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

I am Rolf Claessen and my co-host Ken Suzan and I are welcoming you to episode 178 of our podcast IP Fridays! Today’s interview guest is Caitlin Byczko, who is partner with Marnes & Thornburg in their IP team. Ken is discussing dupe culture with her.

Here is the profile of Caitlin Byczko https://btlaw.com/en/people/caitlin-byczko

But before we launch into this very interesting interview, I have some news for you:

On August 10th, 2026, Navitas Semiconductor filed suit against Renesas Electronics in the Eastern District of Texas, accusing Renesas of infringing four US patents on gallium nitride semiconductor technology through its SuperGaN product lines. The filing follows a countersuit Renesas brought on July 22nd, 2026, accusing Navitas and two of its employees of misappropriating trade secrets. It shows how patent disputes and trade secret claims between competitors are increasingly being fought on multiple fronts at once, and often as tit for tat.

It also emerged on August 12th, 2026, that an EPO Board of Appeal had dismissed an appeal by Atlas Global Technologies and ruled that its WiFi patent, EP 3 353 901, case T 1230/25, could not be maintained in any form at all, even though the original opponents, TP-Link and Vantiva, had already withdrawn their oppositions. That knocked out the basis for several parallel infringement suits at the Unified Patent Court, which were then withdrawn. For suppliers and implementers, the takeaway is that fighting a patent held by a non-practising entity can still be worth it, even once the original opponent has thrown in the towel.

On August 10th, 2026, the Unified Patent Court in The Hague fully revoked Maxell’s patent EP 2 061 230, covering technology for handing off content to a second device, and at the same time dismissed Maxell’s infringement claim against several Samsung entities, in cases UPC_CFI_251/2025 and UPC_CFI_769/2025. The judges found the patent to be nothing more than an obvious combination of routine adaptations, with no additional technical effect.

And now – let’s hear the interview with Ken and Caitlin!

A dupe used to be a quiet, slow thing. You’d stand in the cereal aisle, notice the generic box next to the name brand, buy it, tell a friend. Word spread over months.

That world is gone. On this episode of IP Fridays, Ken Suzan sat down with Caitlin Byczko, partner at Barnes & Thornburg LLP in Indianapolis, to talk about what’s replaced it: a TikTok-driven economy where a single video can sell out a dupe product within hours, sometimes before the original brand’s own team even knows it exists. Byczko litigates and prosecutes trademarks across retail, fashion, luxury goods, technology, and pharmaceuticals, and she’s watched dupe culture evolve from a marketing footnote into one of the more active battlegrounds in trademark law.

Here’s what she told us, and why it matters even if your brand has never heard the word “dupe” used about it.

Counterfeit and Dupe Are Not the Same Thing, Legally

Byczko opened with what she called the most important distinction in this entire conversation: the difference between a counterfeit and a dupe.

A counterfeit uses someone else’s actual trademark. Think of a fake Chanel bag stamped with the interlocking C’s, or a fake Louis Vuitton logo. That’s straightforward infringement, and above certain thresholds, a federal crime.

A dupe is different. It mimics the look, feel, or performance of a product without using the name or the logo at all. Elf Cosmetics, Zara, Costco’s Kirkland brand, and Quince have all built parts of their business on exactly this model. No one is pretending to be Chanel. They’re offering something that looks and performs similarly, at a fraction of the price, under their own name.

Media and social media use “dupe” and “counterfeit” interchangeably. Legally, that’s sloppy, and it matters, because the two categories trigger completely different legal analyses.

If There’s No Logo, What Are Brands Actually Suing Over?

This is where trade dress comes in. Trade dress protects the overall look and feel of a product: packaging, color combinations, shape, label design. Byczko pointed out that most of us interact with trade-dress-protected products every day without realizing it.

The test is likelihood of confusion. Courts look at how similar the products actually look, how sophisticated the shoppers are, and whether there’s real evidence that people were confused.

Byczko flagged one case as a genuine roadmap for this area: Van Leeuwen v. Rebel Creamery, an ice cream trade dress dispute that came out of the Eastern District of New York. In her view, the strength of that case came down to how precisely the brand defined its trade dress for the packaging. That precision, she said, did a lot of the work toward the outcome.

She’s also watching Lululemon v. Costco, which she expects to be significant partly because it doesn’t rely on trademark and trade dress alone. Byczko noted that brands are increasingly stacking causes of action together: trademark, patent, false advertising, all pointing at the same product. And she’s tracking Sol de Janeiro v. Macau Beauty, a case she finds notable because it pulls in influencer content and testimonials as evidence, not just packaging and trade dress claims. Macau Beauty, she noted, has already been sued multiple times across different jurisdictions.

A note for readers outside the US: trade dress as a distinct doctrine doesn’t exist as such in Germany. The closest tools here are the three-dimensional trademark and, more practically, the wettbewerbsrechtlicher Nachahmungsschutz under Section 4 No. 3 of the German Act Against Unfair Competition (UWG). That provision protects product shape, packaging, and get-up against imitation when the original has wettbewerbliche Eigenart, competitive distinctiveness, and the copy creates avoidable confusion about origin, unfairly exploits the original’s reputation, or was built on dishonestly obtained know-how. It’s a narrower, more fact-specific tool than US trade dress, but the underlying logic Byczko describes, define your product’s distinctive features early and precisely, applies just as much on this side of the Atlantic.

Why the Evidence Problem Changed Everything

Ken asked what’s actually driving the current wave of disputes, and Byczko’s answer was simple: evidence.

Ten or twenty years ago, if you sent a cease-and-desist letter or went to trial, you had almost nothing concrete to show about how consumers actually perceived two products. Now you have TikTok comment sections, influencer testimonials, and entire genres of “dupe content” documenting exactly what shoppers think, in their own words, in real time.

In the Sol de Janeiro case, Byczko noted that part of the complaint isn’t just about packaging and trade dress. It’s about what influencers said, what claims they made, and what that content reveals about actual consumer confusion or the absence of it. That’s evidence litigators simply didn’t have access to a decade ago, and it cuts both ways: it can prove confusion, or it can just as easily prove there wasn’t any.

Why Dupes Took Off: Economics, Status, and a Generational Shift

Byczko was careful to frame this part as her personal read, not a sociologist’s conclusion, but it’s a read shaped by watching these disputes up close.

Part of it is straightforward economics. Gen Z is shopping under real affordability pressure, and dupes let them participate in trend cycles without the price tag. Byczko cited a projected $12.6 trillion in Gen Z spending power by 2030, a generation too significant for brands to write off.

The other part is cultural. A generation ago, owning a visible logo was the status symbol. Now, for a lot of younger shoppers, being the savvy one, the person who finds the dupe first and tells their followers about it, carries its own status. It’s less “I have the real thing” and more “I outsmarted the markup.” Byczko also pointed to growing public skepticism toward paying five or ten times more for a product purely because of the name on the packaging, particularly in beauty and fashion.

The PR Trap: When Enforcement Backfires

One of the sharpest points in the conversation was about what happens after a brand decides to enforce. Suing over a dupe can read very differently in public than it does in a courtroom.

Byczko put it directly: going after a dupe can easily look, to the public, like a big corporation coming down on a small competitor, or worse, on its own customers, the same people who made the original brand aspirational in the first place. She’s seen this dynamic play out repeatedly in high-profile cases.

Her advice: treat enforcement as a communication strategy, not just a legal one. Sometimes the smarter move isn’t a lawsuit at all. It’s a quieter cease-and-desist letter, a takedown request, or doubling down on marketing that explains what actually makes the original worth the price. Charlotte Tilbury has leaned hard into this approach, building campaigns around the idea that the original simply can’t be remade. Olaplex ran a similar play with its “OlaDupe” campaign. Legal and marketing, Byczko said, have to work together on this, not in sequence.

What Brands Should Actually Do

Byczko laid out three practical layers, all before litigation ever enters the picture.

First: register your trademarks, and where a product design is genuinely distinctive, pursue trade dress or design patent protection early, before a dupe exists and before you know whether the product will even take off. That timing problem is real. Brands rarely know in advance which product will become the one worth copying. Her advice was to look at long-standing anchor products, the ones that have quietly carried a brand identity for years, and ask whether they’re actually protected.

Second: monitor. A large share of dupe disputes start on social media, not in a courtroom. That means someone needs to be watching hashtags and influencer content, not just from direct competitors, but from adjacent or even unrelated brands that could end up duping a product without anyone noticing until it’s already trending.

Third, and the one Byczko clearly considers most underused: consumer education and brand storytelling. “This is the original” is a weak pitch on its own in a market flooded with cheap alternatives. What works better is explaining, specifically, what makes a product different: its formulation, its sourcing, its performance, its longevity. Give people a real reason to pay more, not just a claim to authenticity.

Where This Goes Next

Byczko doesn’t think dupe culture is a passing trend. Her expectation is closer to “there will eventually be a dupe of everything,” and she’s watching an interesting generational pattern where teenage shoppers are teaching their mothers about dupes, who are in turn teaching their own mothers.

On the legal side, she expects more clarity as cases like Van Leeuwen work their way through the system, giving brands a clearer formula for how to define and defend trade dress. On the brand side, she expects less reliance on litigation as the primary weapon and more investment in what’s genuinely hard to copy: real innovation, ingredient transparency, and storytelling that a dupe simply can’t replicate.

One data point she raised stuck with us: search interest in the word “craftsmanship” is at its highest point in twenty years. After years of leaning into dupe culture, there are signs some consumers are swinging back toward wanting the original, the real ingredient, the real technique, the thing that can’t be copied to the same quality.

For brands sitting on distinctive packaging, a signature shape, or a product identity they’ve never formally registered, that’s less a trend forecast than a to-do list.

Here is the full transcript:

Ken Suzan: Thank you, Ralf. Our guest today on the IP Friday’s podcast is Caitlin Byczko. Caitlin is a partner with Barnes and Thornburg LLP and is based in Indianapolis, Indiana. Caitlin crafts and defends global brand strategies, protecting intellectual property assets with creative solutions and highly tactical advocacy. She excels in trademark prosecution and litigation before the Trademark Trial and Appeal Board and federal district courts, safeguarding trademarks and digital properties for businesses of all sizes and at every stage of the business life cycle. From startups to Fortune 500 companies, Caitlin manages clients’ intellectual property needs across diverse industries. Her experience spans retail, fashion, luxury goods, sports, technology, agriculture, venture capital and pharmaceuticals. Beyond trademark law, Caitlin brings valuable insights from her law school experience with the National Collegiate Athletic Association, NCAA, and her previous work serving in a technology company’s in-house legal department. Her tenacious nature and clever problem-solving skills shine through in complex matters, earning praise from clients and colleagues alike. Caitlin is co-author of “Dupe Culture Meets the Courtroom,” published in Global Cosmetic Industry on March 16, 2026. Welcome, Caitlin, to the IP Friday’s podcast.

Caitlin Byczko: Hi, Ken. Thank you so much. I’m very honored to be here.

Ken Suzan: Yeah, so Caitlin, today we’re talking about dupe culture, a topic that is rapidly becoming front for many brands around the world. What’s the actual difference between a dupe and a counterfeit?

Caitlin Byczko: That is one of my favorite questions. This is the most important distinction to draw when we are talking legally about dupes because the difference, because media and social media often use the words interchangeably and legally they’re very different. A counterfeit is a product that uses someone else’s actual trademark. We often think of a fake Chanel bag with interlocking C’s or a fake Louis Vuitton. It’s relatively straightforward trademark infringement and generally above certain thresholds is a federal crime. A dupe, by contrast, is a product that mimics the look, feel, or performance product without actually using the name or logo. We often think of it in the beauty products, in the fashion space, some brands like Elf Cosmetics, which was in the article you just mentioned, Zara, Costco’s Kirkland brand, Quince, who are all very well known in the dupe space.

Ken Suzan: What has led to the rise of dupe culture? I’m reading about it virtually every day.

Caitlin Byczko: I feel very strongly about this and I’m always talking about it in my legal and non-legal worlds. It’s a very interesting societal change that I think we’ve seen over the past year. I am a lawyer, I am not a marketer, I am not a sociologist, but in my opinion, social media and influencer culture specifically has really created the kind of rise in dupes that we see today. I don’t think we can talk about modern dupe culture without talking about TikTok specifically. Dupe content is its own genre, essentially on TikTok and on Instagram. There’s a whole vocabulary that people are dupe influencers, where their whole product, everything that they’re doing and selling, all of the content they’re making is dupe related. What’s really changed is the speed, I think, around when other products or when a dupe product comes out, how it can be marketed and how people can find out about it. The speed of commerce itself has increased wildly as a result, in part because of social media. A product used to take months to build a reputation as a good alternative. When we think about things, generic cereal is one thing that I have been talking about with my parents with respect to dupe culture. It was one of the things that there used to be, you would go to the store and there would be the cereal, the name brand cereal, and then there would be the generic version of the cereal, which was usually less expensive. That in a way was a dupe. It took a long time. Your friends knew about the dupe cereal and then you knew about the dupe cereal. Then it all got around. Now a single video can send a dupe product sold out within days, within hours sometimes. Oftentimes, a brand’s own team doesn’t even know about the dupe until it’s already been wildly out. Part of it becomes this legal issue when there are claims coming around the dupe. In the Sol de Janeiro case against Macau Beauty, part of the complaint isn’t just about the trade dress and the packaging, which I think we’ll talk about. It’s about the influencer content and the testimonials and what people are saying about the dupes. There’s so much evidence now and there’s so much content and there’s so much out there regarding dupes on social media, on TikTok, and in other places.

Ken Suzan: Yeah, and it’s an ever-evolving story. Every day there’s new social media content, more evidence for a potential gain, right?

Caitlin Byczko: Absolutely.

Ken Suzan: So if dupes aren’t using a particular brand name, how are companies suing over them at all?

Caitlin Byczko: So this is really where trade dress comes in, and trade dress, as most of us know, has been around for a long time. There are a lot of very well-known things that you probably see or use every day that you don’t know are protected by trade dress, but they are. And the trade dress protects the overall kind of look and feel of a product. So if you think about things like packaging, color combinations, shape, label design, when that becomes distinctive enough, right? When consumers see that and kind of immediately understand it has the secondary meaning related to the brand owner, then it can become a protectable trademark. And so the test for trademark infringement is likelihood of confusion. And courts will look at the factors of how similar the products actually look, how sophisticated the shoppers are, whether there’s evidence that people were actually confused. I think one of the big cases in the trade dress space that came out since you and I discussed originally, Ken, is the Van Leeuwen versus Rebel Creamery ice cream case. And so for any of those interested, it’s a very interesting opinion. It just came out of the Eastern District of New York. I think that really helps people, brands specifically, kind of provide a roadmap with respect to how to define a trade dress. I think they did an excellent job there defining what the trade dress was for the packaging. And I think that that had a lot to do with the success.

Ken Suzan: Yes.

Ken Suzan: Why do you think younger consumers gravitate towards dupes so much more than past generations did?

Caitlin Byczko: I think there are a few things that are kind of top of each other. The obvious one is economics. I think younger consumers, especially Gen Z, they’re shopping in an environment where there’s affordability pressure. And I think that dupes let them participate in certain trend cycles without the price tag. Gen Z is a significant demographic behind the growth of dupes. And they have a predicted spending power we saw recently, $12.6 trillion by 2030.

Ken Suzan: Wow. That’s incredible.

Caitlin Byczko: I think it is really also coupled with more of what I would say is a cultural shift. Again, I am a lawyer and this is just my opinion. But what feels aspirational is really changing, I think. And a generation ago, we saw in the fashion world, there was a really big, people really liked logos. Having a logo, owning a logo was the point. And now for a lot of younger shoppers or even more savvy shoppers, actually being a savvy shopper is the status symbol itself. So for a lot of creators, finding the dupe before anyone else or being the one who tells your followers about the dupe really has its own, and it’s less “I have this real thing” and more, “oh, I outsmarted the markup.” And I think it’s that kind of value. I think younger consumers are more publicly skeptical of the idea that something is worth five or ten times more just because of the name on the packaging. And I think that that becomes the case particularly in beauty and then clothing as well. And so I think it’s coupled with the question of craftsmanship and all of these different things. Like we can’t view anything in a vacuum, which is why I could talk for 500 years about this topic.

Ken Suzan: Yeah, definitely. Now brands obviously want to protect themselves. That’s an important thing. But going after a dupe can backfire publicly, particularly on the internet. Can you comment on this possibility and what should brands do?

Caitlin Byczko: Sure. I think the biggest thing is what you just said. So I think there’s the legal component. And when we’re assessing this for one of our brand clients, I think we cannot review one without the other. So I think you have to say, do we have this claim? Do we have a protectable trade dress or a look and feel claim? And what is the potential backlash in the public? I think it is also a joint PR concern, because what we see is suing over a dupe can very easily read to the public as, oh, this big brand or big corporation is coming down on a small competitor or on its own customers that made the original brand aspirational. I think that we see this in a lot of the big cases that are out right now. So brands, I think, can start to think about enforcement as a communication strategy first, because sometimes the smarter play isn’t necessarily filing a lawsuit. It’s kind of a quieter cease and desist, a takedown request, or separately, it might be really doubling down on the craftsmanship or on a marketing side of what makes the product worth the price. I think Charlotte Tilbury is a great example of this, who’s really leaned into this kind of “can’t be duped” or “you can’t remake the original” with respect to some of their really core products. And so I think people really need to, or brands really need to, assess: one, how can we define what it is that’s being duped? And again, that’s where I think that Van Leeuwen case, I think, will be really interesting over the next few years, with respect to kind of providing this roadmap to help people say, here is a way that we can try to really define what the trade dress is and then be able to protect it and be able to enforce it.

Ken Suzan: Caitlin, are there cases right now, I know we just talked about the Van Leeuwen case, but are there cases right now that you think will actually set the tone for how this area of law develops?

Caitlin Byczko: Absolutely. And I think some of the cases probably are even in the works, they’re not even filed yet, which is probably very exciting to us as trademark nerds. I do think the Lululemon versus Costco case will be a big one. It’s not just trademarks and trade dress, as many of them are not. I think a lot of times we see in these cases brands are very smartly using kind of all of the different types of causes of action that they bring: trademark, patent, false advertising, a lot of different things. And so I think that that one is definitely certainly one to watch kind of in the fashion space. And then the Sol de Janeiro versus Macau Beauty. Macau Beauty has been sued multiple times, I think, in various jurisdictions. And so I think part of that one is very interesting to me because I think it’s this, it loops not only trademark protection, but also it brings in false advertising, it brings in influencers, it brings in all of these different things. And so I think, like we had talked about previously, nothing is really viewed in a vacuum. And I think for all of these cases, one really important thing, maybe that we didn’t necessarily have access to 10 years ago, or certainly 20 years ago, is this like just ripe amount of evidence of potential confusion or potential non-confusion. When we go on social media and look at all of these things, and then read the comments and all of this different data that’s out there, it’s fascinating, because if you’re in trial, or if you’re going to trial, you’re sending a cease and desist letter, like there is evidence of what the consumers think right here in front of you, right? And the weight of that evidence obviously depends on what it is. But it’s fascinating the way that you can very quickly identify, you know, is there confusion? Is there not confusion, in a way that you likely could never have even thought to consider 10 to 20 years ago?

Ken Suzan: Now beyond litigation, what should brands actually be doing to protect themselves in a dupe-driven market?

Caitlin Byczko: I think one of the best things that we can do, right, is starting to register the trademarks. I think that’s an obvious one. And really start to consider where the product is genuinely distinctive. And so if it is genuinely distinctive, pursuing a trade dress or a design patent early, before a dupe exists, before anything happens. And I know that can be difficult, because oftentimes brands don’t know for sure what’s going to take off and what’s not. It can also be a surprise. But I think it’s really pushing brands that when you are innovating and when you are doing something that is truly unique and truly distinctive, or when you’re looking back on your brand assets and saying, this thing has been an anchor brand asset for 10 years, you know, have we sought trade dress protection? Is there a way that we can do that? The second layer really is monitoring, in my mind, because a lot of dupe disputes do start on social media. And I think it is important to have people within a company, if you have a product that you’re really keeping an eye on, or that you’re concerned about being duped or causing confusion, having someone who is keeping eyes on hashtags and influencer content and all of these various things. You know, we’re not watching just your direct competitors, we’re watching other completely different brands, or kind of made-up brands even, who could be duping the product. And then I think the third thing that I see as very important is this kind of consumer education and brand storytelling, which is when we kind of get outside of the purely legal side of it. And, you know, legal and marketing and brand and social kind of all need to work together, right? I think if the only pitch to consumers is “this is the original,” it kind of becomes a weak argument in a market where there are cheap alternatives everywhere. But I think the brands that really explain what actually makes their product different, in its formulation, its sourcing, its performance, its longevity, it really gives people a real reason to say, I want to pay more for this brand because of XYZ, you know, the technology or whatever that is. Charlotte Tilbury is one that I had mentioned. I know Olaplex kind of had a big campaign around “OlaDupe” is what they called it. So I think really unique and interesting marketing also assists with that.

Ken Suzan: Caitlin, where do you see dupe culture heading? Is this a trend that plateaus or does it fundamentally change how brands operate?

Caitlin Byczko: I think dupe culture itself is here to stay. I mean, I think we are only getting into a world where there is truly going to be a dupe of everything. And it’s not good or bad necessarily. I think it is just where we are in life. And I think, you know, things serve different purposes. And it all depends a lot on how the younger consumers shop. And it’s also changing how older consumers shop. You know, I’ve read a lot about teenage girls teaching their moms about dupes, who are then teaching their grandmothers about dupes, right? So on the legal side, I think we will get clarity eventually. I think right around, you know, all like all of these things, which seem so complex, and we’ll never know the answer. You know, five [years] from now, we will probably have certainly more clarity, because a lot of these cases will move forward. You know, the Van Leeuwen one, which I’ve now talked about multiple times, but I just obviously think it’s very fascinating. I think that that’s one where you have a roadmap, right? And it may be contested, or, you know, everything is very fact-specific in the trademark world. But I think it will open the door to allow people one more aggressive brand enforcement. But it will give people a roadmap proactively to kind of say, if we follow this formula for our trade dress, or, you know, defining our trade dress, then, you know, we have something we can potentially protect. And then I think on the brand side, we’ll likely see less reliance on litigation as the primary weapon and more investment in things that are actually, you know, difficult to dupe: innovation, ingredient transparency, marketing, genuinely interesting brand storytelling is something that we’ve seen. I read this past week that searches for craftsmanship, just like generally the word craftsmanship, and kind of products with craftsmanship, is at an all-time high, than it’s been in like the past 20 years. And so it’s interesting, right, that we have gone from this kind of luxury item or high craftsmanship to this dupe culture that we are in now. But there is some potential shift where people are saying, you know, now, I’ve seen all of this and I have all of these options, but now actually what I do care about is the original, right, the innovation or the ingredient transparency or all of those things that can’t necessarily be copied to the same quality. So it’s why it will just provide us with endless topic of discussion, because I think it will only just keep changing forever.

Ken Suzan: That’s right. Caitlin, I want to thank you for spending time with us on the IP Friday’s podcast. This has been very insightful, and I’m sure we’ll be talking about this issue in the months and years to come.

Caitlin Byczko: Thank you so much, Ken. I really appreciate it.

Ken Suzan: Thank you.

I am Rolf Claessen and my co-host Ken Suzan and I are welcoming you to episode 177 of our podcast IP Fridays! Today’s interview guest is Dr. Ernst-Peter Heilein, who is a German and European patent attorney, the founder of HEILEIN IP LAW, and a long-time IP leader at BSH Home Appliances. He is the mastermind behind the BSH v. Electrolux decision of the European Court of Justice about long-arm jurisdiction in Europe that has the whole patent world stirring in Europe at the moment!

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

Emboline v. AorticLab (UPC Court of Appeal)

The UPC Court of Appeal has clarified for the first time how a conditional revocation counterclaim should be handled, in a dispute over Emboline’s embolic protection patent EP 2 129 425 against AorticLab. A defendant can validly make its revocation counterclaim conditional on infringement being found first, meaning no ruling on the counterclaim is needed if the infringement claim fails, as the Munich Local Division had held. The Court of Appeal also closed a related gap: if the claimant appeals a non-infringement finding, the counterclaimant may conditionally appeal the unresolved counterclaim too. AorticLab missed its own appeal deadline and can now at best seek re-establishment of rights, while Emboline has already appealed the non-infringement finding.

FujiFilm v. Kodak (UPC Court of Appeal)

Following the closely watched long-arm jurisdiction ruling of June 2, the UPC Court of Appeal, chaired by Rian Kalden, has now granted FujiFilm an injunction against Kodak in a second proceeding. The Court upheld the limited printing plate patent and found that Kodak’s Sonora XTRA 3 plate infringes it. Kodak can no longer sell or use that plate in Germany.

OpenAI v. EUIPO (General Court of the EU, T-555/25)

The General Court’s Eighth Chamber dismissed OpenAI’s action against the EUIPO decision to partially cancel the OPENAI trademark. The partial refusal for classes 9, 42, and 45 rests decisively on Article 7(1)(c) EUTMR, the descriptiveness ground. For a significant part of the English-speaking public, “OPENAI” directly conveys that the goods or services are provided using freely accessible artificial intelligence.

Dental Monitoring v. Align Technology (CAFC)

On July 7, 2026, the Federal Circuit confirmed that AI and deep-learning patent claims covering dental image analysis are not patent-eligible under Section 101. Simply training a “deep learning device” on a specific dataset does not amount to a patent-eligible technical solution.

Publisher v. Google (Munich I Regional Court)

The Munich I Regional Court issued a preliminary injunction barring Google from spreading false factual claims about a publishing company in its AI Overviews. A search query combining the company’s name with the German term for “fraud scheme” had triggered an AI-generated summary containing entirely fabricated accusations of subscription traps.

KPN v. Oppo (Federal Court of Justice, X ZR 103/24)

On July 1, the Federal Court of Justice dismissed KPN’s appeal against the revocation of a central claim of its LTE patent EP 2 291 033. Oppo had successfully challenged the claim, leaving KPN’s infringement action against Oppo’s German distribution entity without a legal basis for now.

BSH v. Electrolux: What the ECJ Ruling Means for Your Company’s Patent Enforcement Strategy

A vacuum cleaner from 2001 has reshaped the European patent landscape. That sounds like an overstatement. It isn’t. For IP Fridays, I spoke with Dr. Ernst-Peter Heilein, founder of HEILEIN IP LAW and long-time Senior IP Leader at BSH Home Appliances. He guided the case BSH v. Electrolux from its first strategic idea all the way to the Grand Chamber of the European Court of Justice, a case that earned the 2025 Managing IP Award as “Europe Impact Case of the Year.”

For managing directors, IP heads, and R&D leaders at German Mittelstand companies, this case is not a legal footnote. It changes where you can enforce your patents, and it changes where you yourself can be sued if your company operates across several European markets. That is what this article is about.

Background: How a Patent Dispute Became an ECJ Case

The invention dates back to 2001 and concerns a new vacuum cleaner technology. In 2006, BSH identified what it believed was an unauthorized use of that invention and contacted Electrolux to clarify the situation. The European patent was granted in 2009 and validated in a number of European countries. Nobody, Heilein says, could have imagined at the time that this matter would eventually reach the Grand Chamber of the European Court of Justice almost twenty years later.

In late 2018, BSH successfully defended the patent through opposition and appeal proceedings before the European Patent Office. In 2019, the Higher Regional Court of Düsseldorf found that certain Electrolux vacuum cleaner models infringed the patent. A classic milestone win, the kind that occurs regularly in patent practice. Except the patent had been validated in many countries. Winning in Germany did not solve the enforcement problem everywhere else.

Heilein describes the starting point in very concrete terms: how do you enforce a patent that exists in many countries without filing a separate lawsuit in every single one? And how do you prevent claims from becoming time-barred while you work that out? Running parallel proceedings in multiple countries is not just legally complex. It consumes time, personnel, and money that a mid-sized company rarely has in that quantity to spare.

This is exactly where the real value of this case for you begins. From the outset, this was never an academic debate about jurisdiction. It was a question that every company holding rights in more than one country eventually faces: how do you enforce your rights efficiently without burning your budget on ten parallel proceedings?

Brussels Ia Regulation: The Underrated Article 4

While searching for a solution, the BSH team came across Article 4 of the Brussels Ia Regulation. The underlying idea is simple: a person can generally be sued in the country where that person is based. In the BSH case, that pointed toward the Swedish home court, because Electrolux is headquartered in Stockholm.

For a long time, this rule played no real role in patent practice. The widely held view was that cross-border patent litigation in Europe was effectively dead the moment a defendant challenged the validity of the patent. Anyone wanting to enforce a patent across several countries appeared to have no choice but to litigate country by country.

Heilein and his team questioned that assumption instead of simply accepting it. This is the point I find most instructive: challenging accepted assumptions in your own field is often the difference between a standard solution and a strategic one. In 2020, the team decided to file the action in Sweden, aware that they were looking at a possibility, not a guarantee.

Cross-Border Enforcement: The Three Questions Referred to Luxembourg

After Electrolux challenged the validity of the patents, the Swedish home court declared itself not competent to hear the case. BSH appealed, and the Swedish Court of Appeal agreed to refer three questions to the European Court of Justice.

The first question addressed the core problem: does a home court that would otherwise have jurisdiction over an infringement claim lose that jurisdiction simply because the defendant argues the patent is invalid?

The second question concerned a feature common to many legal systems, including Germany’s, where infringement and validity are decided in separate proceedings.

The third question originally concerned Turkey. Today, most people immediately think of the United Kingdom, and some even think of US patents. Originally, the question was simpler: do the same jurisdiction rules apply to patents from countries outside the European Union?

The fact that the ECJ first assigned the case to a Chamber of seven judges and later referred it to the Grand Chamber of 15 judges already signaled how much weight the Court placed on these questions.

The Judgment: What the ECJ Actually Decided

A home court does not automatically lose jurisdiction simply because the defendant argues the patent is invalid. For many years, the opposite was widely assumed to be settled law. The ECJ made clear that this reading was too narrow. The court where the defendant is based can generally continue to hear the infringement case.

One point matters for how you read this ruling: questions concerning the validity of a European patent still fall to the national courts of the country for which the patent was granted, as provided in Article 24(4) of the Brussels Ia Regulation. What is new is that the infringement case does not automatically collapse the moment validity is challenged. The home court keeps control of the overall proceeding.

For patents from EU Member States, the home court does not automatically lose jurisdiction. It assesses the validity challenge. If it looks strong, the home court may stay the infringement case. If it looks weak, the home court may proceed. For patents from non-EU countries, the home court may stay the case if a validity proceeding is already pending there, drawing on Articles 33 and 34 of the Brussels Ia Regulation. The result is a considerably more flexible system than most observers expected

.

Patents from Outside the EU: Long-Arm Jurisdiction

The part of the judgment with the greatest international reach concerns patents from countries outside the EU. The ECJ ruled that the special jurisdiction rule for patent validity generally does not apply to non-European patents. That means the general rule can apply instead, opening the door for infringement claims based on non-European patents to be brought before a home court where the defendant is based in the EU. Commentators quickly started calling this “long-arm jurisdiction.”

One clarification matters here, because it tends to get lost in the public discussion: the ECJ did not say that a European home court can revoke or invalidate a foreign patent. That remains a matter for the authorities and courts of the country that granted it. What the ECJ said is that a European home court may assess the claims between the parties. That distinction is essential to how you should read this ruling.

Consequences in Practice: Fujifilm, Regeneron, and Onesta

Three recent cases show how quickly practice is already adapting to the new possibilities.

Fujifilm v. Kodak: the Düsseldorf Local Division of the Unified Patent Court accepted jurisdiction over the UK part of a European patent even before the ECJ delivered its judgment, building on reasoning the Advocate General had already signaled in the BSH case. In June 2026, the UPC Court of Appeal further developed that approach based on the principles confirmed in BSH.

Regeneron v. Formycon: the Munich home court applied the BSH framework and granted a Europe-wide injunction based on a European patent, one of the first examples of a national home court putting the BSH logic into practice.

Onesta v. BMW: this case shows the debate has moved well beyond Europe. After Onesta attempted to assert two US patents before the Munich home court, BMW obtained an anti-suit injunction from a Texas federal court. Judge Albright took the view that US patents should generally be decided by US courts. The injunction was directed against Onesta, not against the Munich court, and Onesta has appealed the Texas decision. The Munich home court stayed the proceeding but did not reject its own jurisdiction. Whether a European home court can ultimately decide infringement claims based on US patents remains an open question, one that has turned from a European jurisdiction issue into an international jurisdiction conflict.

What This Means for Your Company

Heilein sums up twenty years of litigation in three lessons, and I share this assessment without reservation when advising my Mittelstand clients.

First: patent enforcement has become more international. National litigation still matters, but companies should think across borders from the very beginning, not only once the first cease-and-desist letter has been sent.

Second: choice of forum now carries real strategic weight. Where you bring a case can matter just as much as the legal arguments themselves.

Third: long-term commitment pays off. Major developments rarely result from a single filing or a single hearing. They come from pursuing a clear strategy consistently over many years.

For you as a managing director, R&D lead, or Head of IP at an innovative Mittelstand company, this translates into two concrete points. First, if you hold rights in several European countries and a competitor infringes them, you no longer necessarily have to fund five or six parallel national proceedings. A single action at the infringer’s home base can be the economically smarter option. Second, and this side of the ruling gets less attention in public discussion, if your company is based in Germany and operates across several countries, you can now be sued at your own home base over patent infringement claims tied to activities in other countries. That risk belongs in every freedom-to-operate analysis and in every assessment tied to acquisitions or market entry.

Here is the full transcript of the interview:

Host

Today’s interview guest is Dr. Ernst-Peter Heilein. If you don’t know Ernst-Peter, he is a German and European patent attorney, the founder of HEILEIN IP LAW, and a long-time IP leader at BSH Home Appliances. Thank you for being on IP Fridays.

Answer

Yeah, great to be here!

BLOCK 1 – THE PERSON BEHIND THE CASE

Host

When looking at your career, one thing stands out: you never really followed the traditional path of either private practice or industry.

Er, how did your professional journey begin, actually?

Answer

My professional roots are actually in private practice.

After qualifying as a Patent Attorney, I worked in private practice and fairly early founded my own law firm, which later became HEILEIN IP LAW.

Host

So you never completely left private practice behind?

Answer

Exactly.

In 2005, I had the opportunity to take on additional responsibilities on the BSH side.

There, I was able to build and lead a new unit within the IP organization.

The team was responsible for patents in the small appliances business, as well as global design and trademark protection.

At the same time, I helped build an international network of internal and external IP counsel and coordinated their work.

Host

That still sounds fairly like traditional IP work. When did international disputes become part of your career?

Answer

Over time, my focus gradually shifted from traditional IP protection to strategic enforcement.

That included anti-counterfeiting activities, global trademark and design matters, and cross-border patent disputes.

Host

So your work became more about enforcing rights rather than simply obtaining and managing them, right?

Answer

Exactly.

And that development eventually led me to play a strategic role in the case BSH Home Appliances versus Electrolux, a case that still accompanies me today.

Host

Looking back now — from private practice, to building an international IP organization, and eventually becoming involved in a case before the European Court of Justice — did you ever imagine that path?

Answer

No, not at all.

Looking back, this combination of private practice, responsibilities on the business side, and international enforcement experience turned out to be very useful when our case eventually reached the European Court of Justice.

BLOCK 2 – HOW IT ALL STARTED

Host

Yeah, talking about this case. The case BSH versus Electrolux started long before it reached the European Court of Justice.

When did the story actually begin?

Answer

The story actually begins much earlier than most people would expect.

The invention itself dates back to 2001 and concerns a new vacuum cleaner technology.

In 2006, we identified what we believed to be an unauthorized use of the invention and contacted Electrolux to clarify the situation.

The European patent in suit was granted in 2009 and validated in a number of European countries.

At the time, nobody could have imagined that this would eventually lead to a decision of the European Court of Justice almost twenty years later.

Host

Wow, 20 years! That’s a long time. So, at first this was simply a normal patent dispute?

Answer

Yes, absolutely!

After many years of opposition and appeal proceedings before the European Patent Office, we were finally able to defend the patent successfully in late 2018.

Less than one year later, in the summer of 2019, the Higher Regional Court of Düsseldorf found that certain Electrolux vacuum cleaner models infringed the patent.

Host

Er, at that point, one might think, that the patent owner had achieved its goal, right?

Answer

That is what many people would think.

But that judgment did not bring the dispute to an end. A new challenge emerged.

The patent had been validated in many European countries.

Winning in one country, like Germany, did not automatically solve the enforcement issue in all the other countries.

Host

What was the practical problem then?

Answer

We were facing a very simple question:

How do we enforce a patent that exists in many countries?

And how do we prevent claims from becoming time-barred without filing separate infringement actions in every single country?

Doing that would not only be legally complex.

It would also require a huge amount of time, effort, and money.

Host

That sounds less like a major legal question and more like a business problem.

Answer

Exactly.

At the beginning, this was not an academic discussion about jurisdiction.

It was a very practical business question.

How can we enforce our rights efficiently without running parallel lawsuits all over Europe?

That was the real challenge we were trying to solve.

BLOCK 3 – THE IDEA OF A CENTRAL ACTION

Host

So, how did the idea of one central action emerge?

Answer

While looking for possible solutions, we came across Article 4 of the Brussels Ia Regulation.

The idea behind that rule is very simple.

In general, a person can be sued in the country where that person is based.

In our case, that pointed us toward the Swedish home court because Electrolux is based in Stockholm.

Host

That sounds like a fairly ordinary jurisdiction rule.

Answer

Yes.

And that was exactly what made it interesting.

Article 4 is the general rule.

The question was whether that rule could also be used for patent infringement claims covering several countries.

Host

Was that a common approach at the time?

Answer

No.

Quite the opposite.

Many people believed that cross-border patent litigation in Europe was effectively dead.

Host

That sounds rather dramatic. Why did people think that?

Answer

Because there was a widely held view that a central patent case could be stopped as soon as the defendant challenged the validity of the patent.

As a result, many companies assumed they had no real choice but to litigate country by country.

Host

Yet you decided to look at the issue differently.

Answer

Yes.

Sometimes it is worth taking a fresh look at accepted assumptions.

We felt that Article 4 might play a much more important role than many people believed.

Host

So at that point, you already saw an opportunity, right?

Answer

Yes, we saw a possibility!

Not a guarantee.

But we believed there was a strong legal basis for bringing all claims before the Swedish home court.

Host

And that eventually led to the lawsuit being filed in Sweden, right?

Answer

Exactly.

In 2020, we decided to file the action in Sweden.

That followed our success before the European Patent Office in late 2018 and in the Düsseldorf infringement proceedings in 2019.

At that stage, our objective was very practical.

We were simply trying to find an efficient way to enforce rights that exist in many countries.

Host

At that point, you already think the case might end up before the European Court of Justice?

Answer

No.

Not at all.

We were focused on solving a business problem.

The idea that the case would eventually reach the European Court of Justice came much later.

BLOCK 4 – THE OBSTACLE: GAT v. LuK

Host

You mentioned that, er, many people believed cross-border patent litigation in Europe was no longer a realistic option.

Why was that?

Answer

The main reason was an earlier decision of the European Court of Justice known as GAT versus LuK, decided in 2006.

For many years, that decision was understood to mean that a home court could lose its ability to hear a patent infringement case as soon as the defendant challenged the validity of the patent.

In practice, that understanding made many cross-border patent cases extremely difficult.

As a result, many people believed that cross-border patent litigation was not effective.

Host

And yet you decided to follow exactly that path, right?

Answer

Yes.

Sometimes it is worth questioning assumptions that have been accepted for many years.

We believed that Article 4 of the Brussels Ia Regulation played a more important role than many people thought.

That is why, in 2020, we decided to file the case in Sweden.

Host

And at that point, did you already realize that the case might eventually reach the European Court of Justice?

Answer

No.

Not at all.

Our goal was simply to find a practical solution to a real enforcement problem.

The idea that this would eventually become a case before the European Court of Justice was far from our minds.

BLOCK 5 – THE QUESTIONS REFERRED TO THE EUROPEAN COURT OF JUSTICE

Host

So, how did the case eventually reach the European Court of Justice then?

Answer

After we filed the lawsuit in Sweden in 2020, Electrolux challenged the validity of the patents.

The Swedish home court then concluded that it could not hear the case and declared itself not competent to proceed.

We appealed that decision, because the issues were important and affected far more than just our case.

We suggested that several questions should be referred to the European Court of Justice.

The Swedish Court of Appeal agreed and sent those questions to Luxembourg.

Host

So, what were these main questions?

Answer

At the heart of the case, there were three questions:

First: if a home court has jurisdiction over a patent infringement case, does it lose that jurisdiction simply because the defendant argues that the patent is invalid?

Second: Does it make a difference if the national legal system requires validity issues to be decided in a separate proceeding?

And third: Do this jurisdiction rules also apply to patents from countries outside the European Union?

Host

The third question sounds particularly interesting.

Answer

Yes, at the time, the discussion in our case focused on Turkey.

Today, many people immediately think about the United Kingdom, and some even think about US patents.

But originally, the question was much simpler.

We wanted to know, whether the same jurisdiction rules also apply when patents from non-European countries are involved.

Host

And, did you realize how important that third question might become?

Answer

No, certainly not to that extent.

At the beginning, most of the discussion focused on the relationship between the different jurisdiction rules within Europe.

Only later did it become clear that the European Court of Justice’s answers might have consequences far beyond the European Union.

Host

So, how did the European Court of Justice react then?

Answer

That was actually quite interesting.

The European Court of Justice first heard the case before a Chamber of seven judges.

Later, it referred the case to the Grand Chamber of 15 judges.

That already showed that the European Court of Justice considered the issues to be important.

And when the judgment finally came out, some of the answers were very different from what many observers had expected.

BLOCK 6 – THE DECISION OF THE EUROPEAN COURT OF JUSTICE

Host

Let’s talk about the European Court of Justice’s answers.

What was, in your view, the most important part of the decision?

Answer

The most important point was this:

A home court does not automatically lose jurisdiction just because the defendant argues that the patent is invalid.

For many years, many people believed exactly the opposite.

The European Court of Justice made it clear that this understanding was too narrow.

The home court where the defendant is based can generally continue to hear the infringement case.

That is really the key message of the decision.

Host

Why is that so important?

Answer

Because it gives new momentum to cross-border patent enforcement in Europe.

Before this decision, many people assumed that a defendant could effectively stop a central infringement case simply by challenging the validity of the patent.

The European Court of Justice made clear that this is not automatically the case.

Host

Does that mean the home court hearing the infringement case will now also decide whether the patent is valid?

Answer

No, and that is a very important point.

The European Court of Justice confirmed that questions about the validity of a European patent should still be decided by the national courts of the country for which the patent was granted, as provided for in Article 24(4) of the Brussels Ia Regulation.

What is new, is that the infringement case does not automatically fall apart because of a validity challenge.

The home court can keep control of the overall case.

Host

So, how does that work in practice?

Answer

The European Court of Justice gives the home court some flexibility.

For patents from Member States of the European Union, the home court does not automatically lose its power if the defendant says the patent is invalid.

The home court can look at the validity challenge. If it seems strong, the home court may stay the infringement case. If it seems weak, the home court may continue the infringement case.

For patents from countries outside the European Union, the home court may also stay the case if there is already a validity case pending in that country. In such situations, Articles 33 and 34 of the Brussels Ia Regulation may apply.

That creates a much more flexible system than many people expected.

Host

Er, we have discussed the implications for patents from Member States of the European Union, but a lot of attention has been given to another part of the decision, that we already talked about briefly, namely patents from countries outside the European Union.

Answer

Absolutely, and that may be the part of the judgment with the biggest international impact.

Host

Why?

Answer

Because the European Court of Justice decided that the special jurisdiction rule for patent validity does not generally apply to patents from non-European countries.

In simple terms, that means the general rule can still apply.

And that opens the possibility of bringing infringement cases based on non-European patents before the home court where the defendant is based in the European Union.

Host

That sounds like a very far-reaching statement.

Answer

It is.

That is why many commentators started talking about what is often called “long-arm jurisdiction.”

In other words, a European home court may, under certain circumstances, deal with infringement claims relating to patents from countries outside the European Union.

Host

So, many listeners may now wonder:

Can a Swedish or a German home court really decide a dispute involving a British or Turkish patent?

Answer

Ah, we need to be careful here.

The European Court of Justice did not say that a European home court can cancel or revoke a foreign patent.

That remains a matter for the authorities and national courts of the country that granted the patent.

What the European Court of Justice said is that a European home court may assess the claims between the parties in a dispute.

That is an important distinction.

Host

Did you realize during the proceedings how important this part of the decision might become?

Answer

Not to this extent.

We started with a very practical enforcement problem.

Only later did it become clear that the European Court of Justice’s answers might have consequences far beyond the original case.

Today, the decision is discussed not only in connection with Turkish patents, but also British patents and even possible claims involving US patents.

Host

If you had to summarize the decision in one sentence, and I know, this is a very difficult task, what would that sentence be?

Answer

The European Court of Justice did not re-invent cross-border patent enforcement in Europe.

But after many years, it clearly gave it much more room to develop.

BLOCK 7 – THE REACTION OF THE IP COMMUNITY

Host

So, how was the decision received after it was published?

Answer

Ah, the reaction was very strong.

It quickly became clear that many people saw the decision as much more than just another patent case.

Many articles and commentaries described it as an important development in European patent litigation.

Host

Did that surprise you?

Answer

To some extent, yes.

Of course, we knew that the questions referred to the European Court of Justice were important.

But I was surprised by how quickly the decision became a major topic of discussion across the European patent community.

Host

Er, you later presented the decision at several conferences yourself, right?

Answer

Yes.

The discussion started right away.

I had the opportunity to discuss and present the case at several conferences and events, including the annual VPP conference in Germany and the Ingolstadt Patent Symposium.

I recently received an invitation to serve as a panel speaker on cross-border litigation at the AIPPI World Congress 2026 in Hamburg.

What struck me most was that both internal and external IP counsel were trying to understand the practice consequences of the decision.

Host

So, what was the question you were asked most often?

Answer

Almost always the same one:

How far does this decision really go?

People wanted to know whether this was simply a correction of earlier case law or whether it marked the beginning of a new phase in cross-border patent enforcement.

Host

And what did you say?

Answer

I would describe it as: neither a revolution nor a minor adjustment.

The European Court of Justice did not rewrite the system.

But it clearly changed the balance between the different jurisdiction rules.

That is why I believe the decision will continue to be discussed for many years, both in practice and in academia.

Host

Er, one year later, the case received the Managing IP Award as the “Europe Impact Case of the Year.”

What did that recognition mean to you?

Answer

First of all, it was a great honor for everyone involved.

But for me, the most important thing was the message behind the award.

The award showed that the decision affects much more than the parties involved in the case.

It has an impact on European patent practice as a whole.

And it also shows that the underlying jurisdiction questions reach far beyond patent law.

They are relevant whenever companies have to enforce rights across borders in an increasing international world.

That is what makes this case special.

Host

You often describe this case as a team effort.

Answer

Absolutely.

A case of this size is never the work of one person.

Many people contributed over many years.

On the BSH side, team members from different functions played an important role throughout the proceedings.

And we worked closely with external advisors in several countries.

So I see the award as recognition of a shared achievement rather than an individual success.

Host

Looking at the discussions today, would you say the debate is over?

Answer

Not at all.

I actually think we are only at the beginning.

There are still many practical questions that home courts will have to answer in the coming years.

That is exactly why the decision remains so interesting.

BLOCK 8 – WHAT DOES THE DECISION MEAN IN PRACTICE?

Host

Let’s move from legal theory to practical business implications.

What does this decision mean for patent owners and companies?

Answer

In my view, the biggest change is strategic.

Patent owners now have better opportunities to bring cross-border disputes together in one central proceeding.

At the same time, companies need to be aware that they may face claims at their European headquarters covering activities in several countries.

So the decision creates opportunities, but it also creates new risks.

Host

That sounds really like a significant shift; right?

Answer

I would call it a rebalancing rather than a revolution.

The European Court of Justice did not create a completely new system.

But it made clear that the general rule — suing a defendant where it is based — plays a much bigger role than many people had assumed.

As a result, the court at the defendant’s home base becomes much more important strategically.

Host

In the patent community, people often talk about cases such as Fujifilm v. Kodak, or Regeneron v. Formycon or Onesta v. BMW.

Why are those cases attracting so much attention now?

Answer

Because they show how quickly practice is already adapting to the new possibilities.

Fujifilm was important because it was one of the first UPC cases to test the logic that was later confirmed in BSH.

At that time, the BSH case was already pending before the European Court of Justice, and the Advocate General had expressed a view that pointed in that direction.

Against that background, the Düsseldorf Local Division accepted jurisdiction over the UK part of a European patent even before the European Court of Justice delivered its judgment.

In June 2026, based on the principles confirmed in BSH, the UPC Court of Appeal further developed that approach.

Host

And what happened in Regeneron v. Formycon ?

Answer

In the Regeneron case, the Munich home court applied the approach confirmed in BSH and granted a Europe-wide injunction based on a European patent. That was one of the first examples of a national home court using the BSH framework in practice.

That demonstrates that the decision is not just an academic discussion.

It already has practical consequences.

Host

And what about the Onesta case?

Answer

The Onesta case shows that the debate has moved beyond Europe.

After Onesta attempted to assert two U.S. patents before the Munich home court, BMW obtained an anti-suit injunction from a Texas federal court.

Judge Albright took the view that U.S. patents should generally be decided by U.S. courts.

The Onesta case therefore illustrates that the limits of the BSH logic are now being tested internationally.

Host

Did that end the proceedings in Munich?

Answer

Not necessarily.

What makes the case interesting is that the Texas injunction was directed against Onesta, not against the Munich home court.

At the same time, Onesta appealed Judge Albright’s decision in the United States.

The Munich home court therefore decided to stay the case for the time being.

Importantly, however, the Munich home court did not reject its own jurisdiction.

So, at least for the moment, the underlying question remains open.

Host

Can a European home court ultimately decide infringement claims based on U.S. patents?

Answer

That question has not yet been answered.

But the case has already shown that such an attempt can trigger strong reactions outside Europe.

In that sense, the debate has moved from a European jurisdiction question to an international jurisdiction conflict.

Host

For our audience of internal and external IP counsel, what are the main lessons from this decision?

Answer

For me, there are three key takeaways.

First:

Patent enforcement has become more international.

National litigation remains important, but companies should think across borders from the very beginning.

Second:

The choice of forum is becoming more important.

Where you bring a case may be just as important as the legal arguments themselves.

And third:

Long-term commitment matters.

This case shows that major developments rarely happen because of a single filing or a single hearing.

They usually result from pursuing a clear strategy consistently over many years.

Host

Do you think this decision will also influence the Unified Patent Court, the UPC?

Answer

Yes, I believe so.

The decision fits into a broader trend toward more centralized patent litigation.

Both, the UPC and the BSH decision are driven by the same idea:

Handling cross-border disputes more efficiently and more consistently.

What is interesting is that many of the questions were faced in BSH versus Electrolux are now reappearing in a new form before the UPC.

Cases like Fujifilm versus Kodak show that the discussion about jurisdiction, scope, and cross-border effects is far from over.

Institutions may be new.

But the underlying challenge remains the same:

How do we enforce patents effectively across borders?

Host

Some commentators even see this as a step toward a more independent European patent judiciary.

Do you agree?

Answer

To some extent, yes.

Professor Hanns Ullrich, who supervised my doctoral studies on the legal protection of a then new semiconductor technology many years ago, recently observed that the UPC is gradually developing its own European case law.[DH1]

I think that is — again — a very accurate observation.

If you look at the developments since BSH and the first UPC decisions, you can see that European patent litigation is becoming more connected.

National courts will remain important.

But at the same time, we are seeing a more integrated European patent system taking shape.

How far that development will go remains to be seen.

Host

Looking back on the entire journey — from a vacuum cleaner patent, through litigation in several countries, all the way to the European Court of Justice and an award-winning decision — what is your personal conclusion?

Answer

My main conclusion is that innovation needs effective legal protection.

But it also requires the willingness to challenge established assumptions and explore new approaches.

For me, the BSH versus Electrolux case shows that persistence, teamwork, a willingness to challenge accepted assumptions, and a long-term strategic view can sometimes lead to developments that go far beyond the original dispute.

BLOCK 9 – THE PERSON BEHIND THE DECISION

Host

Ernst-Peter, today we have talked a lot about jurisdiction, patent enforcement, and European case law.

When you look back at this journey, which has lasted almost twenty years, what impressed you most?

Answer

Probably the realization that major developments rarely follow a straight line.

When we started thinking about the case, we were dealing with a very practical problem.

Nobody said: Let’s create a landmark decision of the European Court of Justice.

We were simply looking for a reasonable and practical solution for a company.

The fact that this would eventually lead to a decision with Europe-wide impact was something nobody could foresee at the time.

Host

Were there moments when you thought the case might fail?

Answer

Of course.

Whenever a case lasts many years, there will be setbacks, new questions, and unexpected developments.

That is exactly why persistence is so important.

In the end, success is often not about one filing or one hearing.

It is about staying focused on a clear objective over a long period of time.

Host

You often talk about teamwork.

Is that one of the main lessons from this case?

Answer

Absolutely.

A case of this size requires commitment from many people and institutes over many years.

On the BSH side, my role was to help maintain the strategic direction and long-term commitment that such a case requires.

At the same time, experts from different functions within BSH contributed technical expertise, testing, documentation, and practical support throughout the proceedings.

On the legal side, Roman Sedlmaier and his team at IP-Counsels Gigerich & Sedlmaier (IPCGS) helped develop the cross-border litigation strategy and the overall case architecture.

Our Swedish litigation team then carried the arguments through all stages of the proceedings.

Looking back, it was the combination of institutional commitment, technical expertise, strategic leadership, well-designed case architecture, and consistent execution that made the difference.

Host

One final question.

What advice would you give to young internal or external IP counsel?

Answer

Stay curious: Don’t be afraid to question accepted assumptions.

Be patient: Intellectual property is usually a marathon, not a sprint.

And never forget that every patent dispute involves an invention, a business, and many people who have worked hard to bring that innovation to market.

For me, that connection between technology, law, and strategy is what still makes this profession so fascinating today.

Host

Ernst-Peter, thank you very much for joining us today on IP Fridays.

Answer

Thank you.

It was a pleasure to be here.

My co-host Ken Suzan and I are welcoming you the episode 176 of the IP Fridays Podcast. Today’s interview guest is returning guest Franklin Graves, who is a senior counsel at Linkedin and teaching IP law at Emerson College. With my co-host Ken Suzan he is discussing how the law for creators has dramatically changed in the past years.

Franklin Graves is expressing his personal views and not the views of Linkedin or Microsoft. He is talking about the paper “Upload Complete” before he joined Linkedin.

Bio: https://www.linkedin.com/in/franklingraves/

Paper: https://papers.ssrn.com/sol3/papers.cfm?abstract_id=5271442

Website: https://creatoreconomylaw.com/

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

Richard Meade, a judge on the UK High Court and one of the most prominent figures in European patent law, was appointed Lord Justice of Appeal at the British Court of Appeal on June 12, 2026. Meade played a key role in numerous landmark British patent decisions, particularly in the area of standard-essential patents (SEPs) and FRAND licenses.

In Insulet Corp. v. EOFlow Co., No. 2025-1807, the U.S. Court of Appeals for the Federal Circuit completely overturned the original $452 million judgment (which had already been reduced by the District Court to $59.4 million) in favor of Insulet.

In its decision of June 2, 2026, in the case of Fujifilm v. Kodak, the UPC Board of Appeal provided comprehensive clarifications regarding so-called “long-arm jurisdiction”—that is, the question of whether the UPC can also rule on national patent claims outside the UPC territory (such as in the United Kingdom). In 14 guiding principles, the judges established specific procedural rules for various categories of cases. There is no automatic UPC jurisdiction over national patent claims outside the UPC territory.

The Munich Regional Court has issued an arrest warrant against the managing director of Polytech Health & Aesthetics GmbH because he is alleged to have continued to exploit the Brazilian company Silimed’s patent for breast implants despite a preliminary injunction.

A number of IT and automotive industry associations—which are among the most frequent users of Inter Partes Reviews (IPR) at the U.S. Patent and Trademark Office—have filed an amicus brief with the Supreme Court, urging the Court to grant Google’s certiorari petition.

An attorney for a Las Vegas performer has asked a California federal judge to temporarily prohibit Taylor Swift from using “The Life of a Showgirl” as a trademark while the trademark lawsuit is pending. Swift’s attorney called the lawsuit baseless.

And now let’s hear Ken discuss creator law with Franklin!

AI, Platform Law, and the Creator Economy: What Businesses Need to Know Now

Franklin Graves has spent his entire career watching digital content move through systems that most people never see. He started in marketing at a major music label right out of law school, then represented individual creators on YouTube in a pro bono capacity, then moved to the platform side at Eventbrite, and today works as Senior Product Counsel at LinkedIn, where he focuses on AI, data, and the regulatory questions that come with both. His recently published law review article, Upload Complete: An Introduction to Creator Economy Law, is the first academic paper to address the creator economy as a distinct legal field. In a recent episode of the IP Fridays podcast, he spoke with host Kenneth Suzan about responsible AI development, platform regulation, and what it actually means to own your audience in a world where the rules keep changing overnight.

From Content Creator to Platform Lawyer

The through-line in Graves’ career is a genuine understanding of how content moves from an idea in someone’s head to an audience on a screen. That experience, he argues, is precisely what in-house counsel needs right now. Lawyers working on AI and product development cannot afford to sit at a distance from the technology they are advising on. They need to use the tools, experience them as a creator or end user would, and understand the nuances of how a product actually operates before it reaches the public. Understanding the product first is the precondition for everything else.

That philosophy translates directly into how he approaches responsible AI implementation. The landscape of AI standards is crowded: NIST frameworks, the EU AI Act, sector-specific guidance, and a growing body of industry-adopted best practices. The challenge for in-house counsel is not knowing that these standards exist. It is making them actionable for the engineering and product teams they support. Abstract principles need to become concrete controls and workflows. Graves offers one practical shortcut: most companies already have open source software review processes that involve the right stakeholders, the right sign-off levels, and the right security checks. Layering the specifics of generative AI or large language models onto those existing processes is far more efficient than building something new from scratch.

A Fragmented Regulatory World

The geopolitical dimension of AI regulation is something Graves thinks about constantly in his role at LinkedIn. The EU AI Act, shifting US executive orders, and country-specific approaches to data privacy have created a regulatory environment that can change the rules of the game without warning. His analogy is instructive: creators have long understood what it means to build a community on a platform they do not own. An algorithm change, a policy update, or a government ban can wipe out years of audience-building overnight. Businesses deploying AI tools globally now face a structurally similar problem. The response, for creators and for platforms alike, is to build resilience rather than rely on stability that may not last.

TikTok is the clearest recent example. When the platform faced the prospect of being shut down in the United States on national security grounds, it triggered a broader conversation about platform dependence that had been building for years. Creators who had invested their entire business in one platform suddenly confronted the possibility that their audience could simply disappear. The lesson is not that platforms are bad. It is that concentration of any kind, whether it is your audience, your data pipeline, or your regulatory compliance strategy, creates fragility.

What Is a Creator, Legally Speaking?

One of the central contributions of Graves’ law review article is definitional. The terminology matters more than it might seem. When courts and regulators talk about creators without a shared understanding of what that word means, the resulting legal analysis tends to miss the mark. Graves draws a distinction between users who post content, creators who post with the intent to build an audience and eventually monetize it, and influencers, a subset of creators who are actively running a small business through their content. The difference is intent. A parent posting family photos on Facebook is a user. Someone building a subscription community around their professional expertise is running a business, and the legal framework that applies to them should reflect that.

That distinction matters practically when it comes to liability. As more creators build their own platforms, whether through custom membership sites, open source tools like Ghost, or federated social networks, they take on obligations that previously fell to large platforms: content moderation policies, privacy notices, terms of service, and compliance with data regulations across multiple jurisdictions. A creator in Tennessee running a membership platform with subscribers in Germany is operating a global business, whether they think of themselves that way or not.

Protecting Children Online: A Question Without a Clean Answer

The tension between age verification and privacy is one of the more difficult problems in platform law right now. Australia, several European countries, and a growing number of US states have introduced or passed minimum age requirements for social media accounts. The technical challenge is real: verifying age online requires collecting identifying information, and collecting identifying information creates privacy risk, particularly for the young people the laws are designed to protect. Who should bear the responsibility for that verification is also unresolved. Is it the platform? The app store? The mobile operating system? Graves does not pretend there is a clean answer, but he points to the mobile layer as an underexplored option. The Apple App Store and Google Play Store already have significant leverage over which apps reach users on their devices. Whether that leverage should extend to age verification is a question that deserves more attention than it currently receives.

The Right of Publicity in the Age of AI

Voice cloning, digital replicas, and AI-generated synthetic media have pushed the right of publicity into territory that traditional IP law was not designed to cover. Trademark law, copyright law, and existing publicity rights each capture part of the problem but none of them covers it completely. The result, as Graves describes it, is a period of experimentation: lawyers filing trademarks on vocal sounds and phrases, states updating their publicity statutes to explicitly mention artificial intelligence, and entertainment unions negotiating over who controls a performance and any AI-generated iterations of it.

Tennessee’s Elvis Act is a concrete example of the legislative response: the state updated its right of publicity law to include voice and to reference AI directly. Similar efforts are underway elsewhere. The underlying challenge is calibrating protection so that it gives creators and performers meaningful control over their likeness and voice without foreclosing the development of generative AI systems that depend on broad rights to process and learn from content. Somewhere between those two interests, a workable legal framework needs to emerge.

The brand deal context may be where the issue becomes most immediately practical. When a brand partners with an influencer and the campaign involves generative AI in any form, the contract needs to address control explicitly. Who has final approval over how the influencer’s likeness or voice is used in AI-generated deliverables? What happens to those assets after the campaign ends? These are not hypothetical questions. They are contract drafting problems that any brand counsel or creator attorney should be addressing today.

What Comes Next

Graves is cautious about predictions, but his sense of direction is clear. The regulatory environment will continue to fragment before it converges. The right of publicity will be updated, imperfectly, in more jurisdictions. Creators will continue to move toward owning more of their infrastructure. And the lawyers who do this work best will be the ones who understand the technology well enough to translate it into practical, defensible decisions for the people they advise.

Full Transcript:

Ken Suzan: Thank you, Rolf. Our returning guest today is Franklin Graves. Franklin is the founder and editor of Creator Economy Law, a website and newsletter that educates creator economy professionals on the intersection of law and policy with the world of creators, brands, and platforms. Franklin also published the first law review article focused on the creator economy, Upload Complete, an introduction to creator economy law. He regularly appears across news and media outlets as a commentator and contributor with a focus on educating creators and raising awareness of all legal aspects of the creator economy. Franklin is based in Nashville, Tennessee.

Ken Suzan: Franklin was invited to participate as one of the creators and creator economy professionals in the first ever White House creator economy conference. Franklin works full time as a product counsel at LinkedIn Corporation. As a member of the product and data team, he focuses on emerging issues in AI and data. Franklin previously held roles on the technology law group at HCA Healthcare, the commercial legal team at Eventbrite, and the business and legal affairs team at Naxos Music Group. Welcome back Franklin to the IP Fridays podcast.

Franklin Graves: Thank you so much for having me. It is exciting to be back and reflecting over the last decade since I last joined and also the paper that I wrote that dives into this in more detail. So I really appreciate it. And yes, full disclosure, I currently work for LinkedIn, which is a subsidiary of Microsoft. I’m here in my personal capacity to talk about this, the paper I wrote before joining LinkedIn and all of that. So thank you so much for having me back.

Ken Suzan: Excellent. So Franklin, since your last appearance on IP Fridays in 2017, your career has evolved significantly. You are now senior product counsel at LinkedIn focusing on AI and data. How has working inside a major tech platform changed your perspective on the legal frameworks governing digital content compared to when you were viewing it purely from the creator side?

Franklin Graves: I appreciate that question because when I wrote the article, I did not work for LinkedIn. And I had been coming from a history in my career where I, right out of law school, worked for a record label like we talked about almost 10 years ago. And I was on the content creation side. I’ve represented a major distributor of classical music digitally at the time. And that was my first exposure to understanding how content was taken from the initial inception stage from creators and routed through all the various digital platforms that were at the time still evolving and even arguably still today continue to evolve. The early days of YouTube Music launching and then Apple Music launching, and then going through all the phases of high-res audio and everything that came after that. So that was an interesting perspective to start my career with. And then I went to Eventbrite, which is a ticketing platform, but was also focused on elevating event creators. They kind of took on that moniker of “Hey, we are event creators that we support.” And that was arguably my first exposure to the platform side, the tech platform side of it, because Eventbrite is a platform. And so then I evolved from there in my personal capacity, in a pro bono capacity representing individual creators across the YouTube space. And that’s what we talked about a little bit back when I first came on the podcast.

Franklin Graves: Over the last decade, it’s been a chance to grow my own understanding of the creator economy. The terminology “creator economy” came around. And then now on the other side of it, having written the article and all that, and now being fully in-house at LinkedIn, I truly am experiencing a social media platform. LinkedIn is of course arguably way more than just the platform itself. There are so many different avenues to it, but it is a chance for me to understand what it is like working for a company that is operating the platform that people are distributing content on. There’s a user journey to content and all of that. So it’s definitely enhanced and given me a different perspective from a major tech platform side. And part of my role at LinkedIn is really heavily focused on understanding regulation and how that from an AI and data perspective impacts the company. And so I’ve been really leveling up my game over the last year and a half that I’ve been here, understanding mostly EU regulations, but also US regulations that are still in their infancy when it comes to AI. But really when it comes to privacy and data, those are pretty well established across the board. It’s been kind of a combination of what I learned at Eventbrite, because I went to Eventbrite when GDPR was going into effect. And so that was an eyes-wide-open moment of getting in the weeds with negotiating data processing agreements, understanding data transfers and cross-border data transfers and the like. So it’s been kind of an evolution as the laws and regulations have evolved. So has my career, so has my own understanding, so have the platforms’ responses to those laws and regulations. And I’m sure that probably resonates with a lot of your listeners who have also been growing their practice and their understanding as the laws and regulations in this realm have been evolving too.

Ken Suzan: Yes, indeed. Now let’s switch gears and talk about AI. You advise on AI and data daily. As platforms integrate generative AI tools into their tech stacks, what are the most critical best practices in-house counsel should be adopting right now to embed responsible AI principles into product development?

Franklin Graves: So as an attorney, one of my key roles is to understand the technology. Even representing creators and working for creator platforms, that’s something I’m constantly trying to do: put myself in the shoes of being a creator. And I think I talked about this last time I was on, but I come from a background where I was working for a major label doing marketing, video editing, social media work. And I was creating content. I understood the whole life cycle from the inception point of an idea to execution and then to the final delivery and distribution of that content to an audience within a major music label. And so part of that is the same thing that I think attorneys, especially in-house, should be doing: using the tools that the product and engineering teams are either developing in-house or partnering with third parties to develop, or a combination of the two. Using them, understanding them, using them as a creator would, using them as an end user or a client or customer would. And making sure that if you understand the product and understand the nuances of how it operates, and being a part of the iterations of that internally before it fully ramps, that really gives you a chance to understand: okay, we have a lot of responsible AI principles and standards and protocols that are in existence right now, whether it’s NIST, whether it’s based on the EU AI Act or anything and everything in between. It’s understanding how to apply those and bring those into a product and an engineering environment in a way that is practical and actionable for the people that you’re supporting, the stakeholders you’re supporting. So I think one of the critical best practices is, number one, understand the product or features that you’re supporting.

Franklin Graves: And then understand how you as an attorney can use your expertise and understanding of responsible AI practices, whether it’s a regulatory standard or an industry-adopted standard or a hybrid of the two, to leverage those and implement those, break those down and make them into actionable controls and processes and flows that work within your existing infrastructure. That’s a lot of high-level talk, but that’s the general idea. One concrete example we talk about frequently is with open source AI. If you’re working with a product team or an engineering team that is taking an off-the-shelf open source model and bringing that in-house, a lot of times companies have pre-existing open source processes that cover the use of open source software or code. Piggyback on that. That’s the easiest quick win for attorneys: leveraging your existing open source processes to just build on top of that the AI flavor and layering. It’s not very much that you have to do, but the underlying process of the key stakeholders that need to be involved in the review, whether it’s security, whether it’s executive sign-off if it gets to that point, even export control considerations should already be part of your existing open source software process. So layering in on those existing processes the specifics of generative AI or large language models that you’re trying to bring in is a great way to put this into practice.

Ken Suzan: Now looking at the geopolitical landscape that we currently have, we have the EU AI Act setting strict standards and shifting US executive orders. How should platforms and brands prepare for this fragmented regulatory environment when deploying AI tools to a global user base?

Franklin Graves: It’s a great question. It’s something that is still evolving, I think is fair to say. I would equate it, as I do in the paper that I wrote, to how creators and arguably brands don’t own the platforms that they’re building their communities on. That spawned this concept of de-platforming or going into building your own platform, a decentralized platform of sorts, and owning your community. That gives you that control and takes away the level of instability that can come for creators trying to build a business on a platform they don’t own, they don’t control when certain updates happen, when algorithms change, when tools and functionalities either become available or go away completely. So it’s very similar to what we’ve been experiencing in a regulatory environment where we have geopolitical complexities, for lack of a better term, that can overnight seemingly disrupt the way in which a platform or even a multinational brand is able to connect and reach an audience or continue to leverage the user base that they’ve built. I think TikTok is a great example of that, where it became a national security concern and suddenly it was facing an executive order that required it to be effectively disabled in the US or completely owned and operated by a US entity. All the mechanics and technicalities of whether it’s actually possible and still have a global platform with a global user base is a whole different discussion. But that’s an example of very similar considerations that are now not just a discussion point at the creator level or the individual brand level, but also in a much broader context at a platform level as well.

Ken Suzan: Franklin, let’s now shift gears and talk about your article. In your recently published journal article, Upload Complete, which we will have linked in our show notes, you advocate for a shift in terminology from internet creator law, a term used during our first podcast almost a decade ago, to creator economy law. Why is this distinction important and how does it change the way legal practitioners should view the ecosystem of creators, brands, and platforms?

Franklin Graves: Oh yes, this is part of the reason why I wanted to write the article: to lay this foundation of understanding. Because at the time I’d written the article, the term creator economy and creator had really not appeared but for maybe once in an actual court decision. And it was kind of focused on influencers and this concept, and it was just not getting it right. And so it was also, as you mentioned, when we first spoke I was even using the term internet creators. And I think that was something that was common at the time. The “internet” portion as a qualifier has since dropped off. And now for purposes of the creator economy, the term creators refers to individuals, it can be small businesses, which is what we’ve seen from a regulatory standpoint, how these small businesses are being impacted by regulations. But essentially creators in the article I pin in the context of intent. What is the intent behind the person or the small business that is posting content, trying to build a community and form a community in a virtual environment? And then that can even spill over into real physical world environments. And so the intent is kind of what I look at.

Franklin Graves: And I have a chart in the article that has a diagram showcasing the overlap of what I refer to as “users generating content.” It’s a play on the concept of user-generated content, UGC. Users generating content is that large bucket of anyone posting on a platform of some kind. And within that large bucket, that large circle, are smaller subsets. You have creators, you have brands. Those are really the two buckets you can put people into. Otherwise it’s like your grandmother or your parents posting content on Facebook or Instagram, and those are everyday users of a platform. The distinction to get into that subcategory of being a creator more so has been analyzing the intent behind the posting. Are you posting content to build an audience, to build a community, to eventually have a chance to monetize the following that you’re bringing in or sell services or something like that? Brands are posting for that reason. Creators are maybe posting for that same reason. But even within the creator category, there’s a subcategory of influencers that are trying to sell something, that are trying to build more than just an awareness of who they are, their influence. They are trying to do brand deals, partnership deals, upsells and all that, and start an actual small business aside from just the content itself that they’re creating. So that’s kind of the distinctions that I make in the paper. And that’s why it’s important to understand and lay that foundation, that anyone can post content online, but the intent, the why behind their posting that content, really does ultimately matter, especially when you’re looking at it from a court case or from a regulatory standpoint.

Ken Suzan: Now, Franklin, we’re seeing unprecedented geopolitical activity around platform ownership. For example, the US legislation targeting TikTok and Brazil’s recent temporary ban of X. How do these macro-level battles impact the day-to-day livelihood of creators? And how can they legally and operationally protect themselves?

Franklin Graves: So the shift that we’re seeing, and I alluded to this earlier in our conversation, is this concept of Web 3. And that term may or may not be really popular anymore, but that’s essentially what we’re looking at: a shift into a federated, decentralized operation of a platform. So instead of one owner, one company, one entity owning and operating the platform, it’s decentralized. Anyone can start up a server, and it’s interoperable, meaning anyone can plug and play and connect to that larger network. And it creates this unified social network experience. Within each operating node of that network, there can be your own decisions around content moderation, your own decisions around the hosting providers you use, where you’re operating out of, the terms and conditions that apply to that. But the flip side is that instead of creators posting and sharing in a closed environment run and controlled by a singular entity, you’re now experiencing a peer-to-peer type operation where your experience can change based on which server, which node, which user you’re engaging with. You might have content that’s acceptable in one area but not acceptable in another, and maybe it just doesn’t even show up in that other area.

Franklin Graves: But from a liability standpoint, as creators start to build their own networks and communities, even outside of a concept like the fediverse, it’s even down to creators building their own communities through online courses, subscription membership-based platforms that they run on their own website. There’s open source software out there, even something called Ghost, where you have memberships. And that is a creator or a small business in the creator economy that is now taking on the obligations that would typically fall upon a platform. They need to take into consideration terms and conditions, privacy policies, legal aspects, and regulatory considerations for running a platform, especially in a global world. So it’s a lot of liability that then shifts over to those small businesses and even brands sometimes that are doing the same thing. Whether it is something as simple or complex as content moderation or all the way up to monetizing an audience, this new world where creators can spin up and run a platform all dovetails back to the concept of creators not feeling like they have control in reaching the audience and the community that they’re building on an individual platform. And so this really became more mainstream conversation with TikTok and the issues around it potentially being shut down in the US. That was kind of the mindset shift and eyes opening for many creators, especially within the influencer subset, of realizing: we need to make sure that we have a way to reach the audience we’ve built if the individual platform that we’ve committed to over the last year or three years or so is no longer available. We need a way to continue that relationship outside of that one platform controlling it.

Ken Suzan: Franklin, we have a few minutes left and a number of topics. So I’m going to switch gears and talk about a few issues. First, a major emerging topic in your paper is the evolution of protecting kids online. With state-level age-gating laws like the CAADCA and the recent FTC updates to COPPA, how should platforms navigate the significant tension between strict age verification mandates and the privacy and First Amendment rights of their users?

Franklin Graves: Man, that is a whole discussion to unravel. It is a consideration that we’re seeing happen again, going back to the geopolitical nature of everything. Countries like Australia and certain countries in Europe and now even individual states in the US are trying to look at ways, and some of them have already put into place minimum age requirements before you can even sign up for an account with a social media platform. One of the things I’d just highlight quickly here is that one of the tensions is around how you verify someone’s age online and still maintain the ability to be at least pseudonymous. How do you still have a level of privacy, autonomy, and protection when it comes to having to provide something like a driver’s license or have parental consent tied and connected to an account managed by a parent in a situation where maybe it’s not appropriate or not beneficial to the child in that manner? But then maybe there are counterbalancing factors that outweigh that. All of that comes down to the technicalities of how it’s actually implemented and maintaining the sense of openness and freedom that we’ve had on the internet to date. And then the other element there is, since a lot of the internet that we think of today is more so through mobile applications, is it something that the mobile operating system providers and app store providers should be thinking about? So whether that’s the Google Play Store or the Apple App Store, where does that initial age verification need to fall? Is it at the platform level? Is it the app store or mobile device management level or something else? Yeah, there’s a lot to discuss there. And a lot of the issues we’re seeing with how the internet is changing in terms of being able to browse a website without disclosing personal information that might not have been required before is largely stemming from a focus on protecting children online.

Ken Suzan: It sounds like, Franklin, we could have another episode covering lots of issues connected with that one topic alone.

Franklin Graves: I would absolutely agree with that. There’s a lot going on there. And again, it’s different across the world. And so I know you all have a global listener base. And so there’s a lot of nuances to that whole discussion too, that are worth exploring.

Ken Suzan: Last question for today’s episode is regarding the right of publicity. With the explosion of AI-generated synthetic media, digital replicas, and voice cloning, the right of publicity is taking center stage. What are the biggest legal risks for brands partnering with influencers right now? And how can creators protect their most valuable asset, their likeness?

Franklin Graves: That’s a great question. I think we’re seeing kind of a throwing-spaghetti-against-the-wall-to-see-what-sticks approach right now by a lot of different parties, whether it’s trademark attorneys, whether it’s general entertainment attorneys or whoever. For example, we’ve seen Taylor Swift filing trademarks to protect certain sounds of her voice and phrasing that she uses. It’s a difficult area because in the realm of generative AI with deep fakes and virtual avatars, that is where it gets tricky, because traditional IP laws are just not able to fully cover that spectrum. It’s a piecemeal approach, but even then it doesn’t fully cover it. So for example, I’m based in Tennessee and a couple of years ago we had the Elvis Act that updated our right of publicity law to add voice and to explicitly reference artificial intelligence. And so that’s the kind of effort we’re probably going to continue to see: efforts to develop some framework around protecting what is essentially a privacy right, in a manner that doesn’t restrict generative AI systems from continuing to develop and operate the way they’re operating now, while layering in those protections so that in the US at least a First Amendment right doesn’t necessarily get squashed, and those traditional well-recognized efforts to not overregulate a technology in its early stages are respected.

Franklin Graves: And so I think a lot of what we’re seeing is just a need to update laws. The SAG-AFTRA debate and the strikes that happened around maintaining control of your performance and any iterations of that, or building upon that by a media company that might come later, it’s all on the table right now and still being discussed, still being worked out. I think in the short run, a lot of times if it’s in a brand deal, the key question is: if you are using generative AI to enhance in some way the final deliverable for the campaign, who has control over that? Who has final say and sign-off on how that likeness or that digital replica or that person’s voice is represented? And even outside of the brand space, we’ve seen actors like James Earl Jones signing over certain aspects like their voice and allowing it to continue to be used in these manners powered by generative AI as Darth Vader. And I think I saw something that Boy George was even starting up an AI company that allows musicians, the original recording artist, to rerecord new versions of their masters so that they don’t miss out on that revenue. It’s powered by generative AI, by taking their voice now, which is significantly different than it was back in the 80s, and using generative AI to make it sound closer to the original, but all based on their current performance. So I think it’s still an evolving area. And what’s interesting too is on the platform side, we’re seeing the early stages of platforms like Google starting to acknowledge and rely on the license grant contained in their terms of service for YouTube, which grants them broad rights to use the content to run their platform. So all that to be said, it’s still early stages. I’m very interested to see where we go from here in the future, especially from a global perspective as well.

Ken Suzan: Franklin, I could spend hours talking to you about this. You’re such a knowledgeable person on these topics. Maybe in a few years, will we connect again and talk further on AI and all the things that are yet to be developed?

Franklin Graves: Thank you. Yeah, it doesn’t have to be another decade. Maybe we can cut it to half a decade, given the pace at which technology is going now.

Ken Suzan: Sounds good, Franklin. Thanks again for being on the IP Fridays podcast.

[powerpresss]

My co-host Ken Suzan and I are welcoming you to episode 175 of our podcast IP Fridays! Today’s interview guest is Bruce Dearling, patent attorney and partner at Hepworth Browne in the UK, and we talk about how non-technical features must be considered when assessing inventive step of patents at least according to recent decisions of the UK supreme court and the Unified Patent Court.

Profile of Bruce Dearling

UK Supreme Court Emotional Perception AI Limited

UPC Abbot vs Sinocare

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

On May 20, 2026, the Swiss Federal Council adopted the fully revised Patent Ordinance, which will enter into force on January 1, 2027, together with the revised Patent Act. In the future, the Swiss Federal Institute of Intellectual Property will prepare a mandatory search report for each application; applicants can choose between a partially examined version and a full examination that assesses novelty and inventive step. The full examination costs an additional 300 Swiss francs, and renewal fees will increase by a total of eight percent over the 20-year term.

On May 19, 2026, Asus entered into a licensing agreement with the Wi-Fi multimode patent pool managed by Sisvel, thereby ending all ongoing infringement proceedings. Sisvel bundles standard-essential patents in the pool from, among others, Atlantia, ETRI, and Mitsubishi Electric.

On May 18, 2026, the UPC Local Chamber in Düsseldorf rejected Align Technology’s application for a preliminary injunction against its Chinese competitor Angelalign. Angelalign may continue to sell its clear aligners within the UPC jurisdiction. Our partners Dirk Schulz, Ulrich Storz, and Wanze Zhang, together with Arnold Ruess, successfully represented Angelalign.

The U.S. Patent and Trademark Office (USPTO) announced midweek that, since October of last year, it has invalidated or is seeking to invalidate approximately 10,500 trademark applications and registrations in eleven administrative orders. Reasons include forged attorney signatures and the fabrication of non-existent filing requirements. This stems from ongoing abuse of the U.S. trademark system, primarily by non-U.S. applicants, which can lead to conflicts with validly registered trademarks for legitimate businesses.

On May 12, 2026, the British Court of Appeal overturned a lower court decision that would have required Nokia to grant interim licenses for video coding patents. The court found that Nokia’s license offer to the Taiwanese manufacturers Acer and Asus had already been made on RAND terms.

In May, the U.S. Department of Justice (DOJ) filed a brief in the ongoing Corteva v. Inari litigation, expressing antitrust concerns regarding certain patent practices in the field of plant breeding. This marks the first time the agency has actively intervened in a biopharmaceutical patent dispute with implications for seed innovations.

Episode 175 of the IP Fridays podcast was a conversation I will not forget quickly. My guest Bruce Dearling, partner at Hepworth Brown in the UK and a patent attorney for 36 years, took a case through every level of the British court system up to the Supreme Court and, in doing so, fundamentally changed patent law for AI inventions in the UK. The case is called Emotional Perception, and its effects reach well beyond British borders.

Below I summarize the key points from our conversation. The full episode is available at IP Fridays.

A. What Is the Emotional Perception Case About?

The underlying invention concerns artificial neural networks. Specifically, it relates to a method of closing what is called the semantic gap at the output of a neural network. That sounds abstract, but the idea is straightforward: a neural network always produces an output that does not fully correspond to what a human would actually expect or feel. Closing that gap brings the system closer to human perception and human expectations.

Bruce Dearling drafted this application himself and filed it at the UK Intellectual Property Office (UKIPO). The Office rejected it as excluded subject matter, characterizing it as essentially a computer program as such. The legal basis for that rejection was the Aerotel decision from 2006.

The case then went to the High Court, which found in favor of the applicant. The Court of Appeal reversed that decision. Then the UK Supreme Court stepped in and changed everything.

B. The Aerotel Test and Its Flaws

Since 2006, the Aerotel test had been the standard British method for assessing whether an invention falls within the excluded categories under patent law. It was a four-step approach: construe the claim, identify the actual contribution the invention makes to human knowledge, ask whether that contribution falls solely within excluded subject matter, and finally check whether the contribution is technical in nature.

The problem Dearling described in our conversation is that Aerotel reverses the logical order of the analysis. You start with the contribution and only then ask about the exclusions under Article 52 EPC. The UK Supreme Court described Aerotel in its judgment as “unsound law” and overturned it. The EPO’s Technical Boards of Appeal had previously called Aerotel “disingenuous,” which at the time led to a public dispute between the British courts and the Boards. With the Emotional Perception ruling, that conflict has now been resolved in favor of harmonization with the EPO.

C. What the UK Supreme Court Decided

The Supreme Court made two central findings. First, the exclusion of computer programs “as such” is overcome as soon as a claim includes any piece of hardware. It does not matter whether that is a processor, a memory module, or any other component. The threshold is deliberately low. Dearling described this as the “any hardware” approach, which aligns fully with the EPO’s position following G1/19.

Second, and in Dearling’s assessment the more important finding: when assessing inventive step, the invention must be considered as a whole. The Court introduced what it called an “intermediate step,” an analytical stage in which the interactions between all features of a claim are examined before the question of inventive step is addressed. Non-technical features cannot simply be struck out if they contribute to the overall technical effect of the invention.

D. Inventive Step: The Intermediate Step

This is the heart of the judgment. In EPO practice, Dearling said, it happens regularly that examiners strike through features they consider non-technical and thereby fail to assess the invention’s inventive step correctly. A recent Technical Board of Appeal decision, T 1249/22, already criticized this approach: a claim directed at a technical solution to a problem can be patentable even if the underlying problem is non-technical in nature.

Dearling recalled a remark made by a Board of Appeal member at a hearing he attended years ago: “We understand that examining divisions can operate with a degree of mental laziness and that it’s too easy to throw too many things out of the basket when considering the issues of inventive step.” That quote stayed with him because it names a structural problem that the intermediate step now addresses directly.

The British method for assessing inventive step is the Pozzoli test, which differs from the EPO’s problem-solution approach. The Supreme Court explicitly retained Pozzoli because the problem-solution approach, in its view, is structurally infected with hindsight reasoning: you already know the invention, you work backwards to formulate an objective technical problem, and then you ask whether it would have been obvious for the skilled person to arrive at precisely that solution. Dearling sees this as a source of unfairness toward genuine inventions.

E. Alignment with the Unified Patent Court

In April 2025, the Court of Appeal of the Unified Patent Court issued a decision in Abbott v. Sinocare (APP_000000901/2025, judgment of 17 April 2025). Dearling pointed out that this decision uses language and reasoning strikingly similar to the UK Supreme Court’s Emotional Perception ruling of February 2025.

That is significant because the UPC is bound neither by UK courts nor by the EPO. The overlap suggests voluntary convergence. Dearling reported a conversation with a person close to the EPO, whom he did not name, who used the word “permissive” to describe the UK Supreme Court’s approach and indicated that the EPO might move toward it. Whether and how quickly that happens remains to be seen. What is clear is that the UPC, as the new European patent court, is setting its own standards, and the question of how to handle non-technical features in inventive step assessment is now being asked at multiple levels simultaneously.

F. Implications for the EPO and Practice

The EPO is not directly bound by the ruling. It is an administrative body, not a court. Dearling is nonetheless optimistic that change is coming. On one hand, external pressure is building: when the UK Supreme Court and the UPC articulate similar principles, convergence becomes hard to resist. On the other hand, Article 27.1 TRIPS requires all contracting states to make patents available in all fields of technology. Examiners routinely striking non-technical features from AI claims and rejecting them on that basis sits uncomfortably with that obligation.

For the underlying application in the Emotional Perception case, the ruling has a pointed consequence. The Supreme Court did not grant the patent itself; it referred the matter back to the UKIPO for reconsideration under the intermediate step. The Office’s subsequent response was, in Dearling’s words, unconvincing. He suspects the Office is attempting to reintroduce the Aerotel test through the back door. As a last resort, he has not excluded a judicial review, a procedure that does not simply challenge the substantive decision but holds the Comptroller General of Patents to account for whether the Office is deliberately circumventing the Supreme Court’s direction on the intermediate step. That is, as Dearling put it, “a nuclear option,” but one he would not rule out if the evidence in the file already suggests the Office is in contempt of court.

There is also an international dimension. Singapore’s Intellectual Property Office launched a public consultation shortly after the ruling, asking whether Singapore should adopt the Emotional Perception approach into national law. That is British soft power operating in real time within the Commonwealth.

G. Three Takeaways for Patent Practitioners

At the end of our conversation I asked Bruce Dearling to distill the most important practical points. His first takeaway: make sure the claim contains hardware. This applies not only to UK and European applications but is simply good drafting hygiene. Without hardware in the claim, the application remains exposed.

The second takeaway concerns the description. Anyone filing an AI invention needs to explain clearly which function is achieved by which piece of hardware, circuit, or software. Not as boilerplate, but as a complete technical account that describes the real-world effects. Dearling’s experience is that practitioners who write the claim first and fill in the description afterward run into trouble.

The third takeaway emerged from the conversation itself: how the EPO assesses inventive step for AI inventions is not a settled question. It is worth following the development of UPC case law and any shifts in EPO practice closely. Anyone advising on AI patent applications today needs to know these arguments.

H. Conclusion

The UK Supreme Court’s Emotional Perception ruling is not a British footnote. It has declared the Aerotel test dead, introduced the intermediate step that brings non-technical features back into the inventive step analysis, and set off a convergence movement that is already visible at the UPC and still pending at the EPO. For everyone working in AI patent practice, whether in prosecution, examination, or counseling, this ruling is required reading.

Rolf Claessen: Our interview guest on IP Fridays podcast is Bruce Dearling. He has been in the IP field and a patent attorney for 36 years and is partner at Hepworth Brown in the UK. Thank you very much for being on the podcast.

Bruce Dearling: My pleasure, Rolf. Thank you for inviting me.

Rolf Claessen: All right. We just met at the INTA annual meeting in London. And you talked about the UK Supreme Court case where you were involved. And the core questions were whether non-technical features would be considered when assessing inventive step of patents. Can you briefly summarize this case?

Bruce Dearling: It’s a bit more than that. It started — I actually wrote the case. And I prosecuted it through the patent office. The patent office rejected the case for being excluded subject matter. So pretty much the excluded subject matter provisions in the UK are nearly identical. They’re as near as practical to the language of the EPC, so those of the European Patent Office — Article 52.2. But again, they apply as such.

The actual technology relates to artificial neural networks. And the invention related to a very clever way of what is termed closing the semantic gap at the output of the neural network. So that means that in a neural network, there is always a discrepancy between the output of the neural network in terms of what it’s telling you you should be thinking essentially, and what reality is. So if you can close the semantic gap, then you align the neural network or the artificial intelligence system to better reflect human knowledge or human reactions and human expectations. So that’s really what the invention is about. There’s no point in going into too much detail with it — that’s the way it is. It’s very clever.

So the UKIPO rejected this because they said it was essentially a computer program excluded from patentability as such. And they used a decision which is called Aerotel, which has been around since 2006. And that decision has caused considerable consternation and tension between the EPO Technical Boards of Appeal and the UK courts. Aerotel was described as being essentially disingenuous by the EPO Technical Board of Appeal. And the UK courts pushed back and said, you don’t know what you’re talking about. So that’s where it fell apart.

So that’s where they rejected it for essentially being a computer program as such, possibly with a bit of business methods thrown in as well. But let’s leave that for the time being. So the case then went to the High Court and at the High Court, we won. The judge said, actually, it’s not a computer program. Neural networks aren’t computers. They’re not programs themselves. There’s more to them than that. And the invention as claimed is not excluded from patentability as such.

The UKIPO obviously weren’t very happy about that because they liked their Aerotel case and so they appealed it. And they appealed it on several grounds, including a new one, which was that it was a mathematical method. The Court of Appeal decided that the UKIPO was right and that we were wrong, so we lost the case.

So we then went to the Supreme Court. Well, actually, they denied us an ability to go to the Supreme Court. The court said no appeal. We went — actually, no, I think there is a bigger issue here — because we realized, or I realized at that point, that the work that we were doing was much broader than this. It requires real consideration of what an invention is at a fundamental level. So not only exclusions, but how inventive step is applied. And these issues were built into the case from the very beginning.

And they sort of — I wouldn’t say crept up on the court as we went through — but they became more and more prominent to the extent that ultimately, when we made an application to the Supreme Court, the Supreme Court went, yeah, we’ve got some issues here. We want to hear the full arguments on why this is not excluded from patentability, why Aerotel is potentially bad and how we more or less try to align ourselves with the European Patent Office. So that’s essentially what happened. And the Supreme Court hearing was last July. It took them the thick end of eight months to come out with a decision, which was issued in early February, at which point the entire legal landscape in the UK changed because they said we were right. The Patent Office doesn’t know what they’re talking about.

Aerotel is bad. It’s unsound. That’s what they described it as — unsound law. It needs to be removed and we’re going to harmonize with the European Patent Office.

So before I — I’m just going on a bit of a rant here, standing on my soapbox telling you what you already know. But the Aerotel test essentially was — it was a four-step test, past tense. So you firstly had to construe the claim. That’s pretty straightforward. Then you actually had to identify the actual contribution. This is what they said — identify the contribution. Really in this aspect, you’re asking what, as a matter of substance rather than form, the inventor has added to human knowledge. So that’s what they said the contribution was. And then they said, the next step in Aerotel was to ask, well, does that contribution fall solely within the excluded subject matter field or realm? And then they said, well, if you get through that question, then you check the actual contribution or the alleged contribution to see whether it’s technical in nature.

So that’s the Aerotel test as it was. And what the Supreme Court in their unanimous final decision said was that Aerotel at best jumbles up the order. It reverses the logical order of the analysis by starting with the contributions and then addressing the Article 52 exclusions. And then finally it goes back to what the technical nature of the invention is about. So they really went, no, we don’t like any of this stuff. It’s bad, it’s stupid, it puts the cart before the horse.

So, in the intervening period between finding the case and actually seeing it progress all the way to the Supreme Court, we obviously had the G1/19 decision from the EPO Enlarged Board. And they basically said that they are going to validate any hardware as the approach. And that’s essentially what the UK also went with. The UK Supreme Court said we’re going to say that the threshold of patentability — or the exclusion to patentability — is simply overcome by the inclusion in a claim of any piece of hardware, whether it’s a processor or a piece of memory or whatever. It doesn’t matter. Any hardware makes the invention a technical invention. So it’s a really low threshold to consider.

And they then went, well, actually, if we now align and harmonize with the European Patent Office sensibly, then we need to look at how we assess inventive step, which is the other thing that we raised with the Supreme Court. In fact, we probably raised it at other times and in all the other instances as well, but it came to a head at the Supreme Court. So the Supreme Court then also went a bit further and said, well, actually, whilst we do like the global approach to assessing inventive step for all fields of technology — whether it’s chemistry or biotech or electronics or software or AI — we use a test called Pozzoli. So that isn’t problem-solution. We don’t like problem-solution. We think it’s not codified in the European Patent Office. It’s just a mechanism that the EPO has come up with to try to objectively assess inventive step. We don’t particularly think that’s appropriate. We like our approach called Pozzoli.

That’s it. So we’re going to say with Pozzoli, however, in order to actually understand — particularly in the context of mixed inventions having technical and non-technical features — it’s necessary for the examiner to undertake the so-called intermediate step, where you have to look at the interactions between features within a claim. The invention is defined by the claim. That’s what the act says. That’s what everyone understands. It’s the invention defined by the claim. So you look at the claim features and then you have to understand the interactions that take place. And even if they are between technical and non-technical features, if they bring about an overall technical effect when you consider the invention as a whole, then your claim should be good and you can assess it for classical inventive step.

So that’s really where we’re at. There’s a lot to unpack there already. It’s probably a podcast in its own right, but that’s the positive history of where we’re at. And I can keep going if you wish me to for a second and talk about why I think this is — we’ll just contrast it quickly with the problem-solution approach at the EPO and COMVIK. So for inventions in the computer-implemented field, they use COMVIK and the problem-solution approach.

The Supreme Court said, as I said, they don’t like problem-solution. I think the problem-solution issue is that it is also inherently pre-baked with hindsight because you have to look at the invention and then step back and exclude those features which are common. And then you formulate a problem based on the function that the claim achieves. And then you’re asking whether or not it would be obvious for a skilled person to arrive at the claimed invention, having been given that hindsight-developed problem. So COMVIK is not great by any means.

And we know from a practical perspective that examiners are only too willing to look at a claim and simply line through features which they believe are non-technical, whereas they don’t actually look at the interaction of those features in the context of the claim as a whole.

There is also a decision — very recent one actually, about a year ago — T 1249/22, where the Technical Board of Appeal told the examiners and the examining division, you cannot do this. It’s okay to have a claim directed towards an invention in a non-technical field, as long as the invention is directed to a technical solution of that problem. I think it’s paragraphs 11 and 12 or 10 of that decision that are worth looking at. But they’re saying that in all fields of technology, it doesn’t matter as long as the technical solution is about technology — therefore, you should be able to obtain a patent as long as there is a realistic and appropriate technical effect. Be careful actually, Bruce — I don’t mean technical contribution, I mean technical effect. There’s a reason for that distinction.

Rolf Claessen: The non-technical features are nevertheless used to assess inventive step in the UK now after this decision, right?

Bruce Dearling: Yes, that is the intermediate step. The decision says you must look at the invention as a whole. It’s the important thing. There are a couple of issues that arise out of this. The first one is that you have to provide context for the invention.

The Supreme Court never provided any specific guidance about how we deal with the intermediate step or what the exact test is, which is in some respects fine. It seems to be fairly clear that you just have to engage your gray matter — your neurons — to work out what is going on in the real world. And once you work out what’s going on in the real world, what the benefits are, then you look at whether or not the actual implementation of the invention fundamentally has a technical flavor to it, which is not just coding, not just simple coding, but it does something smarter. There’s a real technical impetus. There’s a technical effect.

Now that actually brings me onto something I’ve postulated or said. I think the intermediate step will follow something like what I’ve termed the holistic character test, which essentially is: work out what’s going on in the real world. Then once you’ve worked out what’s actually being achieved, what the benefits are, what the invention’s concerned with, then you ask the question, how am I achieving it technically? And how is there a technical effect? How does the technical effect arise?

That brings out a couple of issues. The first one is that it’s actually about the word “contribution” because it depends on how the word is used. So if you look at head note one in COMVIK, it uses the word “contribute” — how the non-technical feature contributes to the invention. So that’s an additive inclusive concept. The UK IPO historically, and arguably at the moment today whilst they’re trying to retrain their 400 examiners — which this has caused them to have to do — their idea of contribution is this backward-looking concept.

So technical contribution and technical effect, I think — although we mix them up and interchange them — are distinct. Technical contribution: you’re looking backwards. Technical effect is what you look at when you look forward into what’s going on. So this is subtle — it’s really subtle, but it’s important. And once you realize that you are actually looking for the technical effects, then you’re on much safer ground. It’s much more objective in terms of the assessment. This might be somewhat contentious, because it’s the way I’m looking at this, but I’ve been working on this a long, long time and thinking about it for probably decades, worryingly so. So technical contribution and technical effects are probably not the same, where they are interchangeably used to mean the same thing within existing decisions.

Rolf Claessen: And in the beginning you said, now that Aerotel is dead basically, it’s more harmonized with the EPO’s approach. But what I take from the discussion now is that maybe — especially in view of the problem-solution approach — it’s not fully harmonized with the EPO’s approach at the moment, right? Or did the UK Supreme Court get something wrong, or was that a desired outcome from your point of view that this is not so completely harmonized with the EPO?

Bruce Dearling: Well, the EPO — the any-hardware solution is fully harmonized, no doubt. So it’s now a question of inventive step under Article 56 or Section 3 of the Act. The EPC nowhere mandates the use of problem-solution. And we know that there are many different ways of actually assessing inventive step, including the concrete elaboration test from last year and problem-of-invention approaches. So there are numerous ways of assessing inventive step. So the UK says, “Pozzoli — we like Pozzoli.” Interestingly, I had a discussion with someone I probably can’t mention. They’re saying that the UK approach may actually be more permissive now. It might even influence how the EPO operates. So they may move away from COMVIK towards more of a Pozzoli approach, which basically says this:

You identify the notion of the skilled person — step one. You identify the common general knowledge of that skilled person — step one B. You identify the inventive concept of the claim in question, where you construe it if you can’t work out what it is. You then identify what the differences are. And then you ask the question, is it obvious to the skilled person, given knowledge of the common general knowledge?

This is entirely not artificial because, as I said beforehand, when you look at problem-solution, you are formulating a problem by backtracking from what the claimed invention is to a situation where you say, well, these are the common features and I’m going to project a problem to try and solve. Now that is already tainted with hindsight reasoning. It’s not safe, it’s not thoroughly objective. There is an inherent problem with this which sees good inventions cast by the wayside. Although it’s a preferred mechanism, it’s not fully baked. There are situations where examiners are inherently lazy, or they just simply use something like the requirements specification argument, which is just factual. It just demonstrates that they can’t be bothered to actually argue it properly or think about what the invention is. Sorry to any examiners listening to this, but this is just my personal view, that sometimes there are problems.

I’m reminded of a quote from an EPI hearing I was at a long time ago, where the Legal Board of Appeal member said: “We understand that examining divisions can operate with a degree of mental laziness and that it’s too easy to throw too many things out of the basket when considering the issues of inventive step.” Now that one has stayed with me because you think — did someone just say that? And the answer is yes, they did. But it just goes to show that there is some tension between the TBA and the examining divisions, and they don’t always get it right.

Rolf Claessen: So there might be a small difference now between the UKIPO’s future approach of assessing inventive step and the EPO?

Bruce Dearling: Yeah, it might do. But the other interesting thing here — and thank you for pointing this out, I hadn’t entirely caught up with it, I’ve been traveling beforehand and I missed some of the UPC case law. So the UPC case law — in, was it — yeah, we talked about that.

Rolf Claessen: Yeah. There was a decision in April, Abbott versus Sinocare.

Bruce Dearling: Yeah, 901 of 2025. So a Court of Appeal decision from the UPC. It was APP_000000901, I believe, 2025. Decision 17th of April, hearing 27th of March.

The UPC is not bound by — it’s a court. The European Patent Office is not a court, it’s an agency that administers and looks after the administrative rule of law. So the fact that this decision came out from the UK Supreme Court in February, and you see almost identical language used in the UPC decision, suggests that there is some alignment here, or some convergence in thought. Now, whilst the UPC decision also references G1/19 and uses problem-solution, there is enough — you’ve got to bear in mind that high-level courts do look at each other’s decisions. And this is really a question of influence and the desire to converge. So the fact that they’ve done this at this time is quite interesting.

Again, I can’t quote someone directly from the EPO, although I would love to. They were saying — at a very high level — and they used the words “converge UPC practice towards UK Supreme Court practice on interpretation of the law.” So this may actually be happening in real time. Again, it would be wrong to actually refer to anyone by name, but it’s an observation that when I looked at the case, I can see why this is going ahead. And I can see why the judiciaries — they want to maintain independent judicial controls. They won’t reference the UK Supreme Court decision, not least because we’re not in the UPC. But if you look at the arguments in sections 106 and 107 of the UK Supreme Court’s Emotional Perception decision and head note one, you go — wow, this is very close.

Rolf Claessen: Very close and nearly identical wording. Yeah. And the UPC also now uses non-technical features for assessing inventive step. Is that a problem for the EPO that has historically been aggressive in throwing out non-technical features for inventive step analysis?

Bruce Dearling: Well, I think they really need to get to the situation — I don’t know — this holistic character test that I’m sort of proposing, where you really have to think about what the invention is achieving, and then look at how it’s technically being achieved. And then if you look at that again in the context of that other decision I mentioned — T 1249/22 — it says something like, in the case of an invention that amounts to a technical implementation of a non-technical method, provided the non-technical method does not contribute to the technical character of the invention. The board validated the approach of identifying the non-technical method and then goes through and says it’s patentable. There are decisions like this which suggest that examining divisions have to give it a bit more thought, because the Technical Board will realize that to satisfy the WTO requirements — which pretty much everyone is bound by — Article 27.1 TRIPS, which requires that you protect all fields of technology. And that means whether it’s data processing or business methods, because business methods can be patentable so long as they are implemented on a technical basis. That essentially seems to be what T 1249/22 is saying, although it doesn’t explicitly say “allowing business methods.” The exclusion is only “as such.” So does this decision, in combination with the Supreme Court case and the movement of the UPC, say: well, actually, let’s look at this properly? It requires objective assessments, not just superficial “let’s strike through that feature because I don’t like it, it looks non-technical.”

Rolf Claessen: So are you hopeful that the EPO is adjusting and will reshape their case law in view of the UPC decision and the UK Supreme Court decision?

Bruce Dearling: It’s a bit unfortunate that the corresponding UK case at the EPO was dropped by the applicants, because it was heading towards an examination hearing at the examining division. It would have gone to the TBA, and I’m sure it would then have gone from the TBA to the Enlarged Board. I’m pretty sure that’s the case. There is another case from the same client which will probably argue the same thing because the specs are almost identical. It’s just lagged in time. So is it going to change? I hope so, because I think the EPO have got it wrong — more often than not in this field. Well, maybe not more often than not — they get it wrong more times than they should do.

Would I like to see it changed? Yes, I would, because I want the examiners to actually think about the technology as opposed to just — oh, it’s not — I don’t want to engage the gray matter. That serves no one. That doesn’t serve technology. That doesn’t serve industry. These patent rights are there for a reason. They are property rights. I’m referring to the award of the 2025 Nobel Prize for Economics — they are a core driver for society’s development. So the 2025 Nobel Prize was for something called creative destruction — the replacement of old technology with new — and it’s based on the patent paradigm. So all this stuff is coming to a head now. It’s just a question of how quickly the EPO actually catch up, and maybe they have something to catch up on.

It’s just understanding that the examiners have to start to think. As I said, we’ve got the issues at the UKIPO where they’re going to have to retrain 400 examiners.

Rolf Claessen: Yeah, right.

Bruce Dearling: The Emotional Perception case wasn’t granted by the Supreme Court. They referred it back to the patent office for consideration under the intermediate step. So the patent office produced a response that I would describe as — I’d say arguably — not well reasoned, which I’ve filed the response to, which basically says you don’t really know what you’re talking about. What really worries me a bit is that I think they’re trying to introduce the Aerotel case through the back door. It’s backsliding. It’s a mechanism for trying to apply it in a different way or a different context, which would be wrong.

I think they believe that the applicant will appeal this if they get a bad decision — they will appeal it back to the courts again via the High Court, Court of Appeal, Supreme Court route. I say maybe not. I say maybe the client will file what they call a judicial review, which is a nuclear option. That’s when you actually hold the Comptroller General of Patents to account and get full discovery of whether or not there’s internal documentation showing that they are deliberately circumventing the direction of the Supreme Court on the intermediate step. This is basically holding them to account and saying: if you’re not applying the intermediate step appropriately, you are in contempt of the law. So judicial review is a really serious thing to do, but it’s certainly something I would not exclude from consideration.

We’ll see what happens. It’s not saying we’re just going to go through the courts and make them decide on this. We’re going to say you’re wrong. And there’s already enough evidence in the files to suggest that they are probably in contempt of court and they’re not applying the intermediate step appropriately. They may not know any better at the moment — they need to be guided — but the consequences for them are potentially severe.

Rolf Claessen: I have another question for you. You were the instructing attorney — do you think the decision was perfect? What argument that you made was the most underappreciated by the court? And where do you think the judgment got it wrong, or was it all perfect?

Bruce Dearling: No, it got 90% or 95% correct. The intermediate step is right. That’s the most important thing in the decision — it’s the intermediate step. The any-hardware thing — that’s logical, that makes some sense — but if people say “if the any-hardware rule is the important bit,” no it isn’t. It’s the intermediate step. That’s the important thing.

Where do they go wrong? I think they went wrong because — and you’ve got to bear in mind that unlike German courts, I’ve got to be careful about how I express this — generally, as I understand it, and correct me if I’m wrong, but the judiciary in Germany on patent cases are generally more technically able. They’re normally technically qualified.

I look at the Supreme Court justices and the Court of Appeal justices — we had one who was a humanities undergrad, one was a chemist. Good luck with trying to argue complex artificial neural network technologies, which are difficult even for me to understand. And I’ve been working in the field. They’re hard to understand. They require real understanding, real appreciation. They could say, well, actually we don’t need to look at the technology — but frankly, if you’re looking at the statutes and exclusions to patentability and asking what a computer program is, then you need to understand what these technical terms really are. And if you can’t, then the judgment is potentially flawed. Their finding that the neural network is a computer program is, I think, technically obtuse.

You know that the Singaporean government — the Intellectual Property Office of Singapore — released about six weeks ago a consultation note to the Singaporean profession and population, asking: is the Emotional Perception case right, and do we need to adopt it into Singaporean national law? So this is direct soft power from the UK Supreme Court changing Commonwealth legislation and statutes. We’ll see what happens. But from what I’ve seen of a draft response from the attorneys, they’re saying essentially: we agree any hardware is right, the intermediate step is right. The assessment of the neural network as a computer program is wrong, or it just doesn’t make any sense. And I’ve made the same comments before in SIPA, in the relevant round in March.

There’s a disconnect. I mean, it’s like they equate a computer program with being able to be run on an analog computer. Now, an analog computer has no central processing unit. An analog computer just has resistors and transistors and capacitors. So if they’re saying that an analog computer can run a program — that’s essentially what they’re saying in part of the judgment. Where is the program in an analog computer? And if they’re saying it’s in the values of the resistors and the capacitors, then that has implications for any circuit we’ve got — it’s potentially a computer program — which is just madness, because it doesn’t sit well with the legislation and decisions we’ve looked at over the last 50 years.

This is a real problem. It may be a storm in a teacup because you can overcome the objections by having any hardware, but it’s an argument they shouldn’t have been making. It seems to be abstract legal argumentation which has little credibility in my personal view, although it’s now law. It may be that someone can take that, have an argument with the Supreme Court, get them to fix this. The other thing is the EPO looks at a neural network as a mathematical method, and the UK now says it’s a computer program. Neither is right.

The EPO is wrong as well. If you look at the actual decision which they regularly quote — the Vicom case — if you actually read the claim and look at the case, you see that it doesn’t make a huge amount of sense. A neural network has applied mathematics in it. It can be based on a computer program because it’s required to set up the learning objectives and the loss function. Mathematical processes — it tweaks the weighting factors of neurons over the course of the training epochs. But at the end of the day, if the function performed by the neural network is new and it’s directed towards a technical implementation which is technically relevant, then it shouldn’t fail for being a mathematical method.

And I think the EPO guidelines actually say that. Even recommendations — the UK court said that a recommendation is not technical. Well, actually it is, because it’s data processing, and you’ve got to work out how does the data processing work to provide an improved recommendation? Again, it goes back to the T 1249/22 decision. There’s a whole raft of these things which are left not entirely resolved. There’s enough here to keep someone busy for a few more years.

Rolf Claessen: Right. So I have a question for you now that we’ve talked about the decision of the UK Supreme Court and the UPC — the Unified Patent Court — with very, very similar wording. What do you say are the three most important takeaways for patent practitioners in the US, in Europe, in the UK, before the EPO? Are there any things that you really want patent practitioners to take away from our discussion here?

Bruce Dearling: Yeah, okay. So first: make sure the claim has some structure in it. You need to have any hardware. That’s number one — in terms of claim drafting.

In terms of the description, you really have to understand what the invention is about. And you’ve got to make sure that you explain what function is achieved by what piece of hardware, kit or software. And if you do that — don’t nickel-and-dime this by writing the claim first — I would suggest that you run into problems. You need to understand what the invention is about. And you need to make sure that the description is complete and full to describe the functionality and the effects that are achieved in the real world. And if you can do that, then you’re on a much sounder basis — much, much stronger. There’s a much stronger foundation for this. So that’s two things. Is there a third one? That’s me being a bit cheeky, but I suppose I know what’s going on.

Rolf Claessen: Yeah, but maybe the third takeaway is that maybe the EPO will rethink the way — at least how AI inventions are assessed for inventive step.

Bruce Dearling: Well, as I said to you before, it could be that that’s the case. I don’t want to repeat myself again. The word “permissive” was used in a conversation I had with respect to the UK Supreme Court approach. COMVIK fundamentally still breaks with me and has done for years, because the way it’s set up and the way it’s applied distorts fundamentally what the invention is about. And until such time as that distortion is removed, there is a problem of objectivity versus subjectivity. And I think that’s really what the EPO has to grapple with. It’s not an easy thing to deal with, but maybe there are things going on.

Bruce Dearling: It’s not an easy thing to deal with. I don’t know who’s going to argue it. It would have been useful for me to still have the original case up and running at the EPO because these arguments would have been fleshed out. I’m pretty sure they would have been referred to the Enlarged Board. We would have got it resolved. So it’s whether or not I can now work this into the existing case to try and get the examining division to — well, they will refuse, I suspect. And then it’ll go to the TBA. And then the TBA will have to look at this, hopefully with the referrals to the Enlarged Board. And then that fixes the problem on a national and international basis.

Rolf Claessen: Yeah. Let’s see.

[Laughs]

Bruce Dearling: No, we don’t know. I mean, you might have a different view. What do you think? Do you think COMVIK is fundamentally right or fundamentally wrong?

Rolf Claessen: Well, I’m not so much into AI inventions. I’m a chemist and I usually deal with chemistry inventions. But from the discussion that we had, I think that the EPO might rethink their position. I don’t know. Let’s see. Let’s hope so.

Bruce Dearling: Well, they liked it. They liked problem-solution. It’s been with us for 25 years. It suggests that it’s a compromise. It’s not mandated by the European Patent Convention — that’s the point. It’s something they think works. And these things only work until such time as someone comes along and says, actually, you’re wrong, and this is the reason.

Rolf Claessen: Let’s see if they choose a different route at least for AI inventions. So Bruce, thank you very much for your insight and for talking about the case that you were involved in with the UK Supreme Court. Where could people reach you if they have more questions about this field — basically patents, AI protection in the UK and Europe — and if they want to ask you more questions about this case?

Bruce Dearling: Sure. Through the Hepworth Brown website or my LinkedIn profile, I suppose. The Hepworth Brown website has an email link. I’m trying to post things on it as well to try and provide a bit more context. But if people have fundamental questions on this stuff, then I’m happy to try and answer them. I suppose that I can be considered to be quite knowledgeable in the area.

Rolf Claessen: Right. Certainly more than I am.

[Laughing]

Bruce Dearling: So I was fortunate. As a consequence of the work I’m doing, I was appointed last year to the WIPO Standing Committee on Patents and Privacy. That was discussed for the issues of where WIPO goes and what the direction of the problems are that we have in high-tech areas. So there seems to be some degree of understanding that I might know what I’m talking about. I think I probably do.

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

Bruce Dearling: My pleasure. Thank you very much, Rolf.

My co-host Ken Suzan and I are welcoming you to episode 174 of our podcast IP Fridays!

In today’s interview, Ken Suzan interviews Brian McGinnis, partner at Barnes & Thornburg and co-chair of the firm’s data security and privacy practice, about why companies need to stop treating data privacy as a compliance burden and start treating it as a core business asset. McGinnis argues that data is either a managed asset or an unmanaged liability, with no middle ground.

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

The EPO saw a Record Year with 200,000+ Patent Applications in 2025: German filings dropped 2.2% while China grew 9.7%, overtaking Japan for the first time. Germany remains Europe’s top patent nation but loses ground globally. SMEs and universities now account for nearly half of all Unitary Patents granted to European innovators.

News from the UPC Court of Appeal: Non-Technical Features Count for Inventive Step. An April 17 ruling clarifies that all claim features must be evaluated in their combined effect, including non-technical ones. Companies with software-related or mixed-technology inventions pending at the EPO or UPC should reassess recent inventive step objections at the UPC in light of this decision.

Nokia Withdraws UPC and Munich Suits After Global FRAND Settlement; Following a global FRAND rate-setting decision by the UK High Court, Nokia withdrew parallel suits against Warner Bros. and Paramount at the UPC and in Munich. One UK ruling resolved litigation spanning Germany, the UPC, the US, and Brazil simultaneously.

China Abandons Anti-Suit Injunctions in SEP Disputes: After a WTO arbitration ruling from July 2025, China withdrew its practice of blocking SEP holders from filing suits abroad. The EU Commission continues monitoring compliance, since the former policy was largely informal rather than codified in statute.

The Trump Administration has put 100% Tariffs on Imported Patented Pharmaceuticals: Based on Section 232, the Trump administration imposed 100% tariffs on patented drugs and biologics effective April 2, 2026, with a 120-day transition period until July 31. EU member states face a reduced rate of 15%. Generics and biosimilars are explicitly excluded.

China Rejects 1.27 Million Trademark Applications in Three-Year Crackdown: China’s CNIPA rejected over 1.27 million trademark applications and invalidated more than 3,300 marks, targeting so-called edge-ball marks designed to mislead consumers about product quality or origin. The announcement was made at an official press conference on April 23, 2026.

Now let’s jump into the interview with Brian McGinnis!

Brian McGinnis is a partner at Barnes & Thornburg and co-chair of the firm’s data security and privacy practice. In this episode of IP Fridays, he argues that companies treating data privacy as a compliance burden are missing the point entirely and leaving significant value on the table.

Data Is Either an Asset or a Liability

Most companies still treat their data as invisible and costless. They do not manage it the way they would manage a patent portfolio or a trademark. That, McGinnis argues, is a fundamental strategic error. Data is either a managed asset or an unmanaged liability. There is no middle ground.

When companies invest in understanding what data they collect, how it is used, and who has access to it, they unlock opportunities to drive real revenue and growth. Done right, a data governance program is not a cost center. It is a foundation for trust, operational efficiency, and competitive advantage.

One Program, Not Twenty

With more than 20 US state privacy laws now in effect, and major economies worldwide introducing their own frameworks, building separate compliance programs for each jurisdiction is neither practical nor smart. McGinnis recommends a single, comprehensive governance framework designed around the core purpose and intent of privacy law, flexible enough to absorb new requirements as they emerge.

Companies that threw together a quick program when California’s CCPA came into force in 2020 are now overdue for an upgrade. The goal is to move from reactive compliance to a mature, proactive program that positions the company ahead of the regulatory curve rather than perpetually catching up.

Website Tracking Tools: An Underestimated Risk

One of the fastest-growing areas of privacy litigation involves tracking technologies built into company websites: pixels, session replay tools, analytics scripts, and chat widgets. Legal teams are often entirely unaware of what IT or marketing has deployed. That gap is expensive.

Plaintiffs’ attorneys are applying 1970s-era telephone wiretapping statutes, including the California Invasion of Privacy Act, to argue that collecting any personal information, including IP addresses, before a user has consented constitutes illegal interception. Demand letters are being sent at industrial scale, with settlements typically running between $10,000 and $20,000 per case. What makes this particularly difficult is that a company can be fully compliant with statutory privacy law and still face these wiretapping claims, because the legal theory turns on the timing of data collection rather than the existence of a privacy notice.

Vendor Contracts: The Hidden Exposure

Marketing and technology agreements are another major source of unmanaged data risk. When a company deploys a third-party tool that handles personal data, the underlying contract needs to define precisely who owns that data, what the vendor is permitted to do with it, and what obligations flow down to any sub-processors involved.

McGinnis draws a direct parallel to IP licensing: owning valuable data and then handing it to a vendor under a poorly drafted agreement is the equivalent of signing a bad IP license. Data processing agreements need to cover ownership, use restrictions, sub-processor obligations, breach notification timelines, audit rights, and deletion obligations. Many companies simply do not have these terms in place. Without them, a vendor who suffers a breach of non-personal business information has no contractual obligation to disclose it.

Consumer Rights Requests: Process Matters

Privacy laws give individuals the right to access, correct, delete, and opt out of the use of their personal data. Responding to these requests effectively requires pre-built processes, trained staff, and the technical ability to locate and act on individual data across all systems and sub-processors. Most companies, before engaging in formal data mapping, are not in a position to do this reliably.

Staff failing to recognize a deletion request as a legal data subject request and routing it through a standard customer service queue instead is one of the most common failures McGinnis sees. The consequences can include regulatory complaints and class action lawsuits, particularly when a company continues to send emails to someone who has already requested deletion of their data.

A newer risk involves Global Privacy Controls: browser-level opt-out signals that regulators and courts are now treating as legally binding deletion and non-collection requests. Companies receiving these signals daily without acting on them face growing exposure under several state laws.

AI Governance: Policy Before Tools

Generative AI tools are now embedded across business functions, from contract review and customer service to content creation and internal search. McGinnis is direct: every company needs an AI acceptable-use policy, and the absence of one is not a neutral position. Without clear rules, employees will use unapproved or publicly available tools regardless, feeding proprietary and sensitive information into open models with no control over how that data is used or retained.

He draws a precise parallel to patent law. Posting proprietary information into an open AI system carries the same risk as publishing it publicly, potentially destroying patentability. The distinction between closed, organization-specific AI systems and open, publicly accessible ones is something employees need to understand explicitly. Making compliance easier than non-compliance is the practical goal.

The Regulatory Outlook: More Laws, More Enforcement

McGinnis expects the regulatory landscape to continue expanding. The EU AI Act is already setting the direction, and several US states have introduced or are developing AI-specific legislation. The pattern mirrors what happened with data privacy: Europe leads, US states follow in a patchwork, and federal legislation remains uncertain.

Enforcement of existing privacy laws is also intensifying. GDPR has been in force since 2018, CCPA since 2020, and regulators are now past the period of extended tolerance for companies that are still catching up. Companies with immature compliance programs should expect less patience from regulators going forward.

McGinnis closes with a clear point of view: if you have to comply anyway, get credit for it. A well-built governance program is a trust signal to customers, a sales asset, and a foundation for responsible AI use. Compliance done right is not a tax. It is a differentiator.

The Full Transcript:

Ken Suzan: Our guest today on the IP Fridays podcast is Brian McGinnis. Brian is a partner with Barnes and Thornburg and a founding member and co-chair of the firm’s data security and privacy law practice group. Brian serves as a member of the intellectual property department and the internet and technology practice. Brian is a Chambers Global and national ranked privacy and data security attorney, a certified information privacy professional, and the firm’s chief privacy officer. Brian brings nearly two decades of experience at the intersection of law and technology. Brian advises on a wide range of technology-driven legal matters, including privacy and data security, intellectual property, artificial intelligence, corporate transactions, software, and internet law. His deep understanding of privacy and technology law enables him to guide clients through rapidly evolving regulatory and operational challenges. Welcome Brian to the IP Fridays podcast.

Brian McGinnis: Hey, thanks Ken. I appreciate it. Great to be here and thanks for having me.

Ken Suzan: Excellent. Brian, the C-suite tends to treat data privacy as a compliance tax, something to hand off to legal and forget about. But when you see how companies actually get into serious trouble, what’s really going on?

Brian McGinnis: Yeah, well, it’s a great place to start Ken and looking forward to the conversation today covering some of these privacy issues and AI issues, which I found in my own practice is really bled into the straight privacy stuff. Companies can’t really handle these things in a silo anymore. It’s really about managing and coming together as a coherent program for governance for the organization. I think if you do that right, the good news is we can become revenue generators and show growth for the company and not just compliance centers and a compliance tax. But I think the core problem that we face in working with most companies is that a lot of companies still treat their data as invisible, costless. They don’t treat it, in other words, like they would a patent portfolio or trademark or other IP portfolio. It’s just not managed as an asset in the ways that we’ve seen more sophistication around IP. And it really should be. Data is either a managed asset for the company or it’s an unmanaged liability. There’s really not an in between. And so for those companies that haven’t gotten their arms around all this data and what can be done with it, I think they’re really missing an opportunity. Having an understanding of what data the organization is collecting, how it’s being used, and having the proper governance around it really unlocks a lot of opportunity for use of that data in new ways — ways that can drive revenue and growth for the company. So I approach privacy not just about compliance, not just about avoiding penalties or doing it because some law out there says that we have to do it. It’s really about knowing and controlling one of the company’s core assets. And if you’re not doing that, you’ve got unmanaged data that you’re not getting value out of and that potentially could be a huge liability for the company. Managed well, it really supports trust, efficiency, and growth of the organization. Otherwise, I think it’s a missed opportunity.

Ken Suzan: Yes, well said. Now let’s talk about state laws. With 20-plus state privacy laws now in effect, how should companies build a program that actually works across the board without starting over every time a new state law kicks in?

Brian McGinnis: Yeah, so the first answer is don’t build 20 separate programs. This really goes back to having a comprehensive, sophisticated, well thought out program that really takes into account not only the 20 state laws, but obviously we’ve got international exposure with laws like GDPR and upcoming privacy laws internationally. Most of the larger economies in the world have some form of laws around privacy and AI. So you can’t really anymore build programs that account for the one, two, three, four, five different laws that in the past we had experience with — where you could just treat California as its own thing, treat New York as something else, and treat Europe as something else. The laws and the pace of these have really forced companies into having comprehensive programs. I don’t expect to see fewer laws. You’re only looking at potentially additional state laws, additional federal laws here in the US, and then certainly additional laws throughout the world. So a lot of the strategy these days is not only where are we today with these laws, but how do we set up our governance program in a way that really cuts to the core of the purpose and intent behind these laws so that we can be better prepared when new laws come about in the future. Historically, at least in the US, most companies just haven’t had laws that force them into compliance postures. As these laws have started to come along, a lot of companies have been playing from behind and saying, oh, the California Consumer Privacy Act, I just read about it and it goes into effect next week — let’s throw something together and call that our compliance program. We’ve now got years of these laws being in place, CCPA came into effect in 2020, and what we’re seeing much more of are companies looking to get more sophisticated in their programs and stop feeling like they’re always rushing to catch up. The goal is to level up their program, going from level one — constantly playing from behind — to level two and then level three, so that they really feel like they’re on top of it and have a sophisticated program that not only accounts for all the various privacy requirements that come at them, but also positions them to take advantage of the data and all the things that come along with having a good governance program.

Ken Suzan: Brian, there’s an explosion of litigation targeting something most companies barely think about — the tracking tools baked into their own websites: pixels, session replay tools, analytics scripts, chat widgets, the list goes on and on. What’s happening, Brian, and what should companies do?

Brian McGinnis: Yeah, and I think a lot of companies — the executives, the business teams — don’t even realize a lot of these tools are on their sites. IT deployed them years ago, the web team deployed them, marketing teams are constantly using them and certainly have a good understanding of it. But in a lot of cases, legal has never touched them and has no idea what’s happening on the website. We also see a lot of cases of companies who, even if they’re generally aware these tools are in use, aren’t aware what other teams are putting on the site or what those pieces of technology are tracking. And that gap can be really expensive. What we’re seeing right now — and this has been a trend for a number of months now and is really continuing to pick up steam — is a series of what I call gotcha lawsuits, where you have some enterprising plaintiffs’ counsel who have taken a look at some 1970s-era telephone wiretapping laws, including a law called CIPA, the California Invasion of Privacy Act, passed in the 70s with the idea that you shouldn’t be able to wiretap people’s telephone conversations. They’ve taken that and applied that theory to the internet. The way it works is: if a website has some sort of cookie, pixel, or other tracking technology on it that collects personal information about an individual — and that can be as simple as an IP address and device ID — and if that collection occurs as soon as the individual shows up at the website, prior to them being able to have notice provided to them or opt in and consent to that collection, then the theory under these lawsuits is that it constitutes wiretapping. We see a lot of this with the Meta pixel, with LinkedIn pixels, and the like. What they’re doing is effectively showing up and suing, threatening to sue, trying to take you to arbitration, depending upon what’s included in the company’s existing privacy notice. If you don’t have a cookie banner, if you don’t have a cookie notice, if you’re not getting opt-in on these things, they’re leaning on those failures and effectively trying to force you into a position where you are forced to make a settlement. Because the cost to litigate one of these to their conclusion would be expensive, whereas a lot of these cases will settle for $10,000 to $15,000 somewhere in that range. They’ve got technology crawling the internet looking for websites that don’t have these risks covered, sending demand letters and then collecting settlements, $10,000 to $20,000 at a time. It’s been very profitable for them and a very dangerous thing for our clients. And it’s a bit unusual because you can be fully compliant with the statutory privacy laws that require notification of the use of tracking technologies and cookies and banners — and still be subject to these lawsuits because of the wiretapping arguments being made. The timing wherein the data is collected from the individual could still subject you to these lawsuits. So it’s a tricky problem, one that I hate seeing companies get hit with and one that we spend a lot of time helping companies avoid.

Ken Suzan: Yes, let’s talk about contracts, Brian, because I know you work with contracts probably on a daily basis. A lot of data risk lives inside vendor and technology agreements — the contracts companies sign with marketing platforms, analytics providers, cloud infrastructure, and SaaS tools. What should those agreements actually contain?

Brian McGinnis: Yeah, so there’s quite a lot of things. You’ve got a world where marketing is constantly under pressure to learn more about their customers. The way they can do that is through any number of different tools and data gathering techniques, and we have all this technology available to help marketing and sales do better at their jobs. But we, at least in this country, got to a position where people really felt like they lost control of their information and their data. And so these privacy laws came along and really started to provide more rights to individuals — to have an understanding of what data exists within various companies that they do business with, who they’re sharing it with, trading it with, selling it to for advertising purposes; to have the right to opt out; the right to delete their information. Not checking through the agreements by which these teams are implementing these tools is a huge issue for companies. As part of an overall compliance program, having some kind of process where people who are aware of the growing numbers of privacy laws are reviewing these marketing contracts to make sure they are aligned with that program and aligned with those laws is absolutely critical. To talk about IP, given the IP Fridays audience: it’s kind of the equivalent of having really bad IP licenses. In other words, you own and control this information and data, and you need to control what the other side can do with one of your most valuable assets — or you’ve effectively given it away. So thinking about it in that way could be useful. In terms of more specifics: a big one is ownership of the data. The agreement itself may or may not have anything that addresses data. If there’s personal information involved, you probably need what we call a data processing agreement or addendum — a DPA — that specifically controls what that third party is able to do with that data, how they’re able to use it, whether they’re able to share it, whether they’re able to get value out of it on their own, or if they’re only allowed to be what we call a service provider, just providing services to the business that hired them. There needs to be explicit prohibition on retaining, using, and disclosing personal information for any purpose other than performing the exact services in the contract. Whether or not they’re permitted to sell or share data under CCPA terms is another key point. Certification that the provider will comply with any restrictions and security requirements you have on your data, and making sure those obligations flow down to any sub-processors they might use. You hire Company A, but Company A works with Company B and C to provide parts of their service. You’re effectively responsible for the protection of personal information throughout its lifecycle. A couple of other key provisions: breach notification triggers and timeline. It’s very possible under a lot of agreements that one of your vendors can suffer the world’s worst hacker breach and have no legal obligation to tell the company that hired them about it — unless there’s personal information involved. State data breach laws apply to personal information, not to other types of sensitive business information. Unless you have a contract that explicitly requires notification, there’s a good chance that vendor may not want to disclose it. And then other things like audit rights and deletion obligations go in there as well.

Ken Suzan: Certainly a lot to cover. Let’s talk about privacy laws and consumer rights. Privacy laws give consumers real rights — to access their data, correct it, delete it, and opt out of how it’s being used. Most companies have a process for this on paper. What does it actually take to get it right, and what happens when it breaks down?

Brian McGinnis: Yeah, it takes pre-planning. It takes a process. Some companies receive many more of these requests than others — some B2B companies receive none or a couple per year, while companies heavily involved in marketing to consumers might receive tens or hundreds a day. To be able to respond to these effectively and efficiently requires some forethought. It requires policy and procedure internally to be set up, and it requires the education of the team. Some of the common ways we see this go wrong: staff isn’t trained to know the difference between what we call a DSR — data subject request — versus a regular customer service inquiry. Maybe somebody submits what would be construed by law to be a deletion request and you just put it into your normal customer service response flow — and then you’re potentially missing timelines and the like. There also need to be systems in place to respond in accordance with the individual’s rights. Somebody submits a request saying, you have my information — what information do you have about me? Can your company determine that right now? Can you look through all your systems and down the line to all the processors and sub-processors you’ve worked with and hired, and identify what information you have about that individual? Most companies, until they engage in a governance program and data mapping, are at a real disadvantage to be able to do that. Why is that a problem? Because two weeks from now your company could be sending emails to the individual who just told you to delete their data, and they get really upset. That’s when they go and complain to regulators or start class action lawsuits. The lack of planning can be really, really expensive for a lot of companies. Making sure you’ve got some kind of process to understand what’s coming in, that the people receiving those requests know the difference between a regular customer service request and a data subject request, and that it gets to the appropriate parties for action — all of that is really, really key. Another one that we’re seeing pop up is what we call GPC, or Global Privacy Controls. It used to be that people would say “do not track” in their browser and most companies would ignore those signals. Now we’ve got advancements in law and browser technology where the browser you’re using to visit a company’s website sends a signal saying, opt me out of this. Regulators and courts are construing those as deletion requests, as opt-out requests that companies are now required to respond to. If your company hasn’t gone through an exercise to understand that, and is probably receiving GPC opt-out requests on a daily basis without acting on them, there’s some exposure there. At the end of the day, a lot of this really is about getting the appropriate people from across the organization — really each department — around a table, figuring out what data you collect, how you use it, who you share it with, where it comes from. That starts the process of your data map. Then you set about mapping that to the various legal requirements and figuring out how to respond, how to make it easy for people to exercise their rights so they’re not complaining, not suing, not going to regulators. Letting these squeaky wheels out of the process — the ones who don’t want you to be processing their information any longer — is really key.

Ken Suzan: Let’s switch gears a bit and talk about AI. I know we’re hearing about it every day. Generative AI tools are now embedded in how companies work — contract review, customer service, content creation, internal search. Before employees start using these tools with customer data, confidential business information, or proprietary content, what has to be in place first?

Brian McGinnis: Yeah. I think we’re long past the days when companies provided individuals access to corporate technology — computers, devices, and the like — without having some kind of acceptable use policy that governs that. We don’t want you downloading stuff that could harm our network or create security issues. We don’t want you using our technology in certain ways, whether that’s a BYOD policy or just general use of company internet or company devices. An AI acceptable use policy is really a continuation of those. Every company needs to have an AI acceptable use policy. Period. In my opinion, things like that are as important as the fire escape policy out in the hallways for these companies. I can tell you with absolute certainty: if your organization has not provided rules to your employees and personnel about the use of AI, what they can and can’t use — or if you’ve said you can’t use any AI — the personnel is still using AI. They’re just not using any approved tools. They’re probably using their own private tools that they subscribe to, or even worse, tools they don’t pay for, in which case they’re putting company information into a wide open public model. The more companies can do to think through this ahead of time, reduce it to policy, and then train and educate people on that company’s particular policy, the better. You need to make it easier for people to comply than not comply. An acceptable use policy should talk about: here’s how we can and can’t use it, here’s the data that should and should not go into the system, here’s some proper uses of AI, here’s some data that’s on the fringe that we need to keep out — more sensitive information, proprietary information, etc. Making sure you’re funneling and educating people about the difference between closed systems and open systems. In other words, this is a tool that only looks at our organization, only uses the data within a certain box, and is not publicly available — the AI system is not training on our data. You have more leeway to put more sensitive information into those types of systems than you do with open systems which potentially lose control of your data. It’s almost like a patent consideration in terms of keeping information secret. If something potentially has some patentability that you want to seek to file in the future, you can’t just go out and post it publicly and use public search engines and all this other stuff at the risk of exposing it. Similar concepts here — really getting a handle and control over what tools people can use and providing some education to them about how the company wants to think about what’s acceptable and what’s not in those uses is really the key starting point.

Ken Suzan: Very useful information. Indeed, we’re coming towards the end of today’s episode. One final question for you, Brian. Where do you think we’ll be two years from now in this developing field, and how best for companies to stay ahead of the curve?

Brian McGinnis: Yeah, this kind of takes us full circle, Ken. I think it’s kind of back to the beginning comments about the privacy space — and we’ve only got more of these laws coming. It’s still a developing field. We’re still really in the early days of enforcement. I mean, GDPR has been around since 2018, CCPA in the US really kicked us off in about 2020, and so there’s been a settling-in period as companies adjust and get used to having these laws and get compliance programs in place at various levels — from not at all prepared to highly sophisticated. We’re still pretty early on in terms of enforcement of these things. We’re already starting to see enforcement of more egregious violations of these various laws, and we’ll only continue to see more enforcement as the laws exist currently and as they continue to come along. The days of not having to pay attention to this are kind of over. And I always tell clients: if you’re going to have to do these things, you’re going to have to be compliant — you might as well get credit for it. By which I mean, let’s put all the policies in place, let’s do all the compliance activities, let’s have a sophisticated governance program, but then let’s also use that as a sales tool, as a way to help grow the company, as a way to sell new products and gain trust and earn trust with our customers — so that they know when they’re doing business with us, or when they’re giving us information, or when they’re using our AI tool, that we respect that and are going to take care of their information and have the structure in place internally to be able to do that. With respect to AI, what I’m seeing is very similar to what we have seen with the growth of privacy law — again led by Europe, with the EU AI Act in this case. Now you’ve got a handful of states in the US that already have AI laws, and others that are interested in continuing to roll those out. There’s friction with the federal government around whether there’s going to be a comprehensive law there. Like the privacy space, you’ve got varying factions — some of which want to develop really quickly with very little guardrails, others which say we’re threatening the future of humanity if we don’t get those guardrails in place. I think ultimately, at least in the US, we’re going to end up with another patchwork of AI laws for the foreseeable future that we’ll have to navigate. So really having a company position, a company philosophy of how do we handle all these various laws, how do we treat people’s data, how do we get our arms around it, how do we respond to whatever legal rights they currently have, and what principles do we put in place so that we can adapt for the future — and then, once we’ve done those things, how do we actually get value out of this and move the business forward. So it’s not a compliance tax, but a benefit to the business. That’s the end goal here, and I think the North Star for us.

Ken Suzan: Fantastic, Brian. This has certainly been a very comprehensive interview. Really appreciate you taking the time to talk about it with us here on the IP Fridays podcast.

Brian McGinnis: Happy to do it, Ken. Thanks for asking me and good to see you. Thank you.