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

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

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

I am Rolf Claessen and my Co-Host Ken Suzan and I are welcoming you to episode 166 of the IP Fridays Podcast. Today’s interview guest is Joshua Cunnington, who is Managing Associate at Stephenson Harwood in the UK. My Co-Host Ken Suzan talks with him about an update on Trademark Caselaw in the UK, e.g. the Doctrine of Postsale Confusion. Before we jump into the interview, I have news for you The U.S. Patent and Trademark Office (USPTO) has removed more than 52,000 fraudulent trademark applications and registrations from the register. On August 6, 2025, the agency sanctioned a foreign filing firm that had submitted large numbers of applications using forged signatures, fake attorney identities, and manipulated specimens of use. Reports from the United States describe an unusual funding proposal: according to the Wall Street Journal, Commerce Secretary Lutnick is considering imposing a levy of 1% to 5% of a patent’s value on patent owners. This possible “patent-value fee” would raise additional budget funds. Details remain unclear, and the idea is already stirring controversy in the IP community. On August 4, 2025, the USPTO’s patent division issued new guidance on the patent eligibility of AI and software inventions. The “Kim Memo” stresses that examiners should not hastily label software-related claims as abstract ideas. Instead, all claim elements should be evaluated together; where eligibility is uncertain, no Section 101 rejection should be made absent clear exclusionary grounds. In its first costs decision, the Unified Patent Court (UPC) Court of Appeal dismissed Expert klein’s appeal and declined to refer questions to the CJEU. The judges confirmed that applications for costs must be filed no later than one month after judgment and saw no reason to seek guidance from the CJEU. It seems that the Court of Appeal generally rejects the idea that decisions of the UPC could potentially be brought before the CJEU.

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

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

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

My co-host Ken Suzan and I are welcoming you to episode 162 of our podcast IP Fridays! Today’s interview guests are Debbie Hoffman and Anna Mouland and my co-host Ken Suzan talks with them about bequeathing bitcoin, so what happens to cryptocurrency after death? “Bequeathing Bitcoin, Storing and Transferring Cryptocurrency Upon Death” published in the November/December 2024 issue of the American Bar Association Probate & Property Magazine  URL: https://issuu.com/rptelaw/docs/2024-aba-rpte-v38-06-november-december-issue/s/59716998 Debbie Hoffman https://www.linkedin.com/in/debbiekhoffman  Anna Mouland https://www.linkedin.com/in/annam44 https://bequest.com Before we jump into this interview, I have news for you! My book “Marken. Recht. Einfach.“ (which can be translated into something like trademarks in laymen’s terms) entered the bestseller charts of manager magazine in Germany for business books on rank 8! I am very proud and thankful for all the support by so many people, who made this happen! First I want to talk about two recent decisions by the Munich Local Division of the Unified Patent Court (UPC), where the court issued Anti-Anti-Suit Injunctions (AASIs) to prevent defendants from seeking legal orders in U.S. courts that would block European patent enforcement actions. In these cases, the patent holders owned standard-essential patents (SEPs) and had initiated infringement proceedings in Germany. The defendants attempted to obtain U.S. court orders—known as Anti-Suit Injunctions (ASIs)—to halt these European proceedings. The UPC responded by issuing AASIs, thereby prohibiting the defendants from pursuing such U.S. court orders. The court justified its decisions by emphasizing the need to protect the patent holders’ rights to legal recourse under European law and the EU Charter of Fundamental Rights. It also highlighted the urgency of the matter and proceeded without a prior hearing to prevent potential counteractions in the U.S. courts. These rulings align with existing German case law and underscore the UPC’s commitment to safeguarding the integrity of European patent enforcement. For laypersons, an Anti-Anti-Suit Injunction (AASI) is a legal measure used to counteract an Anti-Suit Injunction (ASI). An ASI is a court order that prevents a party from initiating or continuing legal proceedings in another jurisdiction. In this context, U.S. courts issued ASIs to stop European patent enforcement actions. In response, the European court issued AASIs to prevent the defendants from obtaining or enforcing those U.S. court orders, thereby ensuring that European legal proceedings could continue without interference from foreign courts.​ The president of the EPO has submitted his opinion regarding the case G 1 /24 pending before the Enlarged Board of Appeals of the European Patent Office. The President’s submission supports the view that interveners should have full party status, including the right to bring forward new arguments and requests, as long as this does not put other parties at a procedural disadvantage. This case could clarify important aspects of procedural law at the EPO, especially concerning third-party involvement in opposition and appeal proceedings. I just found out in Reuters that Chinese automaker Geely plans to open its pool of battery safety patents to the entire auto industry, the company said at a media event at the Shanghai auto show last Wednesday. Geely said it has obtained more than 1,500 safety patents.  

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

My co-host Ken Suzan and I are welcoming you to episode 160 of the IP Fridays podcast! Today`s interview guest is James E. Malackowski, the founder of Ocean Tomo, in my view the first successful patent auction venue. We talk about monetization and auctioning patents, use of blockchain technology for IP and especially for licensing, the economics of data rights and much more. But before we jump into this interview, I have news for you: The EUIPO and the EPO just released a new study ““Intellectual Property Rights and Firm Performance in the European Union.” on how intellectual property rights (IPRs) boost business performance in the EU. It looks at trade marks, designs, and patents, and shows that companies owning IPRs earn more revenue per employee and pay higher wages. Small and medium-sized enterprises benefit the most, with a 44% increase in revenue per employee compared to firms without IPRs. Yet, fewer than 10% of SMEs use registered IPRs—showing big untapped potential. https://www.euipo.europa.eu/de/news/observatory/epo-and-euipo-study-highlights-the-impact-of-intellectual-property-rights-on-firm-performance-in-the-eu The USPTO has unveiled a new strategy to guide the responsible development of artificial intelligence. This plan aims to clarify patent rules for AI inventions, foster public-private collaboration, and address ethical considerations like transparency and fairness. By creating clear guidelines and balanced regulations, the USPTO hopes to empower innovators and bring more AI-driven solutions to market. This strategy underscores the growing impact of AI on all industries and highlights the USPTO’s commitment to shaping the future of innovation. https://www.uspto.gov/subscription-center/2025/uspto-announces-new-artificial-intelligence-strategy-empower-responsible The European Patent Office (EPO) has introduced a new investor-mapping initiative to strengthen Europe’s innovation ecosystem. By identifying key investors, the project aims to bridge the gap between invention and market, helping inventors and businesses find the right funding and partners. The report introduces a new metric, the Technology Investor Score (TIS), which is the proportion of companies in an investor’s portfolio that have filed patent applications. This effort is designed to boost Europe’s competitiveness and foster greater collaboration across industries, research institutions, and venture capital. https://www.epo.org/en/news-events/news/bridging-gap-mapping-investors-strengthen-europes-innovation-ecosystem In this episode of IP Fridays, I speak with James E. Malackowski, an intellectual property (IP) pioneer best known for founding Ocean Tomo. James shares how Ocean Tomo introduced the world’s first large-scale public auctions for patents, trademarks, and copyrights. He also explains how these auctions helped create market-based “price discovery” for IP assets—something that had never been done so openly before. Beyond auctions, James discusses strategies for CEOs of mid-sized tech companies to extract real value from their R&D and patents. He emphasizes the importance of planning ahead, understanding your own portfolio, and making IP a regular topic at the board level. We also talk about why early, strategic patent filings can protect your company from missing out when others file first. Another major topic is the potential of blockchain technology for patent licensing. James outlines how blockchain can offer an immutable and transparent way to package and transfer patent rights—potentially even creating an “IP coin” to finance innovation. He notes that while blockchain is already starting to be used in data rights, it could reshape the entire licensing landscape by allowing more efficient trading and tracking of IP. We also cover the idea of the complete economic chain for IP licensing, which means recognizing everyone’s contribution from the first supplier all the way to the final product manufacturer. James says it may be more efficient to handle royalties and costs at the beginning rather than chasing every link in the chain later. Finally, we explore how the merger with J.S. Held has expanded Ocean Tomo’s services. With over 500 in-house engineers, J.S. Held brings deep technical expertise to help Ocean Tomo’s clients in areas such as valuation, expert witness services, litigation support, and more. Key Topics How Ocean Tomo’s patent auctions changed the market Strategies for CEOs to plan and manage their patent portfolios Blockchain’s role in creating more transparent and tradable licensing rights The “complete economic chain” concept for fair and efficient IP royalties Why data rights and new marketplaces for data are becoming more important Ocean Tomo’s expanded offerings and partnership with J.S. Held Connect with James Email: james.malackowski@jsheld.com Website: www.oceantomo.com (or www.jsheld.com) Enjoy the episode, and let us know your thoughts on these emerging trends in the IP world! Jim Malackowski: Hello everyone, my name is Jim Malackowski. I am the co-founder and senior managing director of Ocean Tomo, and I’m thrilled to be here on IP Fridays. Rolf Claessen: Today’s interview guest is James Malackowski, the co-founder and senior managing director of Ocean Tomo, a part of J.S. Held. Before founding Ocean Tomo over 21 years ago in 2003, Jim had several positions in the IP field. He holds a degree in business administration from Notre Dame in Indiana, and in 2022, Jim was inducted into the IP Hall of Fame. Thank you very much for being on our IP Fridays podcast, Jim. Jim Malackowski: Rolf, thank you for having me. I’m excited for the conversation. Rolf Claessen: Alright. So, I already mentioned that you are the founder of Ocean Tomo, and you introduced the world to the first public auctions of patents, trademarks, and copyrights. In my personal recollection, it was the first patent auction site that really worked on a larger scale. I think there were some tries before that, but no one really succeeded. So, tell me more about the story behind Ocean Tomo and why you think it was successful. Jim Malackowski: Sure, and Rolf, your question is actually a question within a question. Let me tell you about Ocean Tomo, and then let’s talk specifically about the auction, because that itself is a really interesting story. With respect to the firm, the history of Ocean Tomo is really very similar to the history of my career. So, we can trace our activities back to the Court of Appeals for the Federal Circuit in the United States changing and forming a new way of looking at intellectual property back in the 1980s. Jim Malackowski: I started my career as an accountant shortly thereafter and opportunistically happened to work on calculating damages for patent infringement litigation. I was the first in a very small team to do that straight out of college. Because I worked on the first assignment, they gave me the second. After the second, the third, and then I was declared a member of a small expert team as a result. So, I spent the early part of my career, the first three years, doing nothing but looking at intellectual property in a litigated situation. Jim Malackowski: In the late 1980s, a client came back and asked me to value a patent, not for the courtroom, but for a business transaction. I can remember that day well. I literally ran down the hall to the senior partner’s office talking about my first piece of revenue credit. His answer was no. He said it’s not something that we do. It wasn’t something covered by the accounting standards or their insurance. So, a week after my 25th birthday, I left the firm. Four of my peers came with me, and we started what was the first-ever intellectual property dispute accounting and valuation boutique. We got lucky. That firm grew from five people, later partnered with private equity, and ended up selling nearly 300 people in the late 1990s. Jim Malackowski: After that, I went to work at one of the investment houses that had invested in us and really had my eyes opened to the power and impact of intangible assets and intellectual property, particularly as it relates to investment decisions. I worked on that for two years. Then, when the non-compete was over from the sale, literally to the day, we started Ocean Tomo in 2003. My history has been an amalgamation of those experiences. Jim Malackowski: Your question also asked about the auction, which is one of our favorite chapters within the firm in the early 2000s. One of my partners at that time, our vice chairman, was a very serious car collector. As we were explaining to him the frustration we had of selling patents as a broker, he basically said to me, “Jim, why do you make it so hard? Why don’t you try to sell patents like Sotheby’s would sell art, or like Gooding & Company sells cars? Publish a catalog, pick a date, hire an auctioneer, and let the buyers determine the market.” Jim Malackowski: That idea stuck with me. Within six months, we had our first auction in San Francisco in 2006. We published a fancy catalog, hired a British-accented auctioneer experienced in antiques and automobiles, and assembled 80 lots of patents for sale. That day, more than 400 people showed up, including CIPO’s, former directors of patent offices worldwide, and a large media presence. When the auction started, the room went silent—it was the first time anyone understood what manageable patent portfolios were worth. Up to that point, patent sales weren’t disclosed, and this was true price discovery. Jim Malackowski: At that first auction, we sold about a third of the catalog for several million dollars. In the years that followed, we sold over $100 million on the auction floor. That event was a game-changer in recognizing intellectual property and patent value. Rolf Claessen: Fascinating. So, what do you think attracted those 400 people to that first auction? Jim Malackowski: There were three reasons: First, it was price discovery—they wanted to know what these patents would sell for. Second, it was a market-building networking opportunity, as dedicated IP brokerage and valuation conferences didn’t exist back then. And third, fear—fear that a patent that could impact their business might sell, and they’d miss the chance to acquire it. Rolf Claessen: Very interesting. And it’s always a recurring question: How much is a patent worth? Many of my clients, especially medium-sized companies with maybe 500 to 1,000 employees, ask me, “We’ve filed all these patents—how much are they worth?” My response is often that the value of a patent is what someone is willing to pay for it. Do you agree? Jim Malackowski: Absolutely. The worth of patents can be evaluated in two ways. First, how do they help you build value in your business? If you’re able to raise capital or introduce products with unique features that maintain a proprietary position, there’s obvious value. Second, how do they create value for others? If others are using your intellectual property to generate revenue or capture market share, then it’s valuable to them. Ideally, those situations lead to win-win transactions where value is shared. Rolf Claessen: That’s a great point. Now, imagine you’re the CEO of a medium-sized, tech-driven company. What would you tell yourself to maximize the value of your research and patents? Jim Malackowski: Great question. Let’s break it down into three levels. At the highest level: Plan for it. Failing to plan is planning to fail, and that applies to intellectual property. I recommend designating someone on your board or advisory team to oversee IP. This ensures it becomes a regular part of board discussions and elevates the role of intangibles in your company strategy. Jim Malackowski: Next, develop a strategic IP plan. For us, that starts with a landscape analysis—understanding what you own and what your competitors own. Then, determine your principles: Are you willing to out-license, enforce, or in-license? Are you managing IP holistically across the business or within divisions? Once you know these principles, you can align your IP strategy with your business plan. Finally, educate your team about the importance of IP. Share your plan with the board, the C-suite, and even the broader organization so everyone understands the role of intellectual property in supporting the business. Rolf Claessen: That’s incredibly helpful. Now, let’s shift to new technologies like blockchain. I believe blockchain has great potential for patent licensing. Can you explain why blockchain is suitable and why it’s not widely used yet? Jim Malackowski: I agree that blockchain holds tremendous potential for IP, including patents, copyrights, data, and trade secrets. Blockchain is efficient, transparent, and immutable, making it ideal for documenting and packaging IP for transfer. For example, it allows you to wrap trade secrets or know-how into a blockchain container, ensuring everyone understands its scope and creation date. Jim Malackowski: Blockchain also enables valuation, balance sheet recognition, and secondary trading. Imagine licensing a patent wrapped in blockchain data—you could later sell that right to a third party. While adoption has been slow, it’s starting to gain traction, especially in data rights. Blockchain tools are now being used to codify, package, and transact data, and I believe we’ll see similar developments in patents. Rolf Claessen: That’s exciting. You mentioned earlier the idea of a blockchain-based IP coin. Could you elaborate on that? Jim Malackowski: Sure. An IP coin could function as a cryptocurrency secured by patents. For example, you could create a portfolio-backed cryptocurrency where each token represents a specific IP right. This could be used for financing, with patents serving as collateral. While we’re not there yet, it’s an area we continue to explore. Rolf Claessen: Interesting. But the legal framework for blockchain-based licensing seems outdated, at least here in Germany. Do you think the law will adapt? Jim Malackowski: It will have to. One exciting concept is using blockchain to unitize IP rights. For example, if a patent portfolio covers automotive technology, you could create a million unit license rights using blockchain. A manufacturer could buy 100,000 units today and sell unused rights to a competitor later. This approach benefits patent owners because they get paid upfront while allowing buyers flexibility. Blockchain makes this possible by enabling transportable, easily tradeable rights. Rolf Claessen: That’s a compelling vision. Before we move on, you mentioned the idea of considering the complete economic chain for IP licensing. What does that mean? Jim Malackowski: It’s about ensuring value is recognized and royalties are shared across the entire supply chain, from the original innovator to the final product manufacturer. Today, patent owners often have to approach each link in the chain separately, which is inefficient. A better approach would involve assigning royalties at the start and passing them along the chain in a clear, explicit way. This would reduce litigation and uncertainty while ensuring everyone is fairly compensated. Rolf Claessen: That makes sense. Now, let’s switch to data rights, another emerging topic. You’ve mentioned the need for a market for data rights. Can you explain what you mean by that? Jim Malackowski: Sure. Data rights can be viewed from two perspectives: personal and business. On a personal level, we often give apps permission to collect our data without receiving any compensation. There’s an opportunity to create a market that recognizes the value of individual data. Jim Malackowski: On the business side, there’s already an active market for data—like mailing lists or data sets used for AI and machine learning. Blockchain and other tools can make these markets more efficient by enabling secure, transparent transactions. We’re excited to see these markets evolve. Rolf Claessen: That’s a fascinating area to watch. Finally, Ocean Tomo is now part of J.S. Held. What services do you offer beyond auctions? Jim Malackowski: Ocean Tomo has always been known for different things by different people. Lawyers know us for litigation expertise, while others associate us with valuation or auctions. Today, as part of J.S. Held, we’ve expanded our offerings. We have four main practice areas: opinion services for litigation, management consulting for IP strategy and valuation, investment banking for transactions, and technical services like patent analytics and reverse engineering. Jim Malackowski: The partnership with J.S. Held has been transformative. With over 500 engineers on their team, we can now tap into deep technical expertise for any industry or technology. It’s been a very effective collaboration. Rolf Claessen: That’s fantastic. If listeners want to connect with you or learn more, what’s the best way to reach you? Jim Malackowski: They can email me directly at james.malackowski@jsheld.com or visit our website, where they’ll find an option to connect with us. We’re always happy to brainstorm and see how we can help. Rolf Claessen: Jim, thank you so much for this excellent interview. We covered so many exciting topics, and I’ve really enjoyed our conversation. It was a pleasure having you on IP Fridays. Jim Malackowski: Thank you, Rolf. It’s been a pleasure, and I look forward to doing this again.