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

Rolf Claessen and Ken Suzan
IP Fridays - your intellectual property podcast about trademarks, patents, designs and much more

This podcast covers intellectual property including trademarks, patents and desgins. It is brought to you by Ken Suzan, of counsel and a trademark attorney at the Minneapolis office of Barnes & Thornburg LLP, and Dr. Rolf Claessen, partner at Michalski Hüttermann & Partner, Germany. We will talk about current developments, record interviews with interesting people in this field, and we will introduce you to helpful tools and websites in this field.

  1. 20/12/2024

    Update on IP Laws in Argentina – Interview With Ricardo E. Amigo – the Patagonia Issue – Changes in the Opposition Procedure – Publication of the Book “Marken. Recht. Einfach.” – Happy Holidays! – Episode 159 – IP Fridays Podcast

    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 i...

    31 min

  2. 29/11/2024

    Key Insights on IP Management – Interview with Prof. Dr. Martin Bader – Black Friday Trademarks – Trump Guitars vs. Gibson Les Paul – IP Fridays – Episode 158

    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 Aga...

    44 min

  3. 25/10/2024

    Interview With Joan Kowalski, President of Bob Ross, Inc. – Protection and Enforcement of the Rights of the Famous Painter Bob Ross . Podcast Episode 157 – IP Fridays

    https://www.bobross.com The iconic artist Bob Ross, known for his gentle demeanor and captivating landscapes, continues to inspire millions around the world. Behind the scenes, a dedicated team works tirelessly to protect his legacy and intellectual property (IP). In a recent interview on the IP Friday’s podcast, Joan Kowalski, President of Bob Ross, Inc., shed light on the challenges and strategies involved in safeguarding the valuable IP of Bob Ross. A Family Affair Joan’s journey with Bob Ross, Inc. began in 1988, a few years after she graduated from college. Her family’s relationship with Bob Ross dates back even further. Joan’s mother attended one of Bob’s painting classes in 1982 and was so impressed that she and Joan’s father partnered with Bob to form a company aimed at promoting his work. This partnership laid the foundation for what would become a global phenomenon. The Unique Challenge of Protecting a Person One of the primary challenges Joan highlighted is the difficulty of protecting the IP of a person rather than a static piece of art or literature. Bob Ross’s image, voice, catchphrases, and even his mannerisms are all integral parts of his brand. “When your intellectual property is a person… it’s a different ballgame,” Joan explained. Many people mistakenly believe that Bob Ross is a public domain figure, freely available for use. This misunderstanding complicates efforts to control how his image and likeness are used commercially. The Double-Edged Sword of the Internet The internet has amplified both the reach of Bob Ross’s work and the challenges of protecting it. While online platforms have introduced Bob to new generations, they have also made it easier for unauthorized use of his image and content. “The internet is both a gem and a curse,” Joan noted. Unauthorized merchandise, digital forgeries, and misuse of Bob’s image in ways that do not align with his values have proliferated online. To combat this, Bob Ross, Inc. employs professional monitoring services and relies on vigilant fans who report infringements. Selective Licensing and Brand Integrity Joan emphasized the importance of being selective with licensing agreements. Over-licensing can dilute the brand and make it harder to control IP use. Bob Ross, Inc. carefully chooses partners who align with Bob’s legacy and values. “Be a little bit choosy about who you give a license to… It just makes it easier to protect your assets,” Joan advised. Navigating New Technologies: NFTs and AI Emerging technologies like Non-Fungible Tokens (NFTs) and Artificial Intelligence (AI) present new IP challenges. Joan shared that the company was cautious about entering the NFT space, granting licenses only to a select few like Funko to maintain control and monitor the market effectively. Regarding AI, Joan expressed concern over AI-generated images and voices that mimic Bob Ross without authorization. The company is exploring ways to address these issues, often relying on the right of publicity laws to protect Bob’s likeness. Legal Protections and the Right of Publicity The right of publicity is a legal doctrine that protects a person’s image, name, and likeness from unauthorized commercial use.

    32 min

  4. 27/09/2024

    Interview With Myrtha Hurtado Rivas – General Counsel Brands and Marketing Properties, Anti-Counterfeiting & Licensing at Nestlé – Brand Restrictions, AI Tools Like NES GPT, Fight Against Counterfeit Goods – IP Fridays – Episode 156

    Navigating Brand Restrictions, Sustainability, AI, and Anti-Counterfeiting with Myrtha Hurtado Rivas of Nestlé On this episode of IP Fridays, I had the pleasure of interviewing Myrtha Hurtado Rivas, the General Counsel for Brands, Marketing Properties, Licensing, and Anti-Counterfeiting at Nestlé. Our conversation delved into several pressing issues in the field of intellectual property (IP), including brand restrictions, sustainability claims, artificial intelligence (AI), and anti-counterfeiting challenges. Here are the key takeaways from our engaging discussion: Brand Restrictions: Impact on Businesses and Consumer Choice Myrtha began by explaining brand restrictions, which are often implemented by governments to nudge consumers toward healthier or more environmentally friendly choices. These restrictions can take various forms, such as prohibiting certain branding, implementing traffic light labeling systems (e.g., for sugar or fat content), or even banning toys associated with products, like Kinder Eggs in certain countries. One of the biggest challenges of brand restrictions is the impact on consumer choice and business innovation. Myrtha pointed out that limitations on brand usage, including packaging and advertising, can sometimes inadvertently stifle consumer access to safer products and even hinder efforts to combat counterfeiting. During her recent moderation of a panel on brand restrictions at the International Trademark Association (INTA) annual meeting, Myrtha emphasized that these restrictions are not only a problem for brand owners but also limit consumers’ freedom to make informed choices. Brand restrictions, when applied broadly, also pose challenges for IP professionals trying to maintain consistency across markets, especially in smaller countries where product variations could make it economically unviable to continue offering the same products. Sustainability and Green Claims: Defining the Difference We also discussed the increasingly important topic of sustainability claims and green claims. While these terms are often used interchangeably, there are distinctions—especially in the legal and regulatory frameworks emerging around them. In Europe, for instance, green claims are commonly discussed in the context of a new Green Claims Directive, which governs the kinds of statements companies can make about their environmental impact. Myrtha explained that sustainability claims generally cover a broader range of factors, from how products are manufactured to how waste is managed and how packaging is produced. However, there remains a lack of clarity and uniform regulation across jurisdictions, which can lead to confusion and even legal risks for companies making these claims. At Nestlé, sustainability claims are vetted carefully, and Myrtha’s team plays a central role in ensuring that any statements made are accurate, legally compliant, and aligned with business strategies. The collaboration between IP, marketing, and compliance teams is key in navigating this complex area. AI in Business: From Early Adoption to Everyday Use Nestlé has been a pioneer in using artificial intelligence (AI) in its business processes, especially within Myrtha’s legal and IP teams. Myrtha recounted how she has been using AI tools for years, starting with her time in the pharmaceutical industry, where AI was essential in clinical trials and data gathering. Today, AI tools like Copilot and Nest GPT (Nestlé’s internal AI system) are embedded in many of their day-to-day operations.

    38 min

  5. 30/08/2024

    Virtual Patent Marking – Patent Damages – Interview with Tina Dorr and Loretta Freeman – Amazon Patent Evaluation Express (APEX) Program – IP Fridays – Episode 155

    Bio of Tina Dorr Bio of Loretta Freeman In the latest episode of the IP Friday’s podcast, hosts Kenneth Suzan spoke with two distinguished intellectual property (IP) attorneys, Tina Dorr and Loretta Freeman, from Barnes and Thornburg LLP. The discussion provided valuable insights into patent law, focusing on the career paths of the guests, patent marking, virtual patent marking, and the implications of these practices for recovering monetary damages in infringement cases. Career Paths to Patent Law Both Tina and Loretta shared their unique journeys into the field of patent law, emphasizing that many patent attorneys enter the profession as a second or third career. Tina transitioned from a background in science to patent law, driven by a passion for solving business problems and helping clients achieve their goals through legal tools. Loretta, who started as a product development engineer at 3M, discovered her passion for IP while working with attorneys on patentability issues, eventually leading her to pursue a legal career in this field. Both emphasized the importance of a strong technical background for those interested in patent law, but also highlighted the diverse opportunities available in IP law, even for those without a science or engineering degree. Patent Marking and Virtual Patent Marking The conversation then delved into the crucial topic of patent marking, a practice that, while optional, can significantly impact a patent holder’s ability to recover damages in cases of infringement. Tina explained that proper patent marking provides constructive notice to the public that a product is patented, which can allow for the recovery of monetary damages from the date of infringement. She also discussed the legal requirements for both physical and virtual patent marking, emphasizing the importance of consistent and continuous marking to maximize potential damages. Loretta expanded on this by discussing the complexities of virtual patent marking, particularly for companies with large patent portfolios. She highlighted the cost-effectiveness and flexibility of virtual marking but warned of the challenges in maintaining accurate and up-to-date patent information on a dedicated website. Both guests stressed the importance of coordination between legal teams, R&D, and management to ensure that patent marking is handled correctly, thereby reducing the risk of false marking and ensuring compliance with legal standards. Monetary Damages in Patent Infringement Cases The discussion also covered the types of monetary damages available in patent infringement cases, with Tina explaining the three main categories: reasonable royalties, lost profits, and triple (triple) damages. She noted that while calculating these damages can be complex, they can range from thousands to billions of dollars, depending on the case. The importance of proving willful infringement for obtaining triple damages was also highlighted, with Tina emphasizing the role of patent marking in demonstrating that an infringer had knowledge of the patent. Best Practices and Pitfalls Both Tina and Loretta offered practical advice on best practices for managing patent marking, particularly in the context of licensing and product transfers. They underscored the need for clear agreements on who is responsible for marking in licensing deals and the importance of maintaining accurate records to avoid pitfalls such as fal...

    33 min

  6. 26/07/2024

    The STOPfakes Program of the International Trade Administration (ITA) – Interview With Michelle Sara King – Helping Businesses and Consumers to Deal With Fakes – Episode 154 – IP Fridays

    STOPfakes.gov Information pages of the German Patent and Trademark Office for SMEs Summary and Main Takeaways Episode Overview: This episode features an interview with Michelle Sara King, the intellectual property team lead and senior international trade specialist at the International Trade Administration in the U.S. Department of Commerce. The discussion centers on her role, the initiatives she leads, and advice for businesses on protecting intellectual property (IP) internationally. Main Takeaways: * Role and Responsibilities: * Michelle leads a team focused on protecting U.S. IP rights internationally. * She has extensive experience in IP and international trade, contributing to improved IP enforcement globally. * Key Initiatives: * Stop Fakes Program: Educates businesses, especially SMEs, on protecting their IP. Provides resources, training, and support. * International Collaboration: Works with global partners to enhance IP enforcement, involving negotiations, best practice sharing, and technical assistance. * Challenges in IP Protection: * Evolving IP Threats: New forms of IP theft and counterfeiting emerge with technological advancements, requiring constant updates in strategies. * Complex International Cooperation: Varying levels of IP protection across countries necessitate continuous negotiation and diplomacy. * Advice for Businesses: * Proactivity: Register trademarks and patents in key markets, monitor for infringements, and act when necessary. * Education: Utilize resources like the Stop Fakes program for best practices in IP protection. * Professional Support: Engage experienced IP professionals for guidance and support. This episode highlights the critical work being done to protect intellectual property rights globally and provides practical advice for businesses to safeguard their IP assets. Rolf Claessen: Good afternoon. I am Rolf Claessen, and welcome to IP Fridays. Today, our special guest is Michelle Sara King, the intellectual property team lead, senior international trade specialist, and the Stop Fakes team lead at the International Trade Administration in the United States Department of Commerce. Michelle, welcome to the podcast. Michelle Sara King: Good afternoon. I am Michelle Sara King. I am the intellectual property team lead, the senior international trade specialist, and the Stop Fakes team lead at the International Trade Administration in the United States Department of Commerce. Happy to be here. Thanks, Rolf. Rolf Claessen: So tell us, what is the Stop Fakes program of the US government, and where does it come from? What is the main goal? Tell us more about it. Michelle Sara King: The Stop Fakes program was created by a presidential order in the Bush administration as an opportunity to provide outreach and education about intellectual property to businesses of all sizes as well as consumers. The name of the Stop Fakes program is a bit of a misnomer because it’s focused primarily on education, outreach,

    20 min

  7. 29/06/2024

    Experience With US Customs (CBP) – E-Commerce and the De Minimis Rule For Counterfeit Goods – MOU With US Chamber – Interview With Angelo Mazza – IP Fridays – Episode 153

    Profile of Angelo Mazza Summary of the Most Important Points * Introduction: * Angelo Mazza, a partner at Gibney Anthony and Flaherty, LLP, is the guest on the IP Friday’s podcast. He specializes in brand protection and enforcement strategies and works extensively with law enforcement on intellectual property (IP) related crimes. * Experience with US Customs and Border Protection (CBP): * Angelo has over 30 years of experience training over 60,000 law enforcement officials, including US Customs, Border Protection, Immigration and Customs Enforcement, and the FBI. He started working with CBP in the early 1990s, training them on identifying various products and discussing enforcement-related matters. * Evolving Threats and E-Commerce: * The threats CBP faces have evolved significantly over time, with e-commerce being the biggest game-changer. The volume and type of cargo have increased, and CBP now deals with a much larger scale of goods, including counterfeit and illicit pharmaceuticals. * De Minimis and Counterfeit Goods: * The de minimis rule, which allows small-value parcels under $800 to pass duty-free, has been exploited by counterfeiters. This has led to a significant number of counterfeit goods entering the US, creating challenges for CBP in identifying and intercepting these goods. * Customs’ Efforts and Operations: * CBP has become more aggressive in stopping counterfeit goods and illicit pharmaceuticals, conducting operations like Operation Artemis and Operation Apollo. These efforts have led to a decrease in IP seizures as resources focus more on significant threats like fentanyl. * Role of Rights Holders: * Rights holders can protect themselves by recording their trademarks with CBP, providing training to customs officials, and responding quickly to inquiries about suspicious packages. Live training is preferred for its direct engagement and effectiveness. * Success Stories: * Angelo shared success stories where CBP’s efforts, in collaboration with HSI, led to the seizure of millions of dollars worth of counterfeit goods and the shutdown of operations exploiting the de minimis rule. * US Chamber’s Memorandum of Understanding (MOU) with CBP: * The US Chamber has developed an MOU with CBP, allowing brands to share worldwide seizure information, which aids in risk assessment and targeting counterfeit goods. This collaboration includes the donation of technology tools to assist customs in identifying counterfeit products. Full Transcript Introduction: Our guest today on the IP Friday’s podcast is Angelo Mazza. Angelo is a partner with the law firm, Gibney Anthony and Flaherty, LLP, located in New York City. Angelo counsels clients in developing brand protection and enforcement strategies and works extensively with law enforcement on intellectual property related crimes. He has trained over 60,000 law enforcement officials, including US Customs and Border Protection, Immigration and Customs Enforcement, and the Federal Bureau of Investigation. For over 30 years, Angelo has provided training sessions for law enforcement at the federal, state,

    30 min

  8. 31/05/2024

    Interview With João Negrão – Executive Director of the EUIPO – New Patent Activities at the EUIPO – DesignEuropa Award – EUIPO Strategic Plan – Mediation Center – Short Report From the INTA Annual Meeting in Atlanta – IP Fridays – Epis

    In this interview with Rolf Claessen on the IP Fridays podcast, João Negrão, the executive director of the EUIPO, discussed the office’s recent developments and future plans. Negrão highlighted the conclusion of the consultation phase for the EUIPO’s 2030 Strategic Plan, emphasizing key areas such as financial sustainability, efficiency, effectiveness, and the integration of emerging technologies like artificial intelligence. He noted the challenges posed by political and economic volatility and the expansion of EUIPO’s competencies, including geographical indications. Negrão addressed the potential new role of the EUIPO in handling non-binding essentiality checks for standard essential patents (SEPs), should the proposed regulation be approved. He assured that the EUIPO would adapt to these new competencies using a project management approach. The interview also covered the EUIPO’s new mediation center for IP disputes, launched in November 2023. Negrão explained that while mediation and conciliation have been offered by the Boards of Appeal since 2011, the goal is to expand these services to first-instance proceedings to provide cost-effective and timely alternatives to traditional dispute resolution. Celebrating the EUIPO’s 30th anniversary, Negrão reflected on its growth from a small office to an organization with 1,200 staff members, protecting almost five million trademarks and designs. He cited significant achievements, including the establishment of the Observatory on IP Infringements. The conversation touched on the DesignEuropa Awards, now held annually, which recognize excellence in design across various categories, including industry, small and emerging companies, lifetime achievement, and young designers. These awards aim to promote the design system and celebrate outstanding work. You can apply here: https://www.euipo.europa.eu/en/designs/designeuropa-awards/how-to-apply Negrão discussed the EUIPO’s new competence in geographical indications for craft and industrial products, aimed at protecting local products, promoting quality recognition, and supporting local producers and regions in Europe. He also highlighted the EUIPO’s expanding international cooperation with countries like Ukraine, Moldova, and Georgia, aiming to harmonize IP systems globally and support European businesses by ensuring robust, predictable IP systems in these regions. Finally, Negrão outlined his personal goals for the EUIPO, emphasizing his desire to use his extensive experience to contribute to the office’s further development. He aims to focus on strategic planning, cooperation with national and international IP offices, and addressing issues such as IP infringements and the underrepresentation of women in the IP system. Overall, the interview underscored the EUIPO’s efforts to improve the IP system, embrace new competencies and technologies, and support stakeholders through effective implementation and international cooperation. Key Takeaways: * EUIPO’s Strategic Plan: * The consultation phase for the 2030 Strategic Plan closed recently. * Key focus areas include financial sustainability, efficiency, effectiveness, and leveraging emerging technologies like artificial intelligence. * The EUIPO aims to address challenges such as political and economic volatility and expanding competencies, including geographical indications.

    45 min
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À propos

This podcast covers intellectual property including trademarks, patents and desgins. It is brought to you by Ken Suzan, of counsel and a trademark attorney at the Minneapolis office of Barnes & Thornburg LLP, and Dr. Rolf Claessen, partner at Michalski Hüttermann & Partner, Germany. We will talk about current developments, record interviews with interesting people in this field, and we will introduce you to helpful tools and websites in this field.

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