Trade Marks and Patents Symposium 2021

Hear from leading trade mark and patent practitioners about the hottest issues while gaining your CPE points from in-depth presentations covering the latest cases, legislation, trends and best practices. Explore inherent trade mark distinctiveness, use, reputation and more. In the afternoon, examine exhaustion of patent rights, inventive step, Swiss-style use claims, and protection & enforcement strategies after the end of the innovation patent. WEB216V04

Description

Attend the full day and earn 7 CPD/CPE units in Substantive Law
This program is applicable to practitioners from all States & Territories

 

Session 1

Trade Marks Review

Chair: Michael Wolnizer, Principal, Davies Collison Cave; Best Lawyers 2021, Intellectual Property Law; Recommended Non-Contentious Intellectual Property Lawyer, Doyle’s Guide 2020

9.00am to 10.00am s.41 of the Trade Marks Act: Recent Cases, Tips and Traps

  • Recent cases dealing with inherent distinctiveness
  • Approaching the assessment of inherent distinctiveness
  • Tips and traps in overcoming s.41 through evidence

Presented by Andrew Sykes, Barrister, Trade Mark Attorney and NMAS Mediator, Greens List

10.00am to 11.00am Use as a Trade Mark: Recent Cases

  • Definition of ‘use as a trade mark’
  • Development of the concept in case law
  • Recent cases including:
    • Pinnacle Runway v Triangl (DELPHINE)
    • Urban Alley v La Sireene (URBAN ALE)

Presented by Margaret Ryan, Lawyer and Trade Marks Attorney, IP by Margaret

11.00am to 11.15am Morning Tea

11.15am to 12.15pm Treatment of Well-known Trade Marks and Establishing Reputation

  • The treatment of well-known trade marks under s. 60 of the Trade Marks Act 1995 (Cth)
  • Impact of fame on s. 120 of the Trade Marks Act 1995 (Cth)
  • Establishing reputation of mark

Presented by Melissa Marcus, Barrister, List G Barristers; Recommended Intellectual Property Law Junior Counsel and Recommended Technology, Media & Telecommunications Junior Counsel, Doyle’s Guide 2020

12.15pm to 1.15pm Unregistered Trade Marks and the Consequences of Kraft v Bega

  • What is goodwill?
  • Property in unregistered trade marks
  • Property in trade mark applications
  • Licensing of unregistered trade marks

Presented by Susan Gatford, Svenson Barristers; Recommended Intellectual Property Law Junior Counsel, Doyle’s Guide 2021 and Alan Ford, Barrister, Patterson’s List

Session 2

Patents: A Critical Update

Chair: Tom Cordiner KC, List G Barristers; Pre-eminent Intellectual Property Law Senior Counsel, Doyle’s Guide 2020; Best Lawyers 2021, Intellectual Property Law

2.00pm to 2.45pm Exhaustion of Patent Rights: The High Court’s Decision in Calidad Pty Ltd v Seiko Epson Corporation

From the counsel that was involved in this significant case, gain insights into:

  • Implied licence vs exhaustion of patent rights
  • When does modification amount to ‘making’?
  • Implications for patentees and competitors
  • Consequences for other intellectual property rights

Presented by Jonathan Kelp, Partner, MinterEllison; Recommended Contentious Intellectual Property Lawyer, Doyle’s Guide 2020 and Rebecca Pereira, Senior Associate, MinterEllison; Rising Star, Managing Intellectual Property 2019

2.45pm to 3.30pm Inventive Step After the Raising the Bar Amendment

  • How have the Australian Courts and the Commissioner’s delegates approached inventive step under the Raising the Bar amendments?
  • VMS v SARB [2020] FCA 408
  • Selected Office decisions
  • More issues to consider and the different approaches to the same test in the UK and under the EPC, including Emson v Hozelock [2020] EWCA Civ 871

Presented by Warwick A Rothnie, Barrister, List A Barristers; Preeminent Intellectual Property Law Junior Counsel, Doyle’s Guide 2020

3.30pm to 3.45pm Afternoon Tea

3.45pm to 4.30pm A 'New Old' Interpretation of Swiss-Style 'Use' Claims

  • Swiss-style claims vs method of treatment claims and the different ways they can be deployed against infringers
  • The construction of Swiss-style claims following the decision in Mylan Health Pty Ltd v Sun Pharma ANZ Pty Ltd
  • The implications of the Mylan decision for the enforcement of Swiss-style and method of treatment claims

Presented by Lauren John, Allens; Rising Star, Managing Intellectual Property 2021

4.30pm to 5.15pm End of the Innovation Patent: Alternative Protection and Enforcement Strategies for SMEs and their Advisors

  • A brief history of the innovation patent: what was it for, and how did it fail?
  • Pros and cons of innovation patents versus other forms of IP protection, e.g. standard patents, registered designs, trade marks, copyright and trade secrets
  • Findings of the Mortley review of the accessibility of the
  • patent system to Australian SMEs
  • Transitioning to a system without innovation patents: strategies, challenges and opportunities

Presented by Dr Mark Summerfield, IP and Technology Consultant

Presenters

Michael Wolnizer, Principal, Davies Collison Cave
Michael practices in all areas of trade mark law including availability and infringement searches, prosecution, domain name conflicts, trade mark opposition and infringement issues and related copyright, trade practices and associated common law actions. Since joining DCC in 1994, Michael has managed the trade mark portfolios of numerous Australian and multi-national companies. Michael has been named one of Australia's leading trade mark law practitioners in the Managing Intellectual Property Expert Guides publication and the World Trade Mark Review 1000. He was a member of the inaugural auDA Domain Name Advisory Panel whose recommendations led to the reform of policy in the .au name space in 2000.

Andrew Sykes, Barrister, Trade Mark Attorney and NMAS Mediator, Greens List
Andrew specialises in trade mark law, domain names and passing off. His other areas include domain names, copyright, designs, internet law, software, confidential information and related areas of misleading and deceptive conduct. Andrew is the author of Australian Trade Mark Opposition Law, which is now in its second edition and published by LexisNexis Butterworths. He is also the co-author of the chapter “Trade Marks and the Internet” in the leading publication “Lahore’s, Patents, Trade Marks & Related Rights”. Andrew has been recognised numerous times in the World Trade Mark Review 1000, including in the gold band for Australian junior counsel. And he currently sits on a number of expert dispute resolution panels in the field of domain name law.

Margaret Ryan, Lawyer and Trade Marks Attorney, IP by Margaret
Margaret has spent almost 20 years with a specialist IP law firm, practising in commercial IP law, IP litigation and conducting trade mark oppositions before the Trade Marks Office. Margaret performs her own advocacy and is a registered Trade Marks Attorney. She has lectured and tutored in IP and contributed to the copyright sections of The Laws of Australia and The Law Handbook (2018, 2019 2020 and 2021). Margaret undertakes IP commercial and dispute resolution work and trade marks advice and oppositions. She accepts instructions to appear at Trade Mark Office hearings.

Melissa Marcus, Barrister, List G Barristers
Melissa practises in all aspects of IP with particular interest and experience in trademarks, misleading or deceptive conduct and passing off. Melissa also practises in defamation law and general commercial disputes. Melissa has experience of Royal Commissions, having represented a client the subject of a case study before the Royal Commission into Institutional Responses to Child Sexual Abuse and having acted for a client in the Royal Commission into Violence, Abuse, Neglect and Exploitation of People with Disability. Melissa also has experience as an independent auditor in relation to the ACCC. Melissa contributes quarterly to the specialist law journal, IP Forum.

Susan Gatford, Svenson Barristers
Susan Gatford is an experienced commercial advocate with a strong IP practice. She has appeared in a wide range of patent, trade mark, trade practices, copyright and designs trials and appeals, as well as in numerous interlocutory hearings. She also appears in corporate, contractual, franchising and general commercial trials, principally in the Federal Court but also in the Supreme Court and represents parties in IP Australia hearings as well. Susan has extensive experience acting for Australian and multinational corporations in wide range of industries. She is a Registered Trade Mark Attorney and an accredited mediator who is often appointed to mediate or to represent parties in mediations both prior to and during court proceedings.

Alan Ford, Barrister, Patterson’s List
Alan practices in all areas of commercial and public law and is particularly interested in intellectual property and trade practices, corporations and securities, tax, public/administrative law and equity and trusts. He is a member of IPSANZ and the Commercial and Tax Bar Associations. Alan has acted in and advised on a range of complex matters, including intellectual property opposition and infringement matters, financial services compliance with Chapter 7 of the Corporations Act, constructive and resulting trust claims, resisting tax claims by the tax office, and migration issues. Alan is a headnote writer for LexisNexis Intellectual Property Reports.

Tom Cordiner KC, List G Barristers
Tom Cordiner is a barrister and also a registered Australian Patent Attorney and Trade Marks Attorney. His practice is divided between intellectual property law, commercial/ corporations law and some administrative law. From 1998 to 2003, Tom was a solicitor with Blake Dawson Waldron (now Ashurst Australia). In 2002, Tom held an extended secondment with GE Capital Finance Australia Pty Ltd where he built on his skills in trade practices and commercial law.
Tom is a member of IPSANZ and IPTA. He also contributes quarterly to the specialist law journal, IP Forum, and has taught post graduate courses concerning intellectual property at Monash University and at Melbourne University.

Jonathan Kelp, Partner, MinterEllison
Jonathan specialises in IP and technology disputes, and has acted for a broad range of clients in various industry sectors including pharmaceutical and life sciences, IT and telecommunications, FMCG and manufacturing. Jonathan has more than 10 years' experience in acting for clients in High Court, Federal Court, and Supreme Court litigation regarding trade mark infringement and passing off, ownership and breach of copyright, patent infringement and validity, breach of contract, trade practices, misuse of confidential information, and breach of director's duties. He also advises on various IP issues, including use of social media and compliance with applicable regulatory frameworks. Jonathan has extensive experience acting for clients on complex IT disputes arising from technology outsourcing, software licensing and systems implementations, which are typically resolved in mediation or arbitration as an alternative to Court-based litigation.

Rebecca Pereira, Senior Associate, MinterEllison
Rebecca has over 12 years' advisory and litigious experience. She focuses on patent litigation in the pharmaceutical, biopharmaceutical, biotechnology and medical device sectors. She has considerable trial and appellate litigation experience, particularly in relation to multi-jurisdictional patent disputes, interlocutory disputes, the analysis of patent infringement and validity and in the preparation of evidence with expert witnesses. Rebecca also provides strategic advice to pharmaceutical and biopharmaceutical clients on launch strategies for biologics and biosimilar products, small molecules and medical devices. Rebecca has a strong educational science background which is invaluable in her development of commercial strategies and legal arguments regarding scientific subject matter and in her dealings with expert witnesses. She is a member of the Victorian Committee of IPSANZ.

Warwick A Rothnie, Barrister, List A Barristers
Warwick practices in all aspects of IP law and commercial law generally; appearing mainly in the federal courts and before IP Australia. Prior to coming to the Bar, he was a partner in the IP and telecommunications group at (then) Mallesons Stephen Jaques. He is a contributing author to Lahore, Lindgren and Rothnie, Copyright and Designs and, since 2013, the specialist contributor to Lahore's Patents, Trade Marks and Related Rights on patent validity. Warwick is a Senior Fellow at the University of Melbourne teaching Patents Law and Design Law and Practice. He is one of WIPO's UDRP panelists and blogs at ipwars.com. His memberships include the Law Council of Australia's Intellectual Property Committee, IPSANZ, AIPPI Australia and the Copyright Society of Australia.

Lauren John, Allens
Lauren specialises in intellectual property law, acting for clients in both commercial and litigious matters across all types of IP. She is particularly experienced in patent law and patent litigation, having acted for numerous clients in patent infringement and revocation proceedings, as well as in patent matters concerning contractual obligations, duties relating to confidential information and inventorship disputes. Lauren’s experience also includes commercial and regulatory advice, brand protection advice and M&A-related IP due diligence. Lauren is a member of the Victorian Local Committee of the Intellectual Property Society of Australia and New Zealand (IPSANZ).

Dr Mark Summerfield, IP and Technology Consultant
Mark is an IP and technology consultant and registered Australian Patent and Trade Marks Attorney. His interests include digital systems, information and communications technologies, and software development, applying machine learning techniques to the analysis of patent data. In 2018 Mark was engaged by IP Australia to apply some of these techniques in automating the production of the Intellectual Property Government Open Data (IPGOD) dataset, which comprises detailed information on over 100 years of IP rights administered by IP Australia. Mark operates the Patentology blog where he writes regularly on issues relating to innovation, patents, law and policy. He has lectured at La Trobe University, Monash University and is a Senior Fellow at the University of Melbourne.

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Issues covered include: incident management, reportable conduct scheme, complaint, workplace investigation, ill and injured staff, medical certificates

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Issues covered include: warranties, indemnities, insurance, M&A transactions

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Issues covered include: strata, short stay, body corporate, foreign investors, duty, CGT, interim planning decisions, administrative law rulings

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Issues covered include: privilege, waiver, the Harman Obligation, advocacy

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Issues covered include: blended families, second spouses, superannuation, case update

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Issues covered include: law making process, new laws, amendments, legislative drafting process, parliamentary bills, delegated legislation, tabling of documents, public interest immunity, PII, royal commissions, judicial inquiries, parliamentary inquiries, parliamentary privilege, executive privilege, parliamentary procedure, powers of parliament, inquiry powers, public sector

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Issues covered include: inherent risks of treatment, breach of duty and causation, delay, misdiagnosis, failure to diagnose, euthanasia, medical products, product liability, class actions, regulatory matters

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Issues covered include: Guardianship division, VCAT, moral duty, financial elder abuse, ethics, ethical considerations

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Issues covered include: discretionary trusts, trust and company law, tax implications for property settlements, financial documents

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Issues covered include: estate planning and succession, taxation, superannuation, Division 7A issues, testamentary trusts, blended families, foreign clients and assets, small businesses, aged care issues, executor risks

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Issues covered include: trusts, CGT concession, ATO rulings, discretionary trusts, vesting, winding up a trust

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Issues covered include: employment termination, contractors, single touch payroll, superannuation guarantee, payroll tax, FBT, expatriate tax overview, underpayment of wages, accessorial liability under the Fair Work Act

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Issues covered include: ALRC, discovery, financial proceedings, disclosure, companies, trusts, partnerships, deceased estate, alternative, restorative justice, mediation, mediator, successful family law practice, costs, billing, growth and development, domestic violence, family violence, trauma, protection orders, parenting orders, evidentiary rules, affidavits, parental alienation, ethics, ethical dilemmas

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Issues covered include: consumer data right, consumer law, ACCC, penalties, Royal Commission into the Financial Sector, employment law, mental health, whistleblowing, regulatory compliance

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Issues covered include: Consumer law, ACCC, consumer data right, ICT, IT contracts, privacy, employment, mental health, workplace investigation, unconscious bias

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Issues covered include: Consumer data right, big data, privacy, mandatory data breach reporting, GDPR, Banking Royal Commission, ACCC, consumer law, ACL, corporate social responsibility, modern slavery, ethics, mental health, practice management, workplace investigation

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Issues covered include: admissibility, advanced rulings, expert evidence, contracts, deeds, Royal Commissions, compulsory examinations, privilege, waiver, advocacy, interlocutory & urgent applications

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Issues covered include: Retail shop lease dispute, tenant, landlord, Retail Leases Act, QCAT, retail tenancy disputes, retail leasing, mediation, leasing disputes, combustible cladding, asbestos, tax, fitouts, depreciation, lease incentives, GST, commercial tenancies, market overview.

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In its 6th year, the Geelong 10 points in One day program offers insights from the industry front line practitioners. You don't have to travel to the CBD to gain updates of current topics and gain your compulsory CPD units. Attend the full program or choose the sessions most relevant to your practice.

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Issues covered include: Win and Retain more Clients, Stress Management, Privileged Evidence and Avoiding Inadvertent Waiver, Contract Disputes and Settlement of Litigation, Exclusion, Indemnity and Insurance Clauses, Insolvency Law Reform, Post-employment restraints, Property, Retail and Commercial Leasing.

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The vast majority of businesses in Australia are small businesses, so you better be prepared to provide up to date and expert advice when a small business client comes to you for help. That means being across the game changing developments stemming from the budget, the election and the Banking Royal Commission. Eleven experts working on small business advisory will give you the latest updates and cutting edge strategies on all of the key issues your small business clients will expect you to know.

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Issues covered include: immigration for business and investors, foreign investment, non-residents doing business, non-residents doing family business, owning a property, anti-money laundering, tax considerations and non-residents, estate planning, administration and sucession for migrations and foreign investors

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Issues covered include: exceeding expectations, plain English techniques, business acumen, resilience and wellbeing

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Issues covered include: Narcotic Drugs Act 1967, Medico Legal aspects, in-house counsel perspective, Courts, prescribing in the clinical setting

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Issues covered include: workplace discrimination, religious organisations, estate planning, crime, parenting, child support, parental rights

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Issues covered include: Technology, Blockchain, WayBack Evidence and Domain names, Directors liability, Quality and financial control, Ethics, manner of manufacture, Infringement, latests cases and developments.

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Issues covered include: Family court proceedings, Subpoena, Separation, Divorce, Family violence, Litigation, Evidence, New Redress Scheme, Child Safety Obligations, Royal Commission, Civil Claims for Institutional Abuse, Criminal Liability and Sexual Abuse, Child Safe Standards.

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Issues covered include: Financial Adviser Standards and Ethics Authority (FASEA) Update, TBAR, Royal Commission, Pension options, SMSF Deed, Superannuation contributions, non-concessional contributions, Transfer Balance Account, Super Death Benefits, Binding death benefit nominations, blended families, incapacity.

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Issues covered include: Enterprise value, Tax strategies, Pre-Sale Restructuring, Selling Business with Property, CGT exemptions, Concessions, Property structure, Business valuation methodologies, Preparing a Business for Sale, Equity transfer to family, Third party sale, tangible and intangible assets, Intellectual Property, Privacy and Data Protection, M & A Merger and Acquisition.

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2019 is a significant year for the retirement village and aged care sectors. The Royal Commission is shaking up the industry, elder abuse and tax law are changing, and there are big shifts in integration and funding issues. Plus the many risks in estate planning, capacity, technology and more. With so much unrest in the sector it’s now more crucial than ever to stay up to date with the latest developments. Equip yourself with the strategies necessary to handle these issues for you client or organisation.

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Issues covered include: Tenancy, tenants, franchise lesing, office sharing, subleases, Dispustes, Variation, Surrender provisions and Termination of Leases, remedies, defaults and damages, co-tenancy, covenants, breaches, insolvency, financial issues and risk, Outgoings, Guarantees, Insurance, Indemnities, Case and Legislative Update.

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Issues covered include: Supreme Court of New South Wales, Service of Notices in Probate, Affidavit of Service, Grants of Probate and Administration, Letters of administration on intestacy, Special and limited grants, Taxation, executor and trustees, stamp duty, foregin estate, income tax, Probate case update decisions.

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Issues covered include: Sexual Harassment, Bullying and Work Safety Claims by Independent Contractors, Fair Work Act and Work Health and Safety Act, Uber and the Point to Point Transport Industry, Sham contracting, who is a contractor, who is an employee.

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Issues covered include: Finance and Property proceedings, Dispute Resolution, Pre-nuptial and nuptial agreements, Family Law Settlements, Transfer of tax debt, Bankruptcy, Spouse Maintenance orders variation, post-separation contributions, Accrued Jurisdiction of the Family Court, Contravention applications, Arbitration.

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Issues covered include: National Redress Scheme, Vicarious Liability in Civil Liability Amendment (Organisational Child Abuse Liability) Act, Expert evidence, Royal Commission into Institutional Responses to Child Sexual Abuse, Medico-Legal.

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Issues covered include: Admissibility of expert evidence, High Court and Court of Criminal Appeal, Evidence Act, Admitted facts, Uncontested facts, Disclosure and Privilege, Tendency and Coincidence Evidence.

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Issues covered include: Statutory unconscionable conduct, Indemnities, Contract drafting, Incorporation of Contractual Terms, case law, Jeffrey Goldberger, Special Counsel, Norton Rose Fulbright.

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Issues covered include: Proposed Acquisition Notice, Powers of resumption, Assessments, Instructing Experts and Maximising Expert Evidence, Land valuation assessment and methods, partial acquistion, business valuation and compensation.

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Issues covered include: Phoenix business activities, tax case update, historical loans, unpaid present entitlements, small business restructuring, practical tax solutions for small business

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Issues covered include: wealth accumulation, property tax, insurance payment, cryptocurrency, client's marriage, separations, family and accounting, succession and estate plannning

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Issues covered include: intent, purpose, context and structure, practical problem solving, judicial review, repeal of statute

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Analyse decision making and reason writing and then work through an in depth, interactive workshop where the presenters will examine, dissect and reconstruct a decision in this unique, can’t-miss workshop.

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Issues covered include: 'Ultimate Consumer' test, heads of agreement, guarantees, assignment, special tenancy arragement, lease documents interpretation, breaches of lease, termination

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Facing family law issues in your school? We have a step by step guide to guide you. Dealing with child safety risks? We’re offering real world guidance from the legal, law enforcement and principal perspectives. Want all your questions answered? Our interactive panels are tailor made for you. And that’s just the start of what you’ll gain from this unique, can’t miss event.

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Issues covered include: capacity, unconscionable conduct, sexual issues, privacy, data security, convergence and seniors living

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Issues covered include: three way examination, inspections, defaults and penalties, case law

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Issues covered include: Trademarks, patents, parallel imports, protection of IP in China, policy register for IP Australia, patent remedies, patent drafting,

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Issues covered include: terrorism offences in Australia, prosecuting home grown terror plots, trends in terrorism, human exploitation

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Keep yourself updated on the psychology and the legal trends in psychological and psychiatric injury claims, including bystander PTSD claims. With claims on the rise, understanding both the medicine and the law is essential for all practitioners working in this area. Straddling the medical and legal worlds, this seminar offers a better understanding of how medical professions form their assessments and evaluate claims, and you will gain an update on the Work Accident and TAC claims.

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Issues covered include: third parties in family law disputes, problem solving, property settlements, family violence amendments, alternate dispute resolution

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Issues covered include: serving of notices in different types of probate proceedings, digital assets and the afterlife, probate litigation

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Issues covered include: Parents, legal disasters, Privacy law, mental and physical health of staff, misconduct, disability and discrimination obligations, race, sex and gender identity, children with physical and learning disabilities

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