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

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.

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.

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 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.

https://www.bobross.com The iconic artist Bob Ross, known for his gentle demeanor and captivating landscapes, continues to inspire millions around the world. Behind the scenes, a dedicated team works tirelessly to protect his legacy and intellectual property (IP). In a recent interview on the IP Friday’s podcast, Joan Kowalski, President of Bob Ross, Inc., shed light on the challenges and strategies involved in safeguarding the valuable IP of Bob Ross. A Family Affair Joan’s journey with Bob Ross, Inc. began in 1988, a few years after she graduated from college. Her family’s relationship with Bob Ross dates back even further. Joan’s mother attended one of Bob’s painting classes in 1982 and was so impressed that she and Joan’s father partnered with Bob to form a company aimed at promoting his work. This partnership laid the foundation for what would become a global phenomenon. The Unique Challenge of Protecting a Person One of the primary challenges Joan highlighted is the difficulty of protecting the IP of a person rather than a static piece of art or literature. Bob Ross’s image, voice, catchphrases, and even his mannerisms are all integral parts of his brand. “When your intellectual property is a person… it’s a different ballgame,” Joan explained. Many people mistakenly believe that Bob Ross is a public domain figure, freely available for use. This misunderstanding complicates efforts to control how his image and likeness are used commercially. The Double-Edged Sword of the Internet The internet has amplified both the reach of Bob Ross’s work and the challenges of protecting it. While online platforms have introduced Bob to new generations, they have also made it easier for unauthorized use of his image and content. “The internet is both a gem and a curse,” Joan noted. Unauthorized merchandise, digital forgeries, and misuse of Bob’s image in ways that do not align with his values have proliferated online. To combat this, Bob Ross, Inc. employs professional monitoring services and relies on vigilant fans who report infringements. Selective Licensing and Brand Integrity Joan emphasized the importance of being selective with licensing agreements. Over-licensing can dilute the brand and make it harder to control IP use. Bob Ross, Inc. carefully chooses partners who align with Bob’s legacy and values. “Be a little bit choosy about who you give a license to… It just makes it easier to protect your assets,” Joan advised. Navigating New Technologies: NFTs and AI Emerging technologies like Non-Fungible Tokens (NFTs) and Artificial Intelligence (AI) present new IP challenges. Joan shared that the company was cautious about entering the NFT space, granting licenses only to a select few like Funko to maintain control and monitor the market effectively. Regarding AI, Joan expressed concern over AI-generated images and voices that mimic Bob Ross without authorization. The company is exploring ways to address these issues, often relying on the right of publicity laws to protect Bob’s likeness. Legal Protections and the Right of Publicity The right of publicity is a legal doctrine that protects a person’s image, name, and likeness from unauthorized commercial use. Joan mentioned the company’s reliance on this right to enforce IP protections, especially as it pertains to new laws like Tennessee’s “Elvis Act,” which prohibits the unauthorized use of a person’s likeness through AI. Advice for IP Protection Towards the end of the interview, Joan offered valuable advice for others looking to protect their IP: Be Selective with Licensing: Choose partners who respect your brand and have values aligned with yours. Professional Monitoring: Don’t attempt to monitor and protect your IP alone. Employ professional services that specialize in IP protection. Educate the Public: Work on informing fans and the general public about the importance of respecting IP laws, especially when it comes to individuals. Stay Informed on Legal Developments: Keep abreast of new laws and regulations that may affect your IP rights, especially with the rapid advancement of technology. Continuing Bob Ross’s Legacy Joan and the team at Bob Ross, Inc. remain committed to preserving the integrity of Bob’s work. Their efforts ensure that fans worldwide can continue to enjoy and be inspired by Bob Ross while respecting the legal protections that keep his legacy intact. “We’ve been at this for 40 years now. I think we’re doing pretty good,” Joan concluded with pride. The full transcript: Kenneth Suzan: Our guest today on the IP Friday’s podcast is Joan Kowalski. Joan is the president of Bob Ross, Inc. Bob Ross is a true icon in the art world. He is an American painter, art instructor, and both creator and host of the acclaimed television series, The Joy of Painting, which aired from 1983 through 1994 on public television, both in the United States and in other markets around the world. Kenneth Suzan: Joan started working for Bob Ross, Inc. in 1988, a few years after graduating from college. She answered 1-800 number phone calls, wrote letters, and processed mail orders with Jane Ross as her supervisor. Kenneth Suzan: On the official website for Bob Ross at bobross.com, Bob’s legacy is captured best. Quote, “He’s recognized everywhere as one of the most iconic and memorable personalities on public television, with his gentle approach and homespun humor. Bob Ross has taught, inspired, and entertained millions of people around the country and around the world.” Close quote. Kenneth Suzan: Branding, licensing, monitoring, and enforcement are front and center for Bob Ross, Inc. And I am pleased to have Joan Kowalski on our podcast today so we can get a clear picture on how this innovative company protects the valuable IP of Bob Ross worldwide. Kenneth Suzan: Welcome, Joan, to the IP Friday’s podcast. Joan Kowalski: Hi, Kenneth. Thank you for having me. Kenneth Suzan: Joan, can you tell our listeners a bit about your family, their relationship to Bob Ross, and how you became president of Bob Ross, Inc.? Joan Kowalski: I sure can. My mother took a painting class with Bob all the way back probably in 1982. She thought he was so remarkable that she went home at night and told my father, “I think I’ve stumbled on something. Let’s have dinner with him one night and talk to him.” And so they went to the local Waffle House because Bob loved eating breakfast for dinner. And they talked a little bit about what they could do to enhance his attendance in his classes. He was teaching up and down the East Coast pretty much. And they just sort of talked, and Bob told them some of his dreams and ideas. Joan Kowalski: And they decided to form a little company and promote Bob wherever they could. And the classes turned into a television series, turned into what you see today, couldn’t be more proud. Kenneth Suzan: Let’s dive right into the IP issues, Joan. What are some of the key issues that face your company with respect to protecting Bob Ross’s IP? Joan Kowalski: There are some challenges, certainly. Most notably when your intellectual property is a person as opposed to a piece of art or a storyline or a book or something like that. When you are protecting a person, it’s a different ballgame, sort of, first of all, in that most people don’t realize that you can protect a person—his image, his name, the way he speaks, his voice, his mannerisms, his little quotes that he uses. These are, in fact, all protectable, which I think the vast majority of the public don’t realize. And that, I would say, is our biggest challenge, is trying to sort of overcome the idea that he’s sort of a public domain figure or he’s something that is sort of free to everyone to use, that his family is the owner, those sorts of things. I think the biggest challenge being protecting a person. It’s called right of publicity, and not everybody understands it. Kenneth Suzan: What about the internet, Joan? How has the internet impacted brand protection? And what are some of the ways in which you monitor for infringing activity? Joan Kowalski: So the internet is both a gem, a treasure, and a curse, which is probably true of anybody that has the need to protect intellectual property. You can lose control as it just sort of morphs farther and farther away from the core, and it just sort of becomes its own thing that you then have to try and rein in, explain that this isn’t necessarily—because it’s on the internet, it’s not necessarily available to you for your product. And it doesn’t help also that Bob Ross being just such a gentle, wonderful man, that he still did have in place certain controls over the way that people would portray him, both in life and online. And it’s just hard—I would say, again, the public just doesn’t necessarily understand. And the internet just doesn’t wholly understand that it’s not just a free-for-all. Kenneth Suzan: What are some of the tools that you use to find out what’s going on? Do you work with services to monitor for infringement? Or do you yourself look at the internet? Or do you have fans that are writing to you? Or is it a combination of all of these things? Joan Kowalski: So I will tell you that we do use a monitoring organization. And we’ve given them all of our literally hundreds of trademark certificates that we’ve applied for and been granted from around the world. They’ve put all of that into their database, and they go to town. And they start just scrubbing the internet of infringements. And again, right of publicity was sort of a hard concept for us to explain, even to the monitoring system. But they are getting the hang of that as well. And I will tell you also that we get a lot of emails from fans that just want to make sure they know that we are ferocious in making sure that Bob is shown and identified in the best positive light. We get 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.

Bio of Tina Dorr Bio of Loretta Freeman In the latest episode of the IP Friday’s podcast, hosts Kenneth Suzan spoke with two distinguished intellectual property (IP) attorneys, Tina Dorr and Loretta Freeman, from Barnes and Thornburg LLP. The discussion provided valuable insights into patent law, focusing on the career paths of the guests, patent marking, virtual patent marking, and the implications of these practices for recovering monetary damages in infringement cases. Career Paths to Patent Law Both Tina and Loretta shared their unique journeys into the field of patent law, emphasizing that many patent attorneys enter the profession as a second or third career. Tina transitioned from a background in science to patent law, driven by a passion for solving business problems and helping clients achieve their goals through legal tools. Loretta, who started as a product development engineer at 3M, discovered her passion for IP while working with attorneys on patentability issues, eventually leading her to pursue a legal career in this field. Both emphasized the importance of a strong technical background for those interested in patent law, but also highlighted the diverse opportunities available in IP law, even for those without a science or engineering degree. Patent Marking and Virtual Patent Marking The conversation then delved into the crucial topic of patent marking, a practice that, while optional, can significantly impact a patent holder’s ability to recover damages in cases of infringement. Tina explained that proper patent marking provides constructive notice to the public that a product is patented, which can allow for the recovery of monetary damages from the date of infringement. She also discussed the legal requirements for both physical and virtual patent marking, emphasizing the importance of consistent and continuous marking to maximize potential damages. Loretta expanded on this by discussing the complexities of virtual patent marking, particularly for companies with large patent portfolios. She highlighted the cost-effectiveness and flexibility of virtual marking but warned of the challenges in maintaining accurate and up-to-date patent information on a dedicated website. Both guests stressed the importance of coordination between legal teams, R&D, and management to ensure that patent marking is handled correctly, thereby reducing the risk of false marking and ensuring compliance with legal standards. Monetary Damages in Patent Infringement Cases The discussion also covered the types of monetary damages available in patent infringement cases, with Tina explaining the three main categories: reasonable royalties, lost profits, and triple (triple) damages. She noted that while calculating these damages can be complex, they can range from thousands to billions of dollars, depending on the case. The importance of proving willful infringement for obtaining triple damages was also highlighted, with Tina emphasizing the role of patent marking in demonstrating that an infringer had knowledge of the patent. Best Practices and Pitfalls Both Tina and Loretta offered practical advice on best practices for managing patent marking, particularly in the context of licensing and product transfers. They underscored the need for clear agreements on who is responsible for marking in licensing deals and the importance of maintaining accurate records to avoid pitfalls such as false marking. In conclusion, this episode of the IP Friday’s podcast provided a comprehensive look at the strategic importance of patent marking and the potential financial implications in IP law. The insights shared by Tina Dorr and Loretta Freeman are invaluable for businesses and legal professionals looking to navigate the complexities of patent law effectively. Kenneth Suzan: Our guests today on the IP Friday’s podcast are Tina Dorr and Loretta Freeman. Kenneth Suzan: Tina is a partner in the Atlanta Office of Barnes and Thornburg LLP. She represents clients in a wide range of technology areas, including chemical, material, life science, mechanical, aerospace, and semiconductor technologies, including those within batteries, as well as water treatment, fibers and textiles, pharmaceuticals, apparel, consumer products, nutritional supplements, food and beverage, and construction. Kenneth Suzan: Tina holds a BS in Biology summa cum laude from the University of Georgia, a PhD in Chemistry and Biochemistry from the Georgia Institute of Technology, and a JD cum laude from Georgia State University College of Law. Also joining us today from Barnes and Thornburg is Loretta Freeman. Loretta is a partner with the firm, and her practice involves virtually all aspects of intellectual property law with particular emphasis on domestic and international patent and trademark procurement. Kenneth Suzan: Her practice includes preparing and prosecuting patent applications in the mechanical arts, design patents, trademark applications, trade dress, and due diligence investigations. Kenneth Suzan: Loretta holds a BS in Chemical Engineering cum laude from Florida A&M University, and a JD from the William Mitchell College of Law. Kenneth Suzan: Welcome, Tina and Loretta, to the IP Friday’s podcast. Tina Dorr: Thanks, Ken. Thanks for having us. Loretta Freeman: Thank you. Thanks so much. Kenneth Suzan: So let’s talk about your backgrounds and your paths to becoming patent attorneys. Any words of wisdom for those interested in following this path? Tina Dorr: Sure, I’ll start. Loretta Freeman: Go ahead, Tina. Tina Dorr: Okay, thanks, Loretta. So, as a patent attorney, almost everyone that becomes a patent attorney does so as a second or third career because I’m sure your listeners know that you have to have a technical background in a science or engineering field. And I would say that if you have a love for science or engineering, you have to do this job as a patent attorney every day. But you really have to also love reading and writing. You have to enjoy those things, and you also have to really enjoy—this is my favorite part of my job as a partner in a law firm—helping people and developing relationships with my clients. And that’s something that takes time and is not something that you have a chance to do very much when you first begin practicing as a junior attorney. You really have to learn how to write the patents, do the work, but ultimately, as you get further in your career, you get to truly become partners with your clients and help them advance their business goals. And we use legal tools that I learned in law school and along the way as an attorney, but really helping people solve their business problems is something that I truly, truly enjoy. And it’s the reason that I am happy that I transitioned from science to patent law. Kenneth Suzan: Loretta, what are your thoughts? Loretta Freeman: Yeah, my path to becoming a patent attorney was quite interesting. And I agree with you, Tina, that most of us who are probably practicing in this field, it’s either a second or third career, right? But that’s certainly true for me because I really didn’t have any knowledge of what intellectual property was when I was doing my undergraduate degree. No one really told me or gave me any information on what this field was at that time. I had no clue until I started working in the industry as a product development engineer at 3M. And working at a company like that, you get exposed to a lot of things. And one of the requirements as an engineer was you had to know the field in which you were developing products. And so we really had an obligation to understand the arts. And that’s where I got exposed to IP, sitting across the table with these attorneys, talking about what it was I was developing in the lab and what we were following on for patentability. It just became a real passion of mine. And I just said, “Wow, this is something else I can do.” And that was my path to becoming a patent attorney—going to law school to take this route. Loretta Freeman: And I think the advice I would just kind of tell people is, for me, practicing in this field is so awesome because not only do you continue to work with a team and inventors and being able to see a variety of things, it’s just so complex. I mean, there’s just so many things that you can do and see as an IP attorney because IP law is so varied. There’s just a lot of things that you can do, either on the patent prosecution side or the litigation side; there’s just a whole gamut there. And so I would just say, even if you don’t have a technical background, if you’re not in the sciences, if you don’t have an engineering degree, IP law is still a field that can be very exciting for you because you can do litigation. And a lot of folks would enjoy that as well, even without having the science background. So that was kind of my path to becoming a patent attorney—just being exposed to it as an engineer working for a major company. Kenneth Suzan: Well, thank you, Loretta and Tina, for sharing your backgrounds. We’re gonna jump now into the substance of today’s podcast, which is in the area of patent marking and virtual patent marking. I know we’ve touched upon this topic in another podcast episode, but we’re gonna go deeper into those issues. We’ll start with Tina today. Tina, what are the basic legal requirements for patent marking and virtual patent marking? Tina Dorr: Thanks, Ken. So, patent marking is optional. It’s not something that’s required by patent owners at all. It’s optional, but by statute, it’s something that gives patent owners the option to provide what’s called notice to the public of their patented products. And so by providing this notice, by marking products or virtually marking them, you provide this notice which allows you, if someone infringes your patent, to recover monetary damages for the infringement that go all the way back to that notice. So while you don’t have to provide this notice, the benefit is that if someone infringes your patent, you can collect damages. And so the statute says that there are two ways to do it. You can provide constructive notice by marking your product itself. And you can either say “patent” or “patent with the patent number” actually on the product. And that is what you want to do if at all possible—mark the product itself. Now, say that, for example, you have a cup with your company name on it and any other writing. If your product has any other writing on it, then the court’s gonna want you to actually provide that notice on the product itself if you’re using constructive notice by marking the product. Tina Dorr: Another way to provide notice is through letting a competitor or potential infringer know in writing. So if you don’t mark your products but you discover someone infringing your patent, you can send them a letter, give them the patent number or a copy of your patent. And that’s another way to provide notice. And then again, potential damages would go back to that if you didn’t mark your products to the timing or the date of that letter. Kenneth Suzan: Sure, sure. No, that’s very interesting. We’re gonna, along those lines, we’re gonna turn to Loretta. Loretta, what factors must be considered when determining whether to use virtual patent marking? Loretta Freeman: Yeah, determining whether to virtual mark and how to use virtual marking can be more complex than you think. And companies should definitely give this some serious thought, especially those companies with large patent portfolios and/or extensive product offerings. In some cases, the expense in marking the product may be disproportionate to the cost of the product itself. So it may be easier and more cost-effective to virtually mark. For example, just think about the expense that can come with modifying your labeling and packaging information or a manufacturing process to change mode tooling in order to reflect a change in the patent information. Loretta Freeman: Of course, there are other things that could be done if the patent marking is included in the tooling. Manufacturers can consider using removable inserts that have the patent marking information on them, which can be easily updated and replaced when needed, rather than having to make an entirely new tool. Loretta Freeman: So there are ways to make this more cost-effective, but you also have the likelihood of needing to scrap old packaging and labeling inventory as you’re trying to maintain accurate patent information. So it’s much easier to update a virtual marking website, and companies can avoid the expense and effort required to update and maintain patent information on products. So e-marking or virtual marking can definitely provide cost-effectiveness, flexibility, and transparency. But if you’re going to virtually mark, companies must ensure that their designated URL remains functional at all times, or you risk the public and potential infringers not being noticed that the products are patented. So the marking system may be a little burdensome to maintain. So you want to consider whether or not your company would be able to commit to keeping such a website updated with the patent information related to each product. Loretta Freeman: And back to what Tina was mentioning as far as marking on the product itself, the size of the product and whether you can physically mark directly on it should also be considered. Some patented parts may be so small that physical marking would be unfeasible or difficult to even read. And in these cases, you might consider virtually marking and perhaps virtually marking the packaging, which is acceptable only if marking the product cannot be done. And in some cases, there are patented products that are enclosed within a larger product and are never seen by the public, right? For example, products such as computer software, which require special considerations. You might want to indicate the patent during startup or include the information in the documentation of the software. You would also want to include the patent marking within links if the software is internet-based. So these are just some factors that you want to think about when you’re considering whether to virtually patent mark. Kenneth Suzan: Thank you, Loretta. Following on our discussion here, I want to talk about some best practices. What are some best practices for virtual patent marking, and what steps can patent owners and their counsel take to develop their virtual patent marking program? Loretta Freeman: I would say for corporations, I like to emphasize having the legal team work closely with management and R&D engineers to identify which products actually fall under the protection of a particular patent. It is important that everyone understands the marking obligations to ensure full compliance with the rules. And so when you work closely together, you can avoid any confusion. And this also will maximize any potential damage awards in cases of infringement. So for sure, one best practice is to just work closely together with your team and making sure that you probably have everything identified. Another one I would just note is having a formal marking program in itself, right? It’s very important to maintain good records. And so having a formal marking program can help with that. And being sure to document its implementation when you actually start this marking program because you want to meet the substantially consistent and continuous aspect of the marking requirement. So having routine monitoring and updating of the URL website is key, as I mentioned earlier, to ensure all the information is accurate and up to date. And you want to indicate on the website when your patent listing was last updated so you can ensure the marking program is consistently followed by manufacturers or licensees, whomever. And so you want to make sure that you’re working closely with those individuals as well. Loretta Freeman: And another thing to consider is whether a single URL is appropriate, right? I mean, if your company has multiple divisions, perhaps consider whether a different URL should be used for each division or business unit or product family or product line. You might have multiple URLs to help with providing the product-to-patent association that’s required under the law. And it also may be very well helpful in making a divestiture. If there’s anything that were to come up in a particular business later, that could be easier for you down the road. Kenneth Suzan: Very, very useful. Yeah. Are there any other things that come to mind in this area? Loretta Freeman: I think from a patent owner’s perspective, I think just maintaining good records to show any changes that are made to the website, the dates that the changes were made, you want to make sure that you keep good records on that. Products, packaging, labeling—all that should be reviewed from time to time to ensure accuracy. Like, you want to make sure expired patents are removed. You want to make sure that new patents are included and that any patents listed do, in fact, cover the marked products. So having this routine audit program in place to monitor and update patent marking may help a manufacturer or company demonstrate that it did not have intent, which is a requirement for proving false marking, to falsely deceive the public and help to avoid penalties associated with false marking. Kenneth Suzan: Very good, Loretta. Very helpful and useful information. So now we’re gonna shift gears and talk about monetary damages. We’ll talk to Tina about that. So Tina, what types of benefits and potential damages could you gain from properly marking? Tina Dorr: Good question, Ken. And we’ve been talking about damages. And so damages—there are several types of damages that can be awarded, and these can be hundreds of thousands, millions, billions of dollars potentially. But the three main types are reasonable royalties, lost profits, and occasionally, triple damages. And reasonable royalties are—everyone’s probably heard this term—the fair market value of a license or a royalty for what your infringer would have paid you to use your patents. So to calculate this—and there are experts and companies that do this kind of thing—it’s very complex, it’s dependent on facts, but it also involves a lot of imagination because to calculate the reasonable royalty, the parties are supposed to go back in time and envision a potential amicable situation prior to any litigation, prior to any infringement, a licensing agreement. And they are to consider the licensing agreement that they would have reached based on factors at that time, such as their mindsets, financial situations, and other similar deals. Tina Dorr: Lost profits is the second type that I mentioned, which would compensate a patent owner for money that they would have made if not for the infringement. So this type of damage requires a showing that your business suffered losses because of the infringement. Tina Dorr: And then the last type is triple damages, and that’s triple money damages—if the defendant’s infringement was willful. So to prove—I think Loretta might’ve mentioned this—to prove that the infringement was willful, intentional, that they knew about the patent, you have to prove those two things: that the defendant knew about that patent (that’s why patent marking is important) and that they copied or tried to design around it so that it was intentional. And so that, of course, is gonna probably only come out during discovery where documents and emails are reviewed. Kenneth Suzan: Thank you, Tina. Now let’s also look at patent infringement. If you’re sued for patent infringement, what steps should you take to determine whether the plaintiff properly marked their patented goods to assess your risk for owing damages? Tina Dorr: Great question. Now, we’ve mentioned a few times that marking isn’t—or maybe I didn’t mention this earlier, I’m not sure if I did or not—but marking isn’t effective until substantially all of the patented products being sold are properly marked. So say that you’re selling some in Georgia and then you’re selling some in California and you’re only marking the products in Georgia for whatever reason. That is not substantially all the patented products. So if you receive a letter—a cease and desist letter, or a complaint for alleged patent infringement—the first thing you want to do, and you can do this informally (of course, this will be done in discovery as well), but you want to look and see that all of the products are consistently marked because if the patent owner has failed to consistently mark, it’s possible that the issue can be decided very early on in summary judgment. Kenneth Suzan: Mm-hmm. Kenneth Suzan: And Loretta, let’s talk about how virtual patent marking is being looked at in the federal courts. How are the federal courts treating virtual patent marking these days? Loretta Freeman: Yeah, I think one of the things—so I was looking at this question, and I really just wanted to focus on the liability for false marking, right? And just making people aware of this liability because marking a product with a patent that does not cover the product can create liability for false marking. And the courts really view that quite seriously, as well as marking a product with a patent number without consent from the patent owner or marking an unpatented product or marking a product “patent pending” when there is no patent pending, right? So there are certain liabilities that you can be at risk of if you do any of those things. And marking a product with an expired patent is no longer considered false marking. A very famous lawsuit involved false marking with expired patents, but the courts eventually found no violation of patent marking laws because there was no intent to deceive. And so Congress amended patent laws under the AIA in 2011 to exclude expired patents for false marking. In addition to this, false marking suits can no longer be filed by ordinary citizens. Only the government can pursue false marking claims, and as such, these suits have dropped off significantly. But I think having a routine audit program can help show that there was no deceptive intent. And so you can kind of move yourself away from these types of risks. Kenneth Suzan: Very, very helpful information indeed. Tina, if you sell or license a patent, who is responsible for marking? Tina Dorr: Great question. And this issue comes up all the time. So a significant problem can arise when products are sold or entire businesses are acquired or divested by a device maker and patent owner. And when a patent or patented device is transferred between entities, it is important in that deal to identify who has the responsibility to maintain the marking. Because courts are very clear that the law requires substantially all products to be marked and that, as Loretta mentioned, the marking is substantially consistent and continuous. And this holds true with licensing too. So if a patent owner licenses a patent to a licensee, in order to maintain that consistency in that licensing agreement, it needs to be clear who is going to maintain that mark. And there’s some tension there because, for example, if you’re licensing a patent, of course, the licensee may not wish to have that if it’s virtually marked with the patent owner’s URL website, which is probably going to have its name on that website. That licensee probably doesn’t want that patent owner—who could be a supplier competitor—on their product. But again, it’s really important that those deal lawyers are working closely with IP lawyers together to make it very clear who’s going to continue to and how that marking is going to continue to ensure that the marking is substantially consistent and continuous. Kenneth Suzan: Very, very good. So we’re coming up near the end of our podcast today. We have one final question that is for Loretta. Loretta, what are some pitfalls and uncertainties around virtual patent marking that you can share with our listeners? Loretta Freeman: I think, well, there could be a few things, but I want to highlight one for sure that we’ve talked about already. And it’s mostly around the difficulty of linking patents to products and making sure that you have that accurately when you virtually mark. It is so important to have your legal team working closely with your R&D team and management to ensure that you are marking your product with patents that cover the product to provide constructive notice, which may allow collection of higher damages in infringements. I mean, it just really starts there, right? Incorrect patent marking can make a manufacturer liable for false marking. And ineffective patent marking requires routine monitoring and updating to ensure the marking is accurate. So you want to make sure that you have an effective marking system and routine to ensure that you don’t fall into these pitfalls of not having your website accurate and up to date and actually available for those that you’re trying to put on notice. Kenneth Suzan: Very, very helpful. Tina, do you have any comments on the pitfalls and uncertainties at all? Tina Dorr: Yeah, I’ll highlight again that, as Loretta mentioned, in many cases, the parties that are responsible for maintaining the virtual patent website and the virtual marking program are their marketing team, and they’re not working necessarily very closely with the innovation team or the R&D team. And maybe they don’t understand the importance. And so I think having regular internal education—and this can come from outside counsel who are, I’m sure, happy to provide a 30-minute lunch and learn on why it’s important to maintain this website and maybe best practices and some of the things that Loretta mentioned to ensure that you’re accurately maintaining the site up to date—and why it’s important. I think understanding that “why” will really help drive and help make that virtual patent marking program robust and continuous. Kenneth Suzan: Excellent. Tina, Loretta, thank you so much for joining us today on the IP Friday’s podcast. This has been fantastic. And we will list in the show notes both of your firm bios if people want to get in touch with you. Thank you both once again. Tina Dorr: Thank you very much, Ken.

Profile of Angelo Mazza Summary of the Most Important Points Introduction: Angelo Mazza, a partner at Gibney Anthony and Flaherty, LLP, is the guest on the IP Friday’s podcast. He specializes in brand protection and enforcement strategies and works extensively with law enforcement on intellectual property (IP) related crimes. Experience with US Customs and Border Protection (CBP): Angelo has over 30 years of experience training over 60,000 law enforcement officials, including US Customs, Border Protection, Immigration and Customs Enforcement, and the FBI. He started working with CBP in the early 1990s, training them on identifying various products and discussing enforcement-related matters. Evolving Threats and E-Commerce: The threats CBP faces have evolved significantly over time, with e-commerce being the biggest game-changer. The volume and type of cargo have increased, and CBP now deals with a much larger scale of goods, including counterfeit and illicit pharmaceuticals. De Minimis and Counterfeit Goods: The de minimis rule, which allows small-value parcels under $800 to pass duty-free, has been exploited by counterfeiters. This has led to a significant number of counterfeit goods entering the US, creating challenges for CBP in identifying and intercepting these goods. Customs’ Efforts and Operations: CBP has become more aggressive in stopping counterfeit goods and illicit pharmaceuticals, conducting operations like Operation Artemis and Operation Apollo. These efforts have led to a decrease in IP seizures as resources focus more on significant threats like fentanyl. Role of Rights Holders: Rights holders can protect themselves by recording their trademarks with CBP, providing training to customs officials, and responding quickly to inquiries about suspicious packages. Live training is preferred for its direct engagement and effectiveness. Success Stories: Angelo shared success stories where CBP’s efforts, in collaboration with HSI, led to the seizure of millions of dollars worth of counterfeit goods and the shutdown of operations exploiting the de minimis rule. US Chamber’s Memorandum of Understanding (MOU) with CBP: The US Chamber has developed an MOU with CBP, allowing brands to share worldwide seizure information, which aids in risk assessment and targeting counterfeit goods. This collaboration includes the donation of technology tools to assist customs in identifying counterfeit products. Full Transcript Introduction: Our guest today on the IP Friday’s podcast is Angelo Mazza. Angelo is a partner with the law firm, Gibney Anthony and Flaherty, LLP, located in New York City. Angelo counsels clients in developing brand protection and enforcement strategies and works extensively with law enforcement on intellectual property related crimes. He has trained over 60,000 law enforcement officials, including US Customs and Border Protection, Immigration and Customs Enforcement, and the Federal Bureau of Investigation. For over 30 years, Angelo has provided training sessions for law enforcement at the federal, state, and local levels through the International Anti-Counterfeiting Coalition and its foundation. As the current director of US training, he is the driving force behind the IACC’s educational materials to assist law enforcement in fighting intellectual property crimes. Welcome Angelo to the IP Friday’s podcast. Experience with US Customs and Border Protection (CBP): Hi Ken, thanks for having me. Great introduction. I should read that more often. Excellent, and for our listeners purposes, Angelo and I have known each other for many years as I first started practicing law with the law firm, Gibney Anthony and Flaherty. So it’s great to be talking to you once again. Glad to be here, Ken. So Angelo, how did you get your start working so much with US Customs and Border Protection, otherwise known as CBP? Well, you know, Ken, it really is funny. You know how sometimes you fall into something? I kind of fell into it. I started doing the training with CBP back in the early 90s. We were going around training them, how to identify a variety of different products, discussing some of the issues we were facing. We would also work with local law enforcement as well in terms of the training. And that evolved over time more and more integrating with what Customs was doing, dealing more on not necessarily specific training, but more enforcement related matters. So now I do interact a lot with CBP on a regular basis. And it’s really fun and interesting. There are a lot of great people that work for the organization. Evolving Threats and E-Commerce: And how have the threats CBP faces evolved over time? What have you seen as the development over the years? Well, you know, that’s a great question, Ken. And I don’t want to date myself. And I don’t say I was there when the first clipper ships were coming across the ocean. But CBP was created as an agency, a revenue agency, right? It was part of US Treasury when it first started out. And the folks there would deal with the merchant ships coming in, imposing the taxes, checking the goods coming in. And it was a pretty straightforward operation. They were built to deal with one ship at a time over the years, you’ve got bigger and faster ships, containerized cargo, air cargo, express consignment cargo. And so what’s happened is that in one way or another, it’s been the volume and the type of cargo that they see that has increased tremendously from the 1780s up until today. And in fact, probably Ken, as you know, working in IP, the biggest game changer is going to be e-commerce. That impacts a lot of what CBP, the threats it’s dealing with and how it’s got to build its response. The response that was good 50 years ago is not gonna work today. De Minimis and Counterfeit Goods: Yeah. And what would you say is the biggest issue? If you had to stack all the issues up side by side, what would be the biggest issue today facing CBP? Let’s go back to e-commerce and its progeny, okay? And with that is de minimis. De minimis is a significant issue that customs is facing now. In fact, there have been a number of press releases and alerts that deal with this specific problem. So in order to help the listeners, the viewers understand this better, let’s take a step back and kind of understand what de minimis is and its impact on the customer. And its impact on the way customs works and the threats that it creates to the health and safety of the public in the US. So de minimis was created to be a catch-all for small value parcels. Now, these are parcels that come in. And at one point it was a $200 threshold. Anything below $200 would pass duty-free. Minor cursory looks at it. Several years ago, that value was increased to $800. So with $800, wow, that’s a, you can squeeze a lot more stuff in it. And the counterfeiters and the bad actors took advantage of this because for them, what’s value? You know, it’s all relative. If they have a thousand counterfeit watches, well, they’re only worth a penny each, right? They’re gonna value them very low or phone cases or any manner of good can be undervalued. So that’s been a problem. So they can shift significant quantities of goods by undervaluing. They can also bring in goods by mislabeling, misidentifying them. So the packages that come in many times may say stuff, gift, or be misidentified entirely. I know there was an example at JFK where items were labeled as low value synthetic diamonds, which of course caught the eye because some of the packages do get checked. Turns out it was a, I think five or $8,000 shipment of genuine diamonds. So obviously in that case, they were trying to evade the duty. So you’ve got people using the system to evade duty. You’ve got people using the system to ship in counterfeit goods. Why? Simply based on the volume of packages that e-commerce has created over time. Customs is looking at, I believe the number is for this fiscal year, they’re gonna look at in the de minimis arena, 1.3 to 1.5 billion packages entering the US. Wow, that’s a huge number. It is you at JFK alone, they see approximately 24% of that number. LAX sees 23%. A quarter billion, a quarter million packages each, at least in those facilities coming through. And these are small parcels. And obviously if you’ve got that many packages, you can’t look at them all. The best you can do is target and they do have risk analysis models, which will look at where the package is coming from, where are they going? Is it a particular region, a particular country? Are there known bad actors that they’ve been tracking? Well, now we’ve talked about it in terms of skipping out on duty. We’ve talked about it in terms of trying to smuggle counterfeit goods into the country. Unfortunately, it’s also a conduit for illicit pharmaceuticals. So the folks who bring you fentanyl have used this as a way to bring in finished fentanyl pills, finished product. They bring in the precursor chemicals. They bring in the pill presses to finish the product all through the de minimis environment. So over the past couple of years, customs has become much more aggressive in trying to stop this. They’ve had a couple of great operations, Operation Artemis, Operation Apollo, which really target the fentanyl product. So what does that mean for everybody else? Okay, so fentanyl is getting a lot of priority. It’s top of the list because of the significant harm it causes to public health and safety. IP is still a priority. Unfortunately, when you’re talking about things that can kill you just by touching a few grains of it versus a counterfeit phone case, then you can see why the numbers for IP seizures are gonna go down, which they have. There have been fewer because the energies have really been focused on the issue of fentanyl. And that’s gonna continue to be the case until it’s brought under control, until they can bring those numbers down. The other thing too that CBP is doing is they are reaching out to the trade community and particularly the customs brokers to remind them on those packages in which a broker is effectuating clearance that they have a responsibility to know their importer and to know the content of those packages to be clear when clearing them to explain what is in the packages, to make sure they are manifested properly because if not, then brokers will be penalized, including ultimately they could lose their licenses if they are committing fraud upon CBP for the entry of the product. Role of Rights Holders: Wow, with such a flood of goods, Angelo, what can rights holders do today to protect themselves in this environment? You know, Ken, it’s gonna be tough. There are no easy fixes to the way in which commerce has shifted to the online environment. People are very comfortable now ordering their goods, going to any site, maybe there are some, they stay away from their little doobies. But in many cases, they don’t think, don’t give it a second thought really, to go online and order and know that their goods are likely coming from a foreign country. So how can a brand try to help customs prevent entry of these goods? Well, obviously the first thing you need to do is record your trademarks. The IPR Enforcement Branch, IPR Enforcement Branch with CBP, they have an online portal, very straightforward to use, very low cost. If you’re a brand, there’s no reason not to record. It is, I believe, $180. The length of the recordation mirrors the length of the trademark. So if you’ve just gotten a new trademark, you’ve got that full time on it. If you’re coming up for renewal, then you will get the renewal period. It applies to copyright as well. What this does, and mind you, there are close, I think last time I looked close to 19,000 active recordations in the CBP portal in IPRIS. And they don’t get to all of them, but the fact that you put it in there, if they see something that is suspicious, they can look up the mark, they can find out who the contact is. You can upload materials to help identify the goods. They can reach out to you. They may follow up. They may be able to make a determination based on those goods. Now that’s the recordation process. You have to go beyond that though, because that can’t stand alone. That’s a great way to get on the radar. To start and be noticed. Then you’ve got to take some additional steps. That’s your first low cost step. Second one would be, think about training. Think about providing training to the folks at Customs. They are the front line at the ports at all the borders. So there are two ways to do that. That is either you can do it online. Customs has a method. You could look it up on their site, and it’ll take you through the steps on setting up the online training for officers, import specialists, fines and penalties folks, for them to be able to understand your product. Now, we like to do, as you mentioned, and that great reading of the bio, that live training is where it’s at. I think after having done both, I do think the live training is better. It’s better because you are directly engaging with the folks at US Customs on a personal level. They’re able to ask you a question in the moment. They’re able to handle the genuine and the counterfeit goods. And you’re able to explain any trends or issues that you’re seeing. And you can go around to the ports. As you mentioned, IECC does have a program where basically on a monthly basis, they will hit one or two ports. In fact, next week, unfortunately, after this broadcast airs, we’re going to have been in San Juan, St. Thomas and Atlanta to conduct training for the folks there. Each of those ports requested the training, and they’re very excited to find out more because there are goods going through all of them, counterfeit goods, which are then available either in a tourist economy setting or they’re coming in via air cargo. Now, the other thing that you can do, you’ve recorded your mark, you’ve done your training. Now, I mentioned before that there’s an opportunity that there is a chance that customs will actually reach out to you for verification about the goods. They may have the taint. Now, they can’t move to seizure unless they have a good reason to do so. And if that’s the case, then you need to respond to those inquiries very quickly. This isn’t, “Oh, I’ll put it off a week or two.” Customs is under certain time constraints in which they have to complete detention runs. They can do 30 days, but then if they’re going to perfect seizure, they need to move to that. And with the volume of goods, the quicker they get goods, either seized or released, then that’s what they have to do. We have a rule here where any time we receive a CBP inquiry for one of our clients, it’s a 24 hour or less turnaround. Even if it’s to the point of just being able to say, “We’ve gotten your inquiry, we’ve got to do some research, we will find it out, we’re going to get back to you,” then that’s what we’ll do. It’s important to acknowledge the work that Customs is doing and to reassure them that you’re on it, that you are going to back up the steps that you’ve taken with some concrete action. Now, remember, there’s one important thing, though, Ken, that comes into play. When you’re providing information to Customs, it should not be a determinative statement. So you cannot say, “The goods are counterfeit.” That’s not what you’re saying. You should say, “The goods are inconsistent,” because the determination as to the legitimacy or counterfeit nature of the goods has to be made by Customs after weighing the information in front of them and that has been provided. So it’s best to stay away from those determinative statements and the inconsistencies should be as to the products where they’ve sent you images or there are samples in some cases. It’s got to be specific to those, not generic statements, because those are easy to knock down. You want statements that apply to the product that you’re dealing with on screen or on hand. Success Stories: And, Angelo, if Customs finds a package that looks suspect, how does the brand owner find out about it? Do they get pictures emailed to them? Are they– or you get phone calls? What’s the process like? OK, good question. So based on the recordation, you have put your contact info in there or the person responsible to work with Customs. We have gotten calls. We have gotten inquiries via email that include images. And then we will sometimes be able to do it based on those images. Other times, we do request additional images of the item to assist in identifying. And sometimes we talk about it over the phone and we’re able to help them. We tell them what routes the goods typically follow or what different items accompany the good in transit. And that helps them make and to discern their decision. Sure. And also maybe even looking out to see who is the sender. Where is it coming from, right? Well, there are certain things they cannot disclose. And they’re not supposed to disclose the sender or recipient to the rights holder. Because the information they can disclose is limited. And that’s why we really focus on those images of the goods. And sometimes those images are fantastic. You can tell with great certainty what you’re looking at. And other times, those images are a little difficult to work with. So we have to make a second request. I always tell the folks at Customs, let’s make believe you’re taking pictures of your family. You want to see it. Well said. We’re getting near the end. I have two more questions. Could you share with me maybe one or two successes briefly that you’ve seen over the years? I think the successes we see in general come from when we’re able to take the information we receive after a seizure is perfected through the seizure notices. And we enter that in the database. We send a C and D. When we’re able to connect that info with a real world brick and mortar target, that is where it’s fantastic. We’ve had instances where CBP sees goods coming in on a constant basis. They make a referral to HSI. They, in turn, open up a case. We have– recently, there was a case that involved well over $15 million of our client’s product being sold by people who were doing small-time importations. This was in a mail facility environment. They were bringing in five, 10, never more than maybe 15 items at a time. But just think, they turned that over the years into $15 million worth of product. Another one that we count as success, customs was seeing goods coming in, going to a particular address in the Carolinas. They alerted HSI. HSI is a very important thing. They alerted HSI. HSI decided to make a controlled delivery. They thought they were going into a house that maybe just had a few items. They were doing mail fulfillment because they were advertising on Facebook. They ended up seizing well over $5 million worth of products on hand, including counterfeit pharmaceuticals, luxury goods, jewelry, a whole host of products. And we were able to find the seizure notices and were able to tell them that, yes, we had sent notice. These people were aware that what they were selling was, in fact, counterfeit. So those are the great cases. Those are what we try to build. We always try to work with law enforcement. That has the greatest impact and sends the strongest message to the counterfeiters that, at some point, we are going to find you. It may not be today or tomorrow, but we’re in this for the long game. US Chamber’s Memorandum of Understanding (MOU) with CBP: So last question for today, Angelo, is that the US chamber has a significant memorandum of understanding with CBP. Can you tell our listeners a little bit about that? OK. Well, Ken, one of the things– and this goes to some of the changes at CBP. I recall when I first started working with customs, the rights holders were in their silo. Customs was over here in their silo. And you didn’t mix. The grains did not mix at all. But what’s happened over the years, I think, based on the changing nature of trade and the need for additional resources, customs has become more amenable to working with industry or its representatives. So what that means in terms of the chamber, they have worked to develop an MOU where brands, rights holders, are able to share worldwide seizure information with CBP. That gets put into their risk assessment models. It gets evaluated. And this may open up, in fact, a whole new range of importers and exporters who they were unaware of previously. So from my understanding, it is leading to some beneficial effects where goods are being seized, being looked at, that were not previously because of the data the companies are providing. This also extends into the donation program where companies can provide their technology tools that can assist customs with identifying product, whether it be barcode readers, RFID readers, all types of different things that companies can be available to custom. I think CBP realizes that the brands do have some of the resources that are needed to simplify the process. I think, too now, customs is looking more at technology, especially the use of AI and identifying goods coming in. Their newest generation of X-ray machines that they use on packages uses AI to discern what is in those boxes based on the algorithms. I mean, some of this is so amazing and so incredible in terms of where we’re going to be in just a few years and the fight against counterfeits and CBP’s role in that. Angelo, times really are changing quickly, and I’m so grateful for the opportunity to speak with you today on the IP Friday’s podcast. Thanks again so much. Thank you, Ken. Thanks for having me. And if anyone has any questions, I’m always free to answer. Thank you. Thank you, Angelo.