Trade Marks and Patents Conference 2022
Eminent trade marks & patents practitioners will unpack the latest developments in the field. Spend the morning assessing the latest in infringement defences and the branding advice minefield. Explore the legal considerations when determining honest concurrent use. In the afternoon patents session, review recent cases on the support requirement, misuse of market power or cartel conduct and unpack the intricacies of patent litigation. 225N01
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
3 Points in Trade Marks
3 Points in Patents
This program is applicable to practitioners from all States & Territories
Session 1
Trade Marks Key Developments
Chair: Sonia Stewart, Barrister, 5 Wentworth Chambers: Recommended Intellectual Property Junior Counsel, Doyle’s Guide 2022
9.00am to 10.00am Understanding BOTOX and Recent Developments in Infringement Defences
- The meaning of differentiation and determining ‘use as a trade mark’
- The defence of comparative advertising: When is it available?
- Establishing ‘good faith’ in infringement defences
Presented by Sean McManis, Principal, Davies Collison Cave; IP Star 2015-2021, Managing Intellectual Property
10.00am to 11.00am Navigating the Branding Advice Minefield
- Common issues that arise when branding or rebranding including ownership, use and intention to use, and international expansion
- Distinctiveness: the perennial problem and common problem areas
- Strategies to consider when commencing or defending trade mark infringement, passing off and/or ACL proceedings
Presented by Dean Gerakiteys, Partner, Clayton Utz; Intellectual Property & TMT Rising Star, Doyle’s Guide 2020
11.00am to 11.15am Morning Tea
11.15am to 12.15pm Honest Concurrent Use and Other Circumstances: When is An Other Circumstance not Another Circumstance?
Honest concurrent use is usually assessed with regard to 5 criteria, but it has long been accepted that the relevant considerations are not confined to them.
- The Trade Marks Act 1995 contemplates registration of a mark despite a conflicting, existing registration either when:
- There has been honest current use (s.44(3)(a) or
- When other circumstances make it proper that the later mark be registered (s.44(3)(b)
- Given the breadth of the considerations relevant to a finding of honest concurrent use, the extent to which s.44(3)(b) provides additional bases for registration is not clear
- Consider whether any and if so what ‘other circumstances’ make s.44(3)(b), and not s.44(3)(a), applicable
Presented by Ron Webb SC, Best Lawyers 2022, Intellectual Property Law
Session 2
Ethics for Trade Mark and Patent Lawyers
Mandatory Ethics or Professional Conduct CPE
12.15pm to 1.15pm Ethics: Trade Mark and Patent Attorney Competency and Communication: It’s All About the Client
The Code of Conduct Health Check Report was published on 29 April 2022. A number of recommendations accepted by the Board will further regulate Attorney-Client relationships.
- What does the Code of Conduct and Guidelines require now?
- What are the likely future requirements?
- Are all clients the same?
- Acting on clients’ instructions
- Commercial conflict of interest-clarified by the Report?
- Some illustrative hypotheticals
Presented by Paul Whenman, Partner, FB Rice
Session 3
Critical Patents Update
Chair: Robert Wulff, Principal, Griffith Hack
2.00pm to 3.00pm Patents Update 2022: Support & Manner of Manufacture
- Recent cases on the support requirement under s 40(3) of the Patents Act 1990 (Cth)
- Computer-implemented inventions post Commissioner of Patents v Aristocrat
Presented by James Lawrence, Partner, Mills Oakley; Best Lawyers 2022, Intellectual Property Law, Biotechnology Law; Recommended Contentious Intellectual Property Lawyer, Doyle’s Guide 2021
3.00pm to 4.00pm Allegations of Misuse of Market Power or Cartel Conduct in the Context of Pharmaceutical Patents Following Recent Statutory Amendments
- Strengthening of the misuse of market power prohibition in s 46 of Competition and Consumer Act 2010 (Cth), including scope for private litigation between competitors
- Removal of the long-standing and broad exemption for IP transactions in former s 51(3) of the Act, including its implications for patent settlement agreements
- Dealing with the ACCC, immunity, proffers, authorisations and notifications, including recent application for authorisation under s 88(1) of the Act by Juno Pharmaceuticals and others in relation to settlement of Federal Court proceeding no VID 718 of 2020
Presented by Cynthia Cochrane SC, Best Lawyers 2022, Intellectual Property Law; Band 1, Intellectual Property: The Bar, Chambers Asia-Pacific 2022, Alexander Vial, Barrister, 5 Wentworth Chambers and Catherine Bembrick, Barrister, 5 Wentworth Chambers; Recommended Intellectual Property Junior Counsel, Doyle's Guide 2022
4.00pm to 4.15pm Afternoon Tea
4.15pm to 5.15pm Patent Term Extensions and Preliminary Injunctions
- Patent term extensions
- Obtaining a patent term extension
- Recent challenges (Ono v Commissioner of Patents, MSD v Sandoz, Bayer)
- Rights of patentee during extended term
- Preliminary injunctions:
- Recent cases, trends and impact of proposed TGA transparency regime
Presented by Natalie Shoolman, Special Counsel, Clayton Utz; Best Lawyers 2022, Intellectual Property Law; Member, Trans-Tasman Committee and NSW Committee, IPSANZ and Rose Jenkins, Lawyer, Clayton UTZ
Presenters
Sonia Stewart
Sonia was admitted as a solicitor in 2001 and called to the Bar in 2016. She specialises in intellectual property, regulatory and consumer law, with particular expertise in trade marks, brand protection law and related commercial matters, including competitor and regulatory actions for misleading and deceptive conduct arising from advertising claims. Sonia has significant experience in appearing for and advising highly-regulated and fast-moving consumer goods industries, including tobacco, alcohol, gambling, food & beverages, pharmaceuticals, cosmetics, advertising to children and to other vulnerable classes of consumers. She has appeared in large-scale litigation at trial and appellate level and represented a wide variety of national and international clients. Sonia formerly held senior in-house and executive roles as General Manager, Regulatory & Responsible Gambling, at Tabcorp and as Head of Corporate Affairs & Legal for Imperial Tobacco Australia. In private practice, Sonia was also a Senior Associate at Mallesons Stephen Jaques (now, King & Wood Mallesons) in the Intellectual Property and Dispute Resolution practice group.
Sean McManis
After 24 years at Shelston IP, where he was head of the trade marks team, Sean has recently joined Davies Collison Cave, one of Australia's leading intellectual property practices. Sean is a solicitor and registered trade mark attorney, with qualifications both in science and law, and has more than 30 years experience in the field of trade marks. 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, with a particular focus on brand clearance, the resolution of trade mark disputes and the enforcement of intellectual property rights. Sean has represented a significant number of large multi-national companies in relation to the management and protection of their trade mark portfolios, and is well-recognised as a leading professional in the field of trade marks. Sean has been recognised in the WTR 1000: Ranked under Prosecution and Strategy, 2020 – 2022, IP Stars: Trade Mark Star, 2021 and Client Choice Awards Finalist: Best IP Specialist, 2020.
Dean Gerakiteys
Dean's particular focus is on disputes involving intellectual property, having successfully acted for clients on matters across the IP spectrum, including trade marks, copyright, patents, confidential information, trade secrets and domain names. This work has seen Dean work on matters at every stage of the litigation process, including winning a landmark decision in the High Court of Australia on foreign language trade marks. Complementing Dean's litigation experience is his general commercial advice on non-contentious matters for clients across a wide range of industries. From his work for pharma clients, Dean has also developed a practice in regulatory work, particularly the highly technical area of listing and advertising therapeutic goods and dealing with the Australian regulator, the Therapeutic Goods Administration.
Ron Webb SC
Ron was admitted to the Bar in New South Wales in 1988 and appointed Senior Counsel in 2002. Ron’s primary expertise is in intellectual property. Additionally he has extensive experience in commercial law, with a particular emphasis on major resource projects and commodity contracts, in administrative law and competition law and consumer law. He has appeared at first instance in the Supreme Courts of New South Wales, Victoria, Queensland and Tasmania and also the Federal Court (sitting in all States) as well as in appeals to the New South Wales Court of Appeal, the Full Court of the Federal Court and the High Court of Australia. Ron has also appeared as Senior Counsel in a number of significant commercial, constitutional and administrative law cases in PNG. Ron has also appeared in international and domestic arbitrations and in references by the courts to experts both commercial and technical, as well as in hearings in the patent office, the trade marks office and the copyright tribunal.
Paul Whenman
Paul Whenman is a consulting partner in our Sydney chemistry team. As a qualified patent attorney, Paul has had a distinguished career with the firm as managing partner for 10 years. Throughout his 37 years’ practice in FB Rice, he has gained significant experience in chemically related patents, including pharmaceuticals, animal health products, food technology, personal care products and alloys. Indeed a significant component of Paul’s practice relates to the interplay between the regulation of pharmaceuticals and animal health products and patent systems. Of particular relevance is the patent term extension regime in Australia and foreign jurisdictions. Commensurate with his deep understanding of patent law and chemical technologies, Paul regularly publishes articles offering opinions and insights into a variety of topics. With a significant international reputation, Paul has been recognized as an IP Star for patent prosecution in Managing Intellectual Property for a number of years, most recently in 2021. He is also listed by IAM as a Strategy 300 IP strategist 2021. As the importance of South East Asian markets have grown, Paul maintains a strong focus on IP developments in those countries as means of providing the best experience for clients. Within FB Rice, Paul has trained and mentored many attorneys. An important component of this training has been a focus on the ethical considerations relevant for attorneys and the conduct of an attorneys practice. The experience gained as managing partner and subsequently as life sciences practice group leader combined with the technical and legal foundations as a practicing attorney, have provided Paul with a significant depth of knowledge of relevance to all patent and trade mark attorneys. In reliance of this knowledge, IPTA invited Paul to deliver two presentations to its members on ethics in 2020-2021.
Robert Wulff
Robert Wulff is a Sydney-based principal of national IP firm Griffith Hack IP Attorneys & Lawyers, having joined the firm in 1989. Robert's patent practice is focused on Australia's resources & building products industries and energy technologies. He works with a range of organisations to develop offensive and defensive IP strategies, working closely with his firm’s litigators and IP management consultants. He also has extensive experience in registered designs and is a WIPO-accredited designs expert. Robert is a registered patent attorney with degrees in Chemistry and Chemical Engineering from the University of Sydney. Robert holds an equivalent Masters of Science in Chemical Engineering from the Royal Institute of Technology, Stockholm.
James Lawrence
James Lawrence is an experienced intellectual property (IP) advisor and litigator. He is a Partner in Mills Oakley's IP team in Sydney where 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.
Cynthia Cochrane SC
Cochrane SC specialises in patent cases and commercial cases, including competition law. She has expertise in vaccines and biological medicines. Cochrane SC appears regularly in the Federal Court and the Patent Office. She has High Court experience, special leave and appeals. She appears in the NSW Supreme Court and conducts ACCC examinations. Cochrane SC is in Band 1 in Chambers Asia-Pacific 2021. In 2020 she was recognised as ‘well known for her patent litigation expertise and [handling] high-profile cases’. She is recognised in Best Lawyers and Legal 500. Cochrane SC was a solicitor at Allens (articled to Prof Bob Baxt AO in competition law) and before then an investment banker at Macquarie Bank in Corporate Advisory. She taught economics and finance at the University of Melbourne.
Alexander Vial
Alexander was called to the Bar in 2020. While Alexander accepts briefs in all areas of law, he has particular expertise in competition law, consumer law, regulatory investigations and prosecutions, trade practices, commercial litigation, and class actions. He also has experience and an interest in insolvency and restructuring. Before being called to the Bar, Alexander was a Senior Associate at Clayton Utz in their competition team, specialising in contentious competition and consumer law matters. He also advised on a number of inquiries including the Financial Services Royal Commission and the Prudential Inquiry into the Commonwealth Bank of Australia. Prior to working at Clayton Utz, Alexander was an Associate at a boutique Adelaide law firm, specialising in insolvency, commercial litigation, dispute resolution, and appeals. Between 2011 and 2012, he was the Associate to the Chief Justice of the Supreme Court of South Australia. Alexander is a co-author of Zuckerman on Australian Civil Procedure, a leading text on civil litigation. He is also a contributor to the ‘Practical Law Australia’ service from Thomson Reuters for competition law, and a reporter of the South Australian State Reports. Alexander has also taught contract law and administrative law at the University of Adelaide. Alexander’s education includes a Bachelor of Civil Law (BCL) from the University of Oxford and a Bachelor of Laws (LLB) with First Class Honours from the University of Adelaide.
Catherine Bembrick
Catherine Bembrick is a competition law specialist and appears in matters involving cartel conduct (civil and criminal), merger clearance, misuse of market power and other anticompetitive agreements. Catherine also regularly appears in intellectual property and general commercial matters including patent and trade mark disputes. Before joining the Bar in 2015 Catherine was a Senior Associate at Allens Linklaters in the competition group, an Associate at Slaughter and May in London and Associate to the Hon. Justice Bennett AC of the Federal Court of Australia. In 2009 she was awarded a Master of Laws with first class honours from the University of Cambridge in competition law and intellectual property. Catherine is also the Chair of the Code of Conduct and Appeals Committees of Medicines Australia, the Australian prescription pharmaceutical industry body.
Natalie Shoolman
Natalie Shoolman is an experienced commercial litigator who specialises in intellectual property and technology litigation and the intersection between intellectual property and competition and consumer law. Natalie has been voted by her peers as one of Australia's Best Lawyers in Intellectual Property Law (Best Lawyers Australia 2019 - 2022), ranked by IAM Patent 1000 – Patent Litigation - Bronze (2021), recommended for patent litigation (2018) and recognised as a Rising Star (2020-2021) in Managing Intellectual Property’s IP Stars. She is considered to be one of Australia's leading "next generation" Intellectual Property lawyers (The Legal Asia-Pacific 500: 2017- 2019). With a First Class Honours degree in Science and a passion for innovation, Natalie has significant experience acting for and advising clients on all aspects of intellectual property law across a broad range of industries including pharmaceutical, biotechnology, software, telecommunications, government, clean energy, mining and FMCG. Natalie's practice includes patent infringement and revocation proceedings, patent oppositions, copyright, trade mark and design infringement, breach of confidence and consumer law disputes. Natalie has particular expertise in managing complex, multi-jurisdictional patent infringement and revocation proceedings and advising clients on ways to maximise the life of their patent portfolios.
Rose Jenkins
Rose Jenkins is a lawyer in the IP and Technology team at Clayton Utz in Sydney. Rose's particular focus is on disputes involving intellectual property, having successfully acted for clients on matters across the IP spectrum, including patents, trade marks, copyright, designs, advertising and breaches of the Australian Consumer Law. Rose has also acted for clients in IT related disputes and in general commercial litigation matters. Rose completed undergraduate degrees in Law and Science (with a Major in Biology and Minor in Immunology and Microbiology) at the Australian National University.
Venue
Cliftons - Margaret St
Level 13, 60 Margaret St
Sydney 2000
NSW
Australia
Parking not included with registration. Possible options:
Met Centre, Jamison St - Rates Click here
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