Trade Marks and Patents Symposium 2022
Leading trade mark and patent practitioners will unpack major developments with in-depth presentations covering the latest cases, legislation, trends & best practices. Examine the latest trade mark cases & the impact of the CCA repeal. Uncover strategic alternatives to interlocutory injunctions & gain a focused review of major developments in patents in the past year. This information packed program is not to be missed by all intellectual property lawyers including trade mark and patent attorneys. WEB226V08
Description
Attend the full day and earn 7 CPD/CPE units including:
7 CPD/CPE units in Substantive Law
4 points in Trade Marks
3 points in Patents
This program is applicable to practitioners from all States & Territories
Session 1
Trade Marks Review
Chair: Erhan Karabardak, Director, Lawyer and Trade Marks Attorney, Cooper Mills Lawyers; Bronze Tier, Prosecution and Strategy, World Trademark Review 2021
9.00am to 10.00am Practical Lessons from Recent Trade Mark Cases
- PDP Capital Pty Ltd v Grasshopper Ventures Pty Ltd [2021] FCAFC 128
- Allergan Australia Pty Ltd v Self Care IP Holdings Pty Ltd [2021] FCAFC 163
- Other recent trade mark cases
Presented by Margaret Ryan, Lawyer and Trade Marks Attorney, IP by Margaret
10.00am to 11.00am Domain Name / Trade Mark Law Overlap Update
- .au Domain Administration Rules of 2021
- New recovery options from squatters
- Caselaw update
Presented by Joel Masterson, Director, By George Legal; Best Lawyers 2022, Intellectual Property Law and Tony Grujovski, Senior Associate, By George Legal
11.00am to 11.15am Morning Tea
11.15am to 12.15pm Trade Marks and Competition Law
- The core thrust of competition law: its relevance
- Impact of s 51(3) Competition and Consumer Act 2010 (Cth) repeal
- Interaction between common law and key legislation
- Relevance of international developments
- What effect has COVID-19 had?
Presented by Dr Steven Stern, Barrister and Trade Mark Attorney, Svenson Barristers; Adjunct Professor, Victoria University
12.15pm to 1.15pm The Trade Marks Act 1995 and the High Court
The High Court has considered the Trade Marks Act 1995 on 3 occasions in the last 25 years. This session will discuss those cases and their effect on trade mark law in 2022.
- Who is a person aggrieved under the Act
- What is authorised use
- Registering foreign and laudatory words as trade marks
Presented by Susan Gatford, Svenson Barristers; Recommended Intellectual Property Law Junior Counsel, Doyle’s Guide 2021
Session 2
Patent Protection & Litigation
Chair: Warwick A Rothnie, Barrister, List G Barristers: Preeminent Intellectual Property Law Junior Counsel and Preeminent Technology, Media & Telecommunications Junior Counsel,Doyle’s Guide 2022
2.00pm to 3.00pm Interlocutory Injunctions in Patent Cases: The Law and Trends
- The legal principles of interlocutory injunctions and how those principles have been applied in patent cases before and after the decision in Sigma v Wyeth [2018] FCA 1556
- A comparison of interlocutory injunction decisions in patent cases compared with other IP rights
- Strategic alternatives to interlocutory injunctions for rights holders
Presented by Emma Iles, Partner, Herbert Smith Freehills; Best Lawyers 2022, Intellectual Property Law, Alternative Dispute Resolution; Intellectual Property & TMT Rising Star, Doyle’s Guide 2020; Chambers, Asia-Pacific 2022 - Up & Coming, Life Sciences
3.00pm to 4.00pm The Increasing Importance of ‘Best Mode’, ‘Support’ and ‘Insufficiency’ Issues in Patent Litigation
Despite many jurisdictions no longer requiring a patent applicant to disclose the best method of performing their invention for validity, Australia continues to impose a best method requirement. And failure to do so is increasingly becoming a ground of opposition and revocation that is relied on in Australia, often resulting in refusal or revocation of a patent. The more stringent support and sufficiency grounds are also increasingly being relied on during opposition and revocation proceedings.
- Review of recent decisions
- How to draft your specifications to comply with the best method, sufficiency of disclosure and support requirements
- Litigation strategies to both defend and invalidate a patent on these grounds
Presented by Dr Danielle Burns, Principal and Patent Attorney, Phillips Ormonde Fitzpatrick
4.00pm to 4.15pm Afternoon Tea
4.15pm to 5.15pm Overseas Patent Protection Primer: What to be Aware When Representing Clients Overseas
This session will cover what to be aware of when representing clients overseas including:
- Filing and prosecution (US; EP); where does AU patent have influence (NZ; SG; MY); International Examination vs early NPE in AU and expedited examination; written description/support
- Validation in Europe; post-grant proceedings (Unified Patent Court)
- Renewals
Presented by Dr Paul Warden-Hutton, Partner and Trade Mark Attorney, Houlihan² Patent & Trade Mark Attorneys
Presenters
Erhan Karabardak
Erhan is a lawyer and Registered Trade Marks Attorney. He is a Director of Cooper Mills Lawyers and has been practising law for more than 25 years. Erhan is also active in the domain name industry and represents domain name registrars and resellers, and has advised some of the world’s largest domain name registrars. Erhan is recognised as an expert in domain name law and has run some of the leading cases in the area. Erhan previously served as a Director and Chair of auDA, Australia’s Domain Name Regulator. Erhan acts for brand owners, in the management and protection of their intellectual property rights. His clients include both national and international clients, including well known global brands. He is regularly engaged to provide expert advice and commentary on domain name and trademark issues, and is a co-author of ”Trademarks and the Internet” chapter of Lexis Nexis, Lahore Patents, Trade Marks & Related Rights.
Margaret Ryan
Margaret Ryan received the University Medal in Law from the University of Sydney and commenced her career in Intellectual Property when she worked as a Research Assistant to the late Federal Court Justice Sheppard, who specialised in IP. Margaret has over 30 years' experience in intellectual property and consumer protection law. She was trained in the IP departments of two large commercial law firms and 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 fierce advocate. She is both a Solicitor and a registered Trade Marks Attorney. Margaret has lectured and tutored in IP at Victoria University and has contributed to the copyright sections of The Laws of Australia and The Law Handbook (2018-2022). Margaret has established a sole practice in IP and consumer protection law – IP by Margaret - undertaking IP commercial and dispute resolution work and trade marks advice and oppositions. She can consult on IP issues and accepts instructions to appear at Trade Mark Office hearings.
Joel Masterson
Tony works with creative and marketing agencies, food and beverage brands, fashion houses, hospitality businesses, artists, designers, musicians, photographers and other creative businesses to protect, enforce and commercialise their intellectual property rights. He has specific expertise in managing international trade mark portfolios and ensuring the valuable branding assets of his clients are protected. Tony is experienced in drafting and negotiating general commercial contracts, and in entertainment and employment law. He’s known for his precise contract drafting skills and commercially-minded approach. Tony has been practising as an IP and commercial lawyer since 2012 and is a registered trade marks attorney. Prior to joining By George Legal, Tony was a senior associate at a boutique law firm where he headed up the IP practice. Tony is passionate about assisting creatively-driven businesses with their legal needs, and takes the time to ensure his clients understand all of the legal and commercial considerations in play, so they can make strong and informed business decisions.
Tony Grujovski
Tony works with creative and marketing agencies, food and beverage brands, fashion houses, hospitality businesses, artists, designers, musicians, photographers and other creative businesses to protect, enforce and commercialise their intellectual property rights. He has specific expertise in managing international trade mark portfolios and ensuring the valuable branding assets of his clients are protected. Tony is experienced in drafting and negotiating general commercial contracts, and in entertainment and employment law. He’s known for his precise contract drafting skills and commercially-minded approach. Tony has been practising as an IP and commercial lawyer since 2012 and is a registered trade marks attorney. Prior to joining By George Legal, Tony was a senior associate at a boutique law firm where he headed up the IP practice. Tony is passionate about assisting creatively-driven businesses with their legal needs, and takes the time to ensure his clients understand all of the legal and commercial considerations in play, so they can make strong and informed business decisions.
Dr Steven Stern
Dr Steven Stern is an Adjunct Professor in the College of Law & Justice at Victoria University. Dr Stern practises as a Barrister-at-Law. Traditionally, Australian legal practitioners admitted to legal practice in the State of Victoria were admitted as Barristers and Solicitors. A relatively smaller proportion of these Australian legal practitioners have undertaken to practise exclusively as Barristers and not as Solicitors. Dr Stern has given such an undertaking. Dr Stern welcomes briefs from solicitors to appear, advise and draw up documents in all court and tribunal matters. Dr Stern is a Registered Tax Agent and so also welcomes briefs on tax matters from accounting firms which employ solicitors. Dr Stern is a registered trade mark attorney and so also welcomes briefs on patent and trade mark matters from firms of patent and trade mark attorneys who employ solicitors. Dr Stern does not accept instructions directly from persons who are not solicitors or from bodies which do not employ solicitors (other than in such exceptional and rare circumstances as where, for example, he might perform a small amount of essential and urgent “barrister’s work” for a client on the basis that the client is in the process of finalising the engagement of an instructing solicitor or he is functioning as a “duty barrister” making a “one-off” appearance or giving a “one-off” advice as part of such arrangements as those provided under the Victorian Bar Duty Barrister Scheme). Dr Stern is instructed by the solicitors who have briefed him. Dr Stern does not communicate directly with clients where any such communication would bypass his instructing solicitors. Dr Stern enters into costs agreements with solicitors in respect of work that he is briefed to undertake. The contractual arrangements in respect of such work are between Dr Stern and his instructing solicitors. Dr Stern’s Doctor of Philosophy degree (PhD) at the University of Melbourne on the influence of financial law on monetary economics received the highest possible grading by the external examiners. Dr Stern’s Master of Laws degree (LLM) at The University of Melbourne included a major thesis on the protection of computer software which was published in an abridged form as a major article in (1986) 60 Australian Law Journal 333. Dr Stern has a basic knowledge of classical and modern literary (but not spoken or colloquial) Arabic and of Hebrew. He has lectured on Islamic law in seminars at the International Islamic University in Kuala Lumpur, Malaysia as a visitor from Victoria University. Dr Stern is the List Secretary of List S Svenson Barristers and the Library Committee Secretary of the Victorian Bar Council’s Library Committee. Dr Stern is also a member of the Committee of the Tax Bar Association at the Victorian Bar; a member of the Law Institute of Victoria’s Administrative Review & Constitutional Law Committee; a member of the Trade Marks Committee of The Institute of Patent and Trade Mark Attorneys of Australia; and a member of the General Council of the Economic Society of Australia – Victorian Division. Dr Stern is a Chartered Tax Adviser; a Fellow of The Institute of Patent and Trade Mark Attorneys of Australia; holds an Indictable Crime Certificate from the Victorian Bar; is a Senior Fellow of the Economic Society of Australia; is a member of the Australian Academy of Forensic Science; regularly is invited to make presentations to Continuing Professional Development seminars; and continues to publish the results of his research on the law and how its changing substantive provisions are influenced by commercial, economic, political and scientific developments in a series of refereed publications recognised by the Australian Research Council.
Susan Gatford
Susan Gatford is an intellectual property barrister at the Victorian Bar. 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. Her practice is principally in the Federal Court but she also appears in the Supreme Court and represents parties in IP Australia hearings. Recommended in Doyle's Guide to leading intellectual property barristers, she has extensive experience acting for Australian and multinational corporations in the fashion, design, consumer, manufacturing, construction, entertainment, electronics, software, franchising, agricultural and biotechnology sectors. Susan is a member of the Victorian IPSANZ committee and the Deputy Chair of the Victorian Bar’s Alternative Dispute Resolution committee. She holds an LLB, a Master of Laws, and a Bachelor of Science (Honours) majoring in genetics and botany. She is also a Registered Trade Mark Attorney and an accredited mediator.
Warwick A Rothnie
Warwick Rothnie is a barrister practising in all aspects of intellectual property law and, generally, commercial law; appearing mainly in the federal courts and before IP Australia. Prior to coming to the Bar, he was a partner in the intellectual property 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 having taught Patents Law and, most recently, 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.
Emma Iles
Emma is a specialist in intellectual property advice and dispute resolution. Emma advises clients in all areas of IP and technology, including patents, trade marks, copyright, consumer law and confidential information. Emma has particular expertise in the life sciences sector, with her legal qualifications complemented by a degree in Biomedical Science. Her litigious experience includes multi-jurisdictional patent disputes, international arbitrations and commercial damages disputes. This experience extends to industries including pharmaceuticals, biotechnology, medical devices, software, and consumer products. Emma also has considerable experience advising clients on regulatory issues relating to pharmaceuticals and medical devices.
Dr Danielle Burns
Danielle has extensive experience as a patent attorney with expertise in patent strategy, protection and enforcement in the Biotech sector. She has a strong understanding of global patent and regulatory exclusivities (including data and market exclusivities) and has facilitated entry of several biopharmaceuticals (including antibodies and antisense molecules), diagnostics, cellular therapeutics, and agricultural products (including transgenic plants) to market. Danielle is involved in the preparation and prosecution of patent applications globally; patent due-diligence; and provides patentability, infringement, clearance, and validity opinions. Danielle has also been involved in opposition and litigation disputes involving multiple stakeholders. Danielle has a diverse client base – working with several local and overseas biotech companies, including small to medium entities, big pharmaceutical companies and generics companies as well as academic institutions to strategically protect their intellectual property and facilitate market entry. Danielle has industry experience, having worked as a postdoctoral scientist at BIO21 involved in the expression and purification of proteins involved in Influenza-specific viral immunity. She graduated from The University of Melbourne with a BSc (Hons) majoring in Biochemistry and Immunology. She was awarded the Australian Society for Microbiology 3rd Year Prize, the Exhibition Prize for Microbiology and the Peter J Doos Award. Danielle also completed a PhD in Immunology at The University of Melbourne which examined the impact of natural variation in genes that control immunity; showed how very slight differences in certain immune response genes result in dramatic changes in the response to viral infection.
Dr Paul Warden-Hutton
A Partner of Houlihan, Paul Warden- Hutton holds a B.Biomed.Sc. majoring in Biochemistry, Molecular Biology and Chemistry, a Ph.D. in Biophysics, in which he performed kinetic, structural, bioinformatic and computational studies and a Masters in IP Law. Paul is a Registered Australian and New Zealand Patent & Trade Mark Attorney. In addition to his experience working in Australia, Paul has worked for a Japanese Patent Attorney firm where he largely provided advice to Japanese and non-Japanese IP Owners in relation to Japanese Patent Law and its landscape. With his Chemistry/Biochemistry and computational backgrounds, Paul has worked in both Australian and Japanese Patent Attorney Firm's Life Sciences and Information Technology Teams. Paul provides advice to a range of local and international clients across the full spectrum of Intellectual Property Rights. Paul's practice includes drafting, prosecution and litigation of Biochemical, Biophysical, Spectroscopic, Medical Imaging, Chemical, Pharmaceutical and Plant Breeder Rights matters before the Australian and New Zealand Patent Offices. With his background in applied research, Paul is able to provide particular assistance in the patent protection of convergence technologies, which capitalize on a range of knowledge bases and skills from the Life and Physical Sciences. Paul's extensive experience in drafting Patent specifications which are geared to meet the requirements of multiple jurisdictions has seen his services sought out by local and intern