Trade Marks and Patents Conference 2021
Hear from 8 eminent trade marks & patents practitioners and gain your Ethics CPE point all in 1 day. Spend the morning on assessing trade mark use, litigating trade marks, exploring recent trade mark appeals, & navigating the interplay between competition law & IP law. The afternoon includes an in-depth look at patents with insights into computer-implemented inventions and patent exhaustion, raising the bar claims regarding support and sufficiency, and patent injunctions and preliminary discovery. 215N06
Description
Attend the full day and earn 7 CPD/CPE units including:
6 CPD/CPE units in Substantive Law
1 CPD/CPE unit in Ethics and Professional Conduct
This program is applicable to practitioners from all States & Territories
Session 1
Trade Mark Assessment, Litigation & Appeals
Chair: Justine Beaumont, Barrister, Nigel Bowen Chambers; Best Lawyers 2022, Intellectual Property Law; Preeminent Technology, Media & Telecommunications Junior Counsel and Leading Intellectual Property Junior Counsel, Doyle’s Guide 2020
9.00am to 9.45am Advancements in Assessing Trade Mark Use
- Recent remarkable developments in a concept of critical importance
- Are owner’s rights being eroded or clarified?
- Significant takeaways from recent cases
Presented by Sean McManis, Principal and Trade Marks Attorney, Shelston IP
9.45am to 10.30am Trade Marks Update: Procedural Issues and Litigation
- Defensive trade marks: an analysis
- Litigation funders: effect on trade mark infringement litigation
- Are class actions in trade marks and IP imminent?
- Latest practice in TMO and Court contested matters; impact of COVID-19
- IP remedies developments: preliminary discovery, preliminary injunctions and final injunctions
Presented by Odette Gourley, Partner, Corrs Chambers Westgarth; Leading Contentious Intellectual Property Lawyer, Doyle’s Guide 2020; Best Lawyers 2021, Biotechnology Law, Intellectual Property Law, Litigation, Privacy and Data Security
10.30am to 10.45am Morning Tea
10.45am to 11.30am Trade Mark Appeals
- Review recent trade mark appeals and consider their significance
- Explore the practical takeaways that will impact your clients and your practice
- Deduce any discernible trends in recent years
Presented by Lucy McGovern, Barrister, Tenth Floor Selborne Wentworth Chambers
11.30am to 12.15pm When Competition Law and IP Law Collide: Unwired Planet v Huawei
Case law review including the UK Supreme Court’s decision in Unwired Planet v Huawei
- When is exercising an IP right going to raise competition issues?
- Can competition issues be avoided?
- What potential implications for practice follow from the UK Supreme Court’s decision in Unwired Planet v Huawei?
Presented by Andrew Fox, Barrister, 5 Wentworth Chambers; Leading Intellectual Property Junior Counsel, Doyle’s Guide 2020
Session 2
Ethics for Trade Marks and Patent Lawyers
Chair: Justine Beaumont, Barrister, Nigel Bowen Chambers; Best Lawyers 2022, Intellectual Property Law; Preeminent Technology, Media & Telecommunications Junior Counsel and Leading Intellectual Property Junior Counsel, Doyle’s Guide 2020
Mandatory Ethics or Professional Conduct CPE
12.15pm to 1.15pm Ethics: Code of Conduct for Trans-Tasman Patent and Trade Mark Attorneys
Cover the essential responsibilities and obligations arising from the Code of Conduct and guidelines to the Code.
- Obligations of the Code of Conduct
- Duties of candour and disclosure with clients in an increasingly incorporated landscape
- Conflicts of interests and processes for management
- Copyright in specifications and ownership of files
- Disciplinary proceedings
Presented by Fiona McNeil, Barrister, 5 Selborne Chambers
Session 3
Patent Exhaustion, Support & Sufficiency, and Injunctions & Discovery
Chair: Suzy Madar, Partner, King & Wood Mallesons
2.00pm to 3.00pm Computer-Implemented Inventions and Patent Exhaustion
- Computer-implemented inventions and manner of manufacture: the current position
- Patent exhaustion following Calidad v Seiko Epson
Presented by James Lawrence, Partner, Mills Oakley; Recommended Contentious Intellectual Property Lawyer, Doyle’s Guide 2020
3.00pm to 4.00pm Raising the Bar for Patent Claim Support and Sufficiency
- Support and sufficiency of disclosure requirements by the Raising the Bar Act
- Support and sufficiency in the United Kingdom and European Union
- Merck Sharp & Dohme Corporation v Wyeth LLC (No 3) [2020] and the consideration of the support requirement by Justice Burley
Presented by Anna Spies, Barrister, 5 Wentworth Chambers; Recommended Intellectual Property Junior Counsel, Doyle’s Guide 2020
4.00pm to 4.15pm Afternoon Tea
4.15pm to 5.15pm Patent Injunctions and Preliminary Discovery
- Patent injunctions: resisting preliminary and final injunctions
- Landscape on resisting injunctions post Sigma v Wyeth
- Scope of preliminary and final injunctions in method of treatment patents
- Arguments for resisting final injunctions: (Wyeth v MSD)
- Seeking preliminary discovery on process patents
Presented by Jane Owen, Partner, Bird & Bird; Recommended Contentious Intellectual Property Lawyer, Doyle’s Guide 2020
Presenters
Sean McManis, Principal and Trade Marks Attorney, Shelston IP
Sean is a solicitor and registered trade mark attorney, with qualifications both in science and law. He has more than 25 years' experience as a trade marks attorney. He has worked principally in Australia, but has also worked in the United Kingdom. His practice extends to all aspects of trade mark related work, and a large part of his work involves brand clearance, the resolution of trade mark disputes and the enforcement of intellectual property rights..
Justine Beaumont, Barrister, Nigel Bowen Chambers
Justine has over 25 years of commercial litigation experience, with a particular focus on intellectual property. Since her call to the Bar in 2008, she has appeared in significant trade mark, patent and copyright cases particularly in the Federal Court, the High Court and the Copyright Tribunal for clients in a wide range of industries, including television, radio, print and online media, film, music, technology, telecommunications, pharmaceutical, manufacturing, consumer goods, sports and fitness industries, as well as Government. Her most recent international directories recognition include Chambers and Partners (Asia/Pacific and Global) 2021: Band 1 Intellectual Property Junior Counsel, Legal 500, 2021 and World Trade Mark Review, 2019.
Odette Gourley, Partner, Corrs Chambers Westgarth
Odette advises on and conducted litigation covering intellectual property, competition and consumer law, and regulatory law. Odette is also an expert on trade mark registration and portfolio management including clearance searches and advice, filing and prosecution of applications, portfolio management and oppositions. Across the full range of IP (patents, trade marks, copyright, designs, trade secrets, passing off etc), Odette has conducted major cases for leading companies in IP-driven sectors, including pharmaceutical, medical devices and biotechnology, high technology, fast moving consumer goods, food and beverages, manufacturing and services including media and communications, R&D, financial services, advertising and market research.
Lucy McGovern, Barrister, Tenth Floor Selborne Wentworth Chambers
Lucy was admitted to practice in 2010 and called to the Bar in 2016. Previously, Lucy was a solicitor at Minter Ellison in the Intellectual Property team. She has advised clients on a broad spectrum of intellectual property issues, including patent, copyright and trade mark infringement, comparative advertising, product recalls, parallel importation, domain name disputes, franchising and therapeutic goods regulations. She has worked as a solicitor for Westpac Banking Corporation and SingTel Optus. Lucy accepts briefs in a broad range of civil matters including commercial and equity, regulatory, intellectual property and consumer, financial services and taxation law.
Andrew Fox, Barrister, 5 Wentworth Chambers
Andrew came to the Bar in 2006 and specialises in intellectual property and commercial litigation. Prior to commencing at the Bar, Andrew practiced as a solicitor for 10 years including at Corrs Chambers Westgarth, and later as a partner at the specialist IP firm, Griffith Hack. Andrew appears regularly in intellectual property and commercial matters, principally in the Federal Court of Australia and in proceedings before IP Australia. He has also lectured in contract law and litigation in the Faculty of Law at the University of Sydney. Andrew is a member of the NSW Bar Association's Professional Conduct Committee No.3.
Suzy Madar, Partner, King & Wood Mallesons
Suzy specialises in commercial and regulatory disputes, with a focus on IP and technology. She focuses on technology disputes including IT, industrial inventions, fluid dynamics, biotechnology, pharmaceuticals, food products and medical devices. She has expertise advising on regulation of new technologies and public health issues (including in the context of the Covid-19 pandemic). Suzy advises clients on the enforcement of IP rights and defending allegations of infringement. She advises on commercial issues relating to IP. Suzy has represented clients in the Federal Court, Supreme Court and High Court as well as in Patent Office proceedings.
James Lawrence, Partner, Mills Oakley
James Lawrence is an experienced intellectual property (IP) advisor and litigator. He specialises in the management of IP disputes. James has been recognised by his peers having been listed for both IP and biotechnology law in the Best Lawyers directory, for contentious IP in Doyle’s Guide as well as being recommended for IP in The Legal 500 Asia Pacific. He is also identified a Leader in IP by the World Intellectual Property Review. James is the Editor of the Patents chapter in Halsbury's Laws of Australia and regularly publishes and presents on IP issues.
Anna Spies, Barrister, 5 Wentworth Chambers
Anna Spies is a barrister at 5 Wentworth Chambers. She was admitted in 2011 and called to the bar in 2016. Anna has a wide ranging practice, with a particular focus on advice and disputes in the areas of intellectual property, consumer, confidential information and media law. In 2018 to 2021, Anna was listed by Doyle’s Guide as a ‘Recommended’ junior counsel in NSW for Intellectual Property. Before coming to the bar, Anna was a Senior Associate in the King & Wood Mallesons' intellectual property litigation team and in 2012-2013, worked as the Associate to the Hon Justice Annabelle Bennett AC at the Federal Court of Australia.
Jane Owen, Partner, Bird & Bird
As head of the Intellectual Property Group in Sydney Jane advises on complex patent litigation through to research and commercialisation structures. Jane’s specific focus is in the life sciences and higher education fields, in which she has over two decades of experience in all aspects of IP, including portfolio establishment, IP strategy, commercialisation and enforcement. Jane’s IP disputes experience covers complex patent infringement and revocation, trade mark and passing off, design infringement, disputes on ownership of IP, trademark and patent oppositions, re-examination requests and appeals from decisions of the Commissioner of Patents and the Registrar of Trade Marks
Venue
The Grace Hotel
77 York St
Sydney 2000
NSW
Australia