoyed it.