Intellectual Property: Commercialising IP and Licensing
Commercialising their IP is really what your clients care about. Attend this seminar to decode the issues of commercialising IP, including how the unfair contract terms legislative changes impact on your clients. Deep dive into considerations when conducting IP due diligence and negotiating an international patent license. Uncover the traps of business structuring on IP, gain knowledge on how to commercialise a Software as a Service (SaaS) platform and so much more! WEB223Q02
Description
Attend and earn 4 CPD units in Legal Knowledge
This program is applicable to practitioners from all States & Territories
Chair: Ben Coogan, Partner, Thomson Geer; Deputy Chair, Technology and IP Law Committee, QLS; Best Lawyers 2022, IP, Entertainment Law, IT, ADR, Defamation and Media Law; Preeminent Intellectual Property Lawyer and Recommended TMT Lawyer, Doyle’s Guide 2021
9.00am to 9.05am Opening Comments by the Chair
9.05am to 9.50am Unfair Contract Terms in an IP Context Examined
- ‘Unfair contract terms’ defined
- How is the UCT regime relevant in an IP context?
- What consequences/penalties apply?
- How to mitigate the risk of unfair contract terms
Presented by James Cameron, Special Counsel, Corrs Chambers Westgarth; Best Lawyers 2022, Life Sciences Practice, Biotechnology Law; Recommended Intellectual Property Lawyer, Doyle’s Guide 2021
9.50am to 10.35am IP Commercialisation: Key Issues
- IP and business structuring
- The pitfalls of joint ownership
- Special considerations for exclusive licences
- Commercialising know-how
- Using IP assets as security
Presented by Cameron Gascoyne, Partner, Clayton Utz; Best Lawyers 2022, Intellectual Property Law, Information Technology Law; Leading TMT Lawyer and Recommended Intellectual Property Lawyer, Doyle’s Guide 2021
10.35am to 10.50am Morning Tea
10.50am to 11.35am How to Negotiate an International Patent License
- Structure of a patent licence
- Issues that commonly arise in negotiations
- International issues and differences
- Royalty clauses
- Enforcement of the patents
- Term of the license
- Choice of law and dispute resolution
- Risk mitigation
Presented by John Swinson, Professor - School of Law, The University of Queensland; Best Lawyers 2022, Intellectual Property Law, Commercial Law, Information Technology Law, Biotechnology Law, Telecommunications Law; Preeminent Intellectual Property Lawyer and Preeminent TMT Lawyer, Doyle’s Guide 2021
11.35am to 12.20pm Commercialising Software as a Service (SaaS) Platforms
- Cloud based platform vs traditional on premise software
- Licensing: How SaaS is ‘licensed'
- Platform commercialisation models
- Characteristics of platform contracts
- IP ownership in platform contracts
- Negotiation strategies for platform contracts
Presented by Kay-Lam MacLeod, Special Counsel and Alex Trezise, Senior Associate, HWL Ebsworth
12.20pm to 1.05pm IP Due Diligence Issues
- What should lawyers check when conducting IP due diligence?
- Who owns IP developed by employees, shareholders and directors?
- Due diligence considerations with respect to personal information
- Common problems and how to fix them
- How do you adequately transfer title to business IP when purchasing business assets?
Presented by Katrina Chambers, Special Counsel, Thomson Geer; Best Lawyers 2022, Intellectual Property Law; Leading Intellectual Property Lawyer, Doyle’s Guide 2021 and Jonathan Lewis, Senior Registered Patent and Trade Marks Attorney, Kings Patent & Trade Marks Attorneys
1.05pm to 1.15pm Final Q&A and Closing Comments by the Chair
Presenters
Ben Coogan
Ben practises in the areas of intellectual property and commercial litigation, information technology, franchising, defamation, competition and consumer law and trade mark prosecution. He advises international and national clients about their IP and technology related contracts, licences and distribution agreements and regulatory compliance issues. Ben has specialist experience in patent, trade mark and copyright litigation nationally and internationally. He advises and litigates disputes relating to competition and consumer, confidential information and trade secrets law. Ben is a qualified mediator and also has experience in acting for clients and as an independent supervising solicitor in the execution of Anton Piller orders.
James Cameron
An intellectual property, life sciences, competition and consumer law practitioner with over 19 years’ experience, James specialises negotiating complex commercial contracts, regulatory advice, major procurement and due diligence.
Trusted by a diverse range of local and state governments, private and international clients, James acts across a range of industry sectors including health care, consumer goods, education, waste management, franchising and life sciences.
James is a Queensland committee member of the IPSANZ, a member of the Queensland Competition & Consumer Law committee of the Law Council of Australia and, for a number of years, has delivered the consumer law module for Risk and Compliance at the Governance Institute of Australia Ltd.
Cameron Gascoyne
Cameron Gascoyne is a partner of Clayton Utz specialising in intellectual property law. Cameron has substantial experience advising on the development, protection and commercialisation of intellectual property. He advises on strategic alliances, joint ventures and other commercial arrangements for collaborative research and development projects, and advises clients on arrangements for licensing core business technology. Cameron acts for a range of government and private sector clients across a broad range of industries.
John Swinson
John Swinson's principal interests are intellectual property law, Internet law, privacy law, cybersecurity law and the application of law to new technologies. He was a partner at the law firm King & Wood Mallesons from 1999 to 2021. He was also Chairman of the auDA Policy Review Panel, which made recommendations to the auDA Board to revise Australia's domain name policies in 2019. Since 2000, John has been an arbitrator for the World Intellectual Property Organisation (WIPO) in Geneva and has decided over 350 disputes regarding the ownership of domain names. John was an adjunct professor at QUT from 1999 until 2017, after which he commenced as a part-time professor at the T.C. Beirne School of Law.
Kay Lam-MacLeod
Kay is an IT law specialist. She is experienced in providing advice and assistance with negotiating and drafting technology-centric contracts, and advising on intellectual property matters. She holds qualifications in law, business and IT, and was the principal of a boutique IT law firm acting for private sector technology companies for many years. Her hands-on experience in this area enables her to provide practical and commercial legal advice.
Alexandria Trezise
Alexandria is a commercial lawyer with a focus on intellectual property, privacy and technology.
Katrina Chambers
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, knowhow and other valuable confidential information, advertising law and domain name disputes.
Jonathan Lewis
Jonathan maintains a broad practice in all aspects of IP law, including patents, trade marks and designs. As a patent attorney, he is experienced in drafting, prosecuting and opinion matters in relation to chemical and mechanical engineering fields, including minerals processing, extractive metallurgy, industrial processes, medical devices, mechanical devices and packaging technology. Jonathan also has worked in many aspects of the mining and minerals industry from being a plant metallurgist at Ernest Henry Mining in North Queensland, to research at the University of Cape Town in South Africa and consulting at JKTech in Brisbane. Prior to working in private practice, Jonathan worked as a Patent Examiner.