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

Rolf Claessen and Ken Suzan

intellectual property including trademarks, patents and desgins – the latest news, useful tools

  1. 12/26/2025

    Valuation of Intellectual Property Rights – Damages in Infringement Cases – Interview with Brian Buss – Happy Holidays! – IP Fridays – Episode 170

    Brian is: Managing Director, GlassRatner LinkedIn bio: https://www.linkedin.com/in/brianbuss I am Rolf Claessen and my co-host Ken Suzan and I are welcoming you to episode 170 of our podcast IP Fridays! We also want to wish you a happy holiday season and a successful year 2026! Today’s interview guest is Brian Buss. He is the managing director of GlassRatner and my co-host Ken Suzan talks with him about the valuation of intellectual property rights and damages in infringement cases. But before we jump into the interview, I have news for you! A US start-up called Operation Bluebird is trying to take over the “Twitter” trademark. It has asked the USPTO to cancel Twitter word marks, arguing that Elon Musk’s company X no longer uses them after the rebrand. Led by a former Twitter trademark lawyer, Operation Bluebird also filed its own “Twitter” trademark application. Commentators note that X could face challenges defending the legacy marks if they are truly no longer in use. In parallel, the US debate on patent quality and review procedures is intensifying. The USPTO proposed controversial rule changes that would restrict Inter Partes Review (IPR). The proposal triggered substantial backlash, with more than 11,000 public comments submitted—over 4,000 of them via the civil liberties group EFF. In the EU, a major trademark reform will take effect on 1 January 2026. It aims to simplify procedures, recognize new types of marks (including hologram, multimedia, and motion marks), and make fees more SME-friendly (e.g., lower base fees for the first class and discounts for timely renewals). Opposition procedures will be further harmonized across the EU, including a mandatory “cooling-off” period, so mid-sized brand owners should adjust filing and monitoring strategies accordingly. The Unified Patent Court (UPC) continues to see strong uptake, especially in Germany. In the first 18 months since its launch on 1 June 2023, well over 900 cases were filed, with German local divisions (Munich, Düsseldorf, Mannheim, Hamburg) leading in patent actions. While many early cases were filed in German, English now dominates as the main language of proceedings. The court has largely met its timelines, with oral hearings typically held within 12 months of filing. China has reached a milestone in its patent system: for the first time, a country has surpassed 5 million active invention patents. CNIPA emphasizes a strategic shift from “quantity to quality,” citing growth in “high-value” patents and higher commercialization rates for university inventions. China has also led global PCT filings for six consecutive years—signals of rapid technological progress relevant to IP planning for German SMEs. On 4 December 2025, the USPTO issued new guidance on “Subject Matter Eligibility Declarations.” These declarations allow applicants to submit additional evidence to support patent eligibility for emerging technologies such as AI systems and medical diagnostics, aiming to reduce the risk that breakthrough inventions are excluded from protection under strict eligibility case law. In December, the European Patent Office (EPO) introduced new patent-quality measures. Third parties can now submit observations on published applications or granted patents via a simplified online form. These Third-Party Observations—supported by evidence and even filed anonymously—go directly to examination teams to flag potential obstacles early. The Interview with Brian Buss: Ken Suzan interviews Brian Buss, a valuation and damages expert who describes his work as “financial detective” work: identifying what intellectual property and other intangible assets are worth and how they translate into measurable economic benefits such as sales, profit, earnings, or cash flow. Buss emphasizes that “IP” should be understood broadly, not only as formal rights (patents, trademarks, copyrights), but also as brands, technology portfolios, internet and social media assets, know-how, and other business intangibles that help generate economic value. A central point is that IP is often a company’s most valuable resource but is rarely measured well. Buss cites a “value gap” he observed in middle-market public companies: market capitalization often exceeds the asset values shown on balance sheets, and much of the gap is explained by intangible assets and IP. He argues that valuation helps companies understand ROI on IP spend (prosecution, protection, enforcement) and supports better strategic decision-making. He outlines common scenarios that trigger IP valuation: internal management needs (understanding performance drivers), disputes about resource allocation (e.g., technology vs. marketing), external events (M&A, licensing, partnerships, franchising, divestitures), and pricing strategy (how exclusivity supported by IP should affect product/service pricing). On “how” valuation is performed, Buss summarizes the three standard approaches—cost (replacement/replication cost), market (comparable transactions), and income (present value of future benefits). He adds that strong IP valuation requires integrating three dimensions of analysis: financial factors (performance data and projections), behavioral factors (customer demand drivers, perceptions, brand recall, feature importance), and legal factors (registration/enforcement history and competitive IP landscape). For practical readiness, he advises companies to improve data discipline: maintain solid books and records; develop credible budgets, forecasts, and business plans; document marketing activities; and actively collect/monitor website and social analytics (e.g., traffic sources, engagement). He stresses that these datasets inform valuation even for technology assets like patents, because they reveal whether protected features are actually marketed and valued by customers. A concrete example is domain names, which he frames as “virtual real estate.” In due diligence for a domain sale, he would focus on analytics showing whether the domain itself drives traffic (direct type-ins, branded search terms, bookmarks) versus traffic driven by other marketing efforts. The key question is whether the address is known and used as a pathway to the business. In closing, Buss argues that while gathering the necessary information requires effort, the investment typically pays off through greater awareness of the most valuable assets, better strategic decisions, and stronger support for growth opportunities. He presents IP valuation as a virtuous cycle of information, insight, and improved decision-making—summed up in his recurring theme: knowledge of IP value is “power” to increase business profitability and enterprise value. Here is the full transcript: Ken Suzan: Our guest today on the IP Fridays podcast is Brian Buss. Brian is a managing director with Glass-Rattner Advisory and Capital Group. Brian provides financial analysis, corporate finance, and expert testimony around the world. Ken Suzan: Mr. Buss provides strategic advice for owners of intellectual property portfolios, transactional services such as acquisition due diligence and purchase price allocation, and valuation services for trademarks, patents, copyrights, brand assets, trade secrets, technology assets, and intangibles. Ken Suzan: During his career, Mr. Buss has provided valuation opinions and financial analysis in business disputes and in transactions, and he has been retained as a testifying expert and consulting expert in federal court, state courts, and arbitration proceedings. Ken Suzan: As an expert, Mr. Buss has provided over 100 expert opinions, served as an expert witness at trial and deposition, and has been published in numerous journals and publications. He is also a participant in the International Task Force on Intellectual Property Reporting for Brands. Ken Suzan: Brian holds an MBA from San Diego State University and a bachelor’s degree from Claremont McKenna College. Welcome, Brian, to the IP Fridays podcast. Brian Buss: Thank you, Ken, for having me. I appreciate the opportunity. Ken Suzan: Excellent, Brian. Can you tell our listeners a little bit about your professional background and what you do in the world of IP? Brian Buss: Sure. I’m a valuation professional and an economic damages expert. Most of my work involves valuing intellectual property and intangible assets and, in litigation contexts, assessing economic damages—often related to IP disputes. My role is frequently to translate legal or technical issues into financial outcomes. Ken Suzan: When people hear “IP,” they often think patents, trademarks, and copyrights. In your work, how broadly do you define intellectual property and intangible assets? Brian Buss: I define it very broadly. Of course, there are the formal rights—patents, trademarks, copyrights—but there are many other intangible assets that drive value: brand reputation, customer relationships, proprietary know-how, trade secrets, data, software, domain names, social media assets, and the systems and processes a business builds over time. All of those can create economic value, even if they’re not always captured well on a balance sheet. Ken Suzan: Why is IP valuation important for companies—especially mid-sized businesses that may not have a large in-house legal or finance team? Brian Buss: Because IP and intangible assets can be a large portion—sometimes the largest portion—of what makes a business valuable, yet they’re often not measured or managed with the same discipline as tangible assets. Valuation can help companies understand what is actually driving revenue, profit, and enterprise value. It can also help them justify investment in IP creation, protection, and enforcement, and it can support s

    29 min

  2. 11/28/2025

    The Current State of the Unified Patent Court (UPC) – Interview With Prof. Aloys Hüttermann – Comparison With the US and China – Strategies for Plaintiffs and Defendants – Learnings From Key Cases – Cross – Border Litigation With the UPC

    I am Rolf Claessen and together with my co-host Ken Suzan I am welcoming you to episode 169 of our podcast IP Fridays! Today’s interview guest is Prof. Aloys Hüttermann, co-founder of my patent law firm Michalski Hüttermann & Partner and a true expert on the Unified Patent Court. He has written several books about the new system and we talk about all the things that plaintiffs and defendants can learn from the first decisions of the court and what they mean for strategic decisions of the parties involved. But before we jump into this very interesting interview, I have news for you! The US Patent and Trademark Office (USPTO) is planning rule changes that would make it virtually impossible for third parties to challenge invalid patents before the patent office. Criticism has come from the EFF and other inventor rights advocates: the new rules would play into the hands of so-called non-practicing entities (NPEs), as those attacked would have few cost-effective ways to have questionable patents deleted. The World Intellectual Property Organization (WIPO) reports a new record in international patent applications: in 2024, around 3.7 million patent applications were filed worldwide – an increase of 4.9% over the previous year. The main drivers were Asian countries (China alone accounted for 1.8 million), while demand for trademark protection has stabilized after the pandemic decline. US rapper Eminem is taking legal action in Australia against a company that sells swimwear under the name “Swim Shady.” He believes this infringes on his famous “Slim Shady” brand. The case illustrates that even humorous allusions to well-known brand names can lead to legal conflicts. A new ruling by the Unified Patent Court (UPC) demonstrates its cross-border impact. In “Fujifilm v. Kodak,” the local chamber in Mannheim issued an injunction that extends to the UK despite Brexit. The UPC confirmed its jurisdiction over the UK parts of a European patent, as the defendant Kodak is based in a UPC member state. A dispute over standard patents is looming at the EU level: the Legal Affairs Committee (JURI) of the European Parliament voted to take the European Commission to the European Court of Justice. The reason for this is the Commission’s controversial withdrawal of a draft regulation on the licensing of standard-essential patents (SEPs). Parliament President Roberta Metsola is to decide by mid-November whether to file the lawsuit. In trademark law, USPTO Director Squires reported on October 31, 2025, that a new unit (“Trademark Registration Protection Office”) had removed approximately 61,000 invalid trademark applications from the registries. This cleanup of the backlog relieved the examining authority and accelerated the processing of legitimate applications. Now let’s jump into the interview with Aloys Hüttermann: The Unified Patent Court Comes of Age – Insights from Prof. Aloys Hüttermann The Unified Patent Court (UPC) has moved from a long-discussed project to a living, breathing court system that already shapes patent enforcement in Europe. In a recent IP Fridays interview, Prof. Aloys Hüttermann – founder and equity partner at Michalski · Hüttermann & Partner and one of the earliest commentators on the UPC – shared his experiences from the first years of practice, as well as his view on how the UPC fits into the global patent litigation landscape. This article summarises the key points of that conversation and is meant as an accessible overview for in-house counsel, patent attorneys and business leaders who want to understand what the UPC means for their strategy. How Prof. Hüttermann Became “Mr. UPC” Prof. Hüttermann has been closely involved with the UPC for more than a decade. When it became clear, around 13 years ago, that the European project of a unified patent court and a unitary patent was finally going to happen, he recognised that this would fundamentally change patent enforcement in Europe. He started to follow the legislative and political developments in detail and went beyond mere observation. As author and editor of several books and a major commentary on the UPC, he helped shape the discussion around the new system. His first book on the UPC appeared in 2016 – years before the court finally opened its doors in 2023. What fascinated him from the beginning was the unique opportunity to witness the creation of an entirely new court system, to analyse how it would be built and, where possible, to contribute to its understanding and development. It was clear to him that this system would be a “game changer” for European patent enforcement. UPC in the Global Triangle: Europe, the US and China In practice, most international patent disputes revolve around three major regions: the UPC territory in Europe, the United States and China. Each of these regions has its own procedural culture, cost structure and strategic impact. From a territorial perspective, the UPC is particularly attractive because it can, under the right conditions, grant pan-European injunctions that cover a broad range of EU Member States with a single decision. This consolidation of enforcement is something national courts in Europe simply cannot offer. From a cost perspective, the UPC is significantly cheaper than US litigation, especially if one compares the cost of one UPC action with a bundle of separate national cases in large European markets. When viewed against the territorial reach and procedural speed, the “bang for the buck” is very compelling. China is again a different story. The sheer volume of cases there is enormous, with tens of thousands of patent infringement cases per year. Chinese courts are known for their speed; first-instance decisions within about a year are common. In this respect they resemble the UPC more than the US does. The UPC also aims at a roughly 12 to 15 month time frame for first-instance cases where validity is at issue. The US, by contrast, features extensive discovery, occasionally jury trials and often longer timelines. The procedural culture is very different. The UPC, like Chinese courts, operates without discovery in the US sense, which makes proceedings more focused on the written record and expert evidence that the parties present, and less on pre-trial disclosure battles. Whether a company chooses to litigate in the US, the UPC, China, or some combination of these forums will depend on where the key markets and assets are. However, in Prof. Hüttermann’s view, once Europe is an important market, it is hard to justify ignoring the UPC. He expects the court’s caseload and influence to grow strongly over the coming years. A Landmark UPC Case: Syngenta v. Sumitomo A particularly important case in which Prof. Hüttermann was involved is the Syngenta v. Sumitomo matter, concerning a composition patent. This case has become a landmark in UPC practice for several reasons. First, the Court of Appeal clarified a central point about the reach of UPC injunctions. It made clear that once infringement is established in one Member State, this will usually be sufficient to justify a pan-European injunction covering all UPC countries designated by the patent. That confirmation gave patent owners confidence that the UPC can in fact deliver broad, cross-border relief in one go. Second, the facts of the case raised novel issues about evidence and territorial reach. The allegedly infringing product had been analysed based on a sample from the Czech Republic, which is not part of the UPC system. Later, the same product with the same name was marketed in Bulgaria, which is within UPC territory. The Court of Appeal held that the earlier analysis of the Czech sample could be relied on for enforcement in Bulgaria. This showed that evidence from outside the UPC territory can be sufficient, as long as it is properly linked to the products marketed within the UPC. Third, the Court of Appeal took the opportunity to state its view on inventive step. It confirmed that combining prior-art documents requires a “pointer”, in line with the EPO’s problem-solution approach. The mere theoretical possibility of extracting a certain piece of information from a document does not suffice to justify an inventive-step attack. This is one of several decisions where the UPC has shown a strong alignment with EPO case law on substantive patentability. For Prof. Hüttermann personally, the case was also a lesson in oral advocacy before the UPC. During the two appeal hearings, the presiding judge asked unexpected questions that required quick and creative responses while the hearing continued. His practical takeaway is that parties should appear with a small, well-coordinated team: large enough to allow someone to work on a tricky question in the background, but small enough to remain agile. Two or three lawyers seem ideal; beyond that, coordination becomes difficult and “too many cooks spoil the broth”. A Game-Changing CJEU Decision: Bosch Siemens Hausgeräte v. Electrolux Surprisingly, one of the most important developments for European patent litigation in the past year did not come from the UPC at all, but from the Court of Justice of the European Union. In Bosch Siemens Hausgeräte v. Electrolux, the CJEU revisited the rules on cross-border jurisdiction under the Brussels I Recast Regulation (Brussels Ia). Previously, under what practitioners often referred to as the GAT/LuK regime, a court in one EU country was largely prevented from granting relief for alleged infringement in another country if the validity of the foreign patent was contested there. This significantly limited the possibilities for cross-border injunctions. In Bosch, the CJEU changed course. Without going into all procedural details, the essence is that courts in

    50 min

  3. 10/31/2025

    Interview With Wole Araromi About the Registration and Enforcement of Trademarks in Nigeria – the Future of the PTAB in the US – UPC Anti-Interim-License Injunction – Personal Liability on Patent Infringement Cases – Episode 168 – IP Fridays

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

    24 min

  4. 09/27/2025

    Interview With Prof. Karsten Lemmer – German Aerospace Center DLR – Licensing, Startups and IP Strategy For a Large Research Institution in Germany – IP Fridays – Episode 167

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

    27 min

  5. 08/29/2025

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

    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.

    25 min

  6. 07/25/2025

    Interview With J. Christian Wichard, Deputy Director General at the German Federal Ministry of Justice and Consumer Protection in Germany – History of the Unified Patent Court (UPC) – Important Changes in IP Law in Europe – the EU IP Reform Packag

    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 l

    47 min

  7. 06/27/2025

    AI Tools For IP Lawyers – Cost Savings – Real World Examples – Human Oversight – Interview With Arthur Rothrock and Nicholas Sarokhanian – EPO Enlarged Board of Appeal Decision G1/24 Regarding Patent Claims – USPTO Discontinuing Accelerated

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

    36 min

  8. 05/30/2025

    Interview with Lucy Wojcik, Chief Intellectual Property Counsel at OCADO GROUP – Cross-Border Patent Litigation – In-House Organization of IP Teams – Agile IP – IP Fridays Podcast – Episode 163

    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 c

    46 min
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