Intellectual Property: Commercialising IP and Licensing
WEB213Q16: What are big issues for commercialising and licensing IP rights? You will gain insights on the emerging issues, trade mark licensing, the intricacies of licence agreements from manufacture to exploitation, and patent licensing. This comprehensive, strategy packed seminar is not to be missed.
Description
Attend and earn 4 CPD units in Substantive Law
This program is applicable to practitioners from all States & Territories
Chair: Ben Coogan, Partner, Thomson Geer; Preeminent Intellectual Property Lawyer and Recommended Technology, Media & Telecommunications Lawyer, Doyle’s Guide 2020; Deputy Chair, Technology and Intellectual Property Law Committee, Queensland Law Society; Best Lawyers 2021, Intellectual Property, Entertainment Law, Information Technology, Defamation and Media Law, Alternative Dispute Resolution
9.00am to 10.00am IP Capture and Commercialisation for Start-ups
The Government is phasing out the innovation patent. The last day you can file a new innovation patent will be 25 August 2021.
- What are the reasons?
- What does the phase out mean for existing innovation patents?
- What alternative forms of IP protection are available for cash strapped start-ups?
- Is there any government assistance for start-ups seeking IP protection?
- Start-ups and standard patents, what's the best strategy?
Presented by Bill Singleton, Partner, HWL Ebsworth; Recommended Technology, Media & Telecommunications Lawyer, Doyle’s Guide 2020 and Alexandra Trezise, Associate, HWL Ebsworth
10.00am to 11.00am Key Considerations for Trade Mark Licensing
- The concept of ‘authorised user’ and ‘authorised use’ under the Trade Marks Act
- Case law regarding exercise of ‘control’ by licensors
- Use of the Personal Property Securities Register (PPSR) to secure trade mark rights in Australia
- IP Australia’s ‘Smart Trade Mark’ pilot and other brand registries
Presented by Ben Thorn, Legal Practitioner Director, Xuveo Legal; Recommended Intellectual Property Lawyer, Doyle’s Guide 2020; Chair, Technology and Intellectual Property Law Committee, Queensland Law Society
11.00am to 11.15am Morning Tea
11.15am to 12.15pm Licence Agreements: From Manufacture to Exploitation
Inventors will often wish to have their products manufactured so they can distribute the products through a distribution network.
- What issues does this create in terms of licensing?
- What should an inventor consider before approaching manufacturers?
- What standard clauses should appear in a manufacturing agreement?
- What standard clauses should appear in a distribution agreement?
- War stories on what goes wrong in manufacturer and distributor agreements
Presented by Nicole Murdoch, Founding Director and Trade Mark Attorney, EAGLEGATE; Recommended Intellectual Property Lawyer, Doyle’s Guide 2020
12.15pm to 1.15pm Patent Licensing
- Considering the scope and exclusivity of a licence and the necessity for performance obligations
- The impact of reservation of licensor rights on the licensee's standing to sue for third party infringement
- Licensing of pending patent applications and expired patents
- Know-how licences
- The patent exhaustion doctrine vs implied licences: Calidad v Seiko Epson
Presented by Katrina Chambers, Special Counsel, Thomson Geer; Recommended Intellectual Property Lawyer, Doyle’s Guide 2020; Best Lawyers 2021, Intellectual Property Law
Presenters
Ben Coogan, Partner, Thomson Geer
Ben Coogan practises in all areas of IP law including agreements and disputes, information technology, privacy, confidential information, competition and consumer law, and litigation. He acts national and internationally. Ben advises international and national clients on their IP and technology related contracts, technology and IP licensing, research collaborations, e-commerce, IP commercialisation, distribution agreements, other technology and IP procurement and supply agreements, and regulatory compliance issues. Ben is a qualified mediator, and acts as mediator in a variety of disputes. Ben is a member of IPSANZ, Law Council of Australia Intellectual Property Committee and others.
Bill Singleton, Partner, HWL Ebsworth
Bill has extensive experience and advises on both the legal and IT aspects of transactions. His practice includes legal aspects of cloud technology, privacy and data security, social marketing, procurement of ICT products and services, and digital commercialisation; commercial and strategic legal advice on structuring and leveraging IP to capitalise on the digital opportunity including the registration, protection and commercialisation of branding (trade marks), patents, designs and confidential information; and providing legal advice on the collection, exploitation and protection of information and data, encompassing privacy advice, digital data (IP) rights, data mobility, data security (and breach) and surveillance.
Ben Thorn, Legal Practitioner Director, Xuveo Legal
With over a decade of expertise gained in boutique commercial and intellectual property firms, Ben has a multidisciplinary approach to legal practice. He has worked with clients across many industries including fashion, food, entertainment, transport, software and technology; from start-ups, SME’s and not-for-profits to large corporations. Outside the law, he is a musician, technology enthusiast and traveller.
Nicole Murdoch, Founding Director and Trade Mark Attorney
Nicole is a lawyer, Electrical Engineer and Trade Marks Attorney. Her qualifications and practical experience allow her to fully comprehend the nexus of the law, technology and business to provide advice to her clients - which is both commercially sensible and technically practical. Nicole's legal experience includes IP litigation including, trade mark, patent, copyright and domain name disputes and associated misleading and deceptive conduct, confidential information and passing off disputes. She also acts in information theft cases to prepare clients for data breaches, assists upon a breach, gives advice in respect of mandatory data breach notifications and prosecutes insider threats.
Katrina Chambers, Special Counsel, Thomson Geer
Katrina’s practice includes licensing and commercialisation of IP, assistance with IP ownership and structuring issues, research and development collaborations, alliances and joint venture arrangements, the sale and purchase of IP assets and companies, IP audits and due diligence, establishment of franchise systems, manufacturing, supply and distribution agreements, general contracts law and commercial and corporate law. She also advises on protection of intellectual property assets, privacy and franchise compliance, regulatory issues and disputes, the Australian Consumer Law, infringement of copyright, trade marks, patents and designs, protection of data, know how and other valuable confidential information, advertising law and domain name disputes.