Patents Intensive

Equip yourself with the knowledge to anticipate change, make informed decisions, and strategically position yourself in the ever-evolving landscape of patent law. Whether you find yourself navigating the complexities of patent prosecution, litigation, or licensing, our in-depth Intensive is designed to ensure that you stay ahead, informed, and empowered.WEB246V02

Description

Attend and earn 7 CPD units including:
5 units in Substantive Law
1 unit in Ethics & Professional Responsibility
1 unit in Professional Skills

This program is applicable to practitioners from all States & Territories

Session 1

Case Updates, Due Diligence and Patentability

Chair: Robert Wulff, Principal, Griffith Hack

9.00am to 10.00am Patents Insights: Examining Key Decisions Over the Last Year

Stay at the forefront of legal developments with the latest updates. Delve into key rulings, established precedents, and emerging trends that are likely to shape the future of patent law.
Presented by Phoebe Arcus, Barrister, 5 Wentworth Chambers; Leading Intellectual Property Junior Counsel – NSW and Australia, Doyle's Guide 2023

Professional Skills
10.00am to 11.00am Due Diligence for Patent Investees and Investors

  • Ideal investee information and due diligence parameters, including patent ownership, licensing agreements and potential infringement issues
  • Assessing level of risk in conducting a high-level investigation against the costs associated with conducting more in-depth due diligence
  • Interpreting investigations to gauge the strength, enforceability, and market relevance of a patent portfolio

Presented by Kate Wilson, Registered Patent Attorney, KTPI Enterprises

11.00am to 11.15am Morning Break

11.15am to 12.15pm AI Patentability and Insights from the Emotional Perception AI Case

  • Key considerations in Emotional Perception AI Ltd v Comptroller-General of Patents, Designs and Trade Marks, including the basis for UKIPO's initial rejection and the High Court’s decision
  • Comparing the UK approach to patenting AI-based inventions with the current practices and outcomes in Australia
  • UKIPO's change in examination guidance and practice and the potential impact on future patent applications in both the UK and Australia
  • Broader legal and strategic considerations for patenting AI technologies for inventors and applicants

Presented by Mark Summerfield, Patent Attorney, IP and Technology Consultant

12.15pm to 1.15pm Keeping an Eye on the End Game: Attorney/Lawyer Strategies and Recent Developments

  • Matters to be aware of when preparing evidence in patent oppositions and before the Federal Court:
    • Rules of evidence
    • Considerations for expert evidence including Novartis v Pharmacor and New Aim v Leung
    • Fact evidence preparation
  • Preliminary discovery –   when it can be obtained and how to resist an application
  • Unjustified threats and consequences

Presented by Bindhu Holavanahalli, Senior Associate, Wrays

Session 2

Patent Litigation: Strategies, Best Practice and ACCC Proceedings

Chair: Melissa McGrath, Barrister, Nigel Bowen Chambers

2.00pm to 3.00pm Key Considerations in Patent Litigation: Best Method, Support and Sufficiency

  • How has a decade of “Raising the Bar” shaped Australian patent landscape
  • Latest case law
  • Tips for complying with the “best method”, “disclosure” and “support” requirements
  • Strategic considerations in patent infringement/revocation proceedings

Presented by Ben Mee, Barrister, 5 Wentworth Chambers; Leading Intellectual Property Junior Counsel – NSW and Australia, Doyle’s Guide 2023; Asia-Pacific 2024: Intellectual Property: The Bar, Chambers

3.00pm to 4.00pm Pharmaceutical Patent Litigation and the ACCC

  • Unpacking the current legislative framework
  • Competition in the Australian pharmaceutical industry
  • Juno Pharmaceuticals Pty Ltd & Ors
  • A rosy future for generics and originators?

Presented by Paul Whenman, Consulting Partner, FB Rice; IP Star 2023, Managing IP

4.00pm to 4.15pm Break

Session 3

Ethical Considerations for Patent and Trade Mark Attorneys

Ethics and Professional Responsibility
4.15pm to 5.15pm Patent Attorney Competency and Communication: It’s All About the Client

 

  • 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, Consulting Partner, FB Rice; IP Star 2023, Managing IP

 

Presenters

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.

Phoebe Arcus
Phoebe Arcus is a Barrister at 5 Wentworth Chambers, specialising in intellectual property (including patent, trade mark, copyright, design and domain name disputes), corporate law and trade practices and is recognised as a leading junior counsel in intellectual property in numerous legal ranking guides, such as Chambers & Partners, the Doyle’s Guide and Best Lawyers, among others. Phoebe is a member of the Intellectual Property Committee, Business Law Section of the Law Council of Australia and a member of the Wellbeing Committee of the New South Wales Bar Association. Prior to the bar, Phoebe worked as a solicitor for King & Wood, Mallesons, Sydney and as an Associate to Hon. Justice Bennett SC AC AO of the Federal Court of Australia. She is also admitted in the United States (New York) and is a current member of the New York Bar Association.

Kate Wilson
Kate, a former founding partner of James & Wells, is a registered patent attorney (in New Zealand and Australia), has degrees in physics and chemistry, and is internationally recognised as a leading IP strategist with particular experience in patent matters. She is also an educator in all matters IP and intangible asset related and has extensive expertise in establishing and managing IP portfolios. After stepping down from the James & Wells partnership in 2015, Kate established some non-IP related businesses and sits on a number of corporate boards. Kate is now focussed on providing strategic IP and business advice as a consultant at James & Wells.

Mark Summerfield
Dr Mark Summerfield is a registered Trans-Tasman Patent Attorney, specialising in patent law and practice in the fields of digital and computer systems, information and communications technologies, and computer software. Mark provides consultancy services on patents (including drafting and prosecution), IP strategy, and related matters in his specialist technology fields. He is also currently a PhD candidate at the Melbourne Law School where he is investigating applications of natural language processing technologies to the analysis of patent claims with application to patent law and policy. He worked for over a decade with one of Australia’s leading boutique IP firms advising individuals, companies and research institutions on management and protection of their intellectual assets. Since 2010 Mark has maintained a blog (patentology.com.au), where he writes regularly on local and international issues relating to innovation, patents, law, policy and the IP profession. He speaks regularly on topics related to patents, IP and digital technology, and lectures on Australian patent practice at the University of Melbourne.

Bindhu Holavanahalli
Bindhu Holavanahalli is an intellectual property lawyer and registered patent & trade marks attorney, working within the dispute resolution and life sciences teams at Wrays. Admitted to practice in 2014, Bindhu assists clients in a range of patent opposition and patent litigation matters, including complex pharmaceutical litigation and mining technology matters. Bindhu also has experience assisting clients with brand protection, trade mark and related consumer law matters.

Melissa McGrath
Melissa McGrath is a specialist intellectual property lawyer with degrees in both law and science who advises domestic and multinational clients on commercial issues and dispute resolution strategy. She has worked with clients such as Universal Music Australia, Sony Music Australia, Westpac, Vodafone, Warner Chapel Music Australia, Louis Vuitton Malletier, Cadbury, Samsung, H Lundbeck and Mylan.

Ben Mee
Ben Mee specialises in Intellectual Property law, and holds a BSc (Biochemistry)-LLB (Hons I, University Medal), and an LLM in Commercial Law (Hons I) from Cambridge University. Ben has particular strength in patent matters in the pharmaceutical, biotechnology and information technology/software sectors, and appellate work. He is recognised in Band 1 for Intellectual Property by Chambers and Partners, and is listed in Doyle’s Guide, Who’s Who Legal, and Best Lawyers Australia. He regularly appears led and unled in the Federal Court, Patent Office and Trade Marks Office. Prior to being called to the Bar in 2014, he practised as a solicitor with Allens in intellectual property and competition law, and was an Associate to former Chief Justice of the High Court the Hon RS French AC.

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 39 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 2023. He is also listed by IAM as a Strategy 300 IP strategist 2022. 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.

John Scicluna
John Scicluna is a registered patent and trade marks attorney based in Sydney. With a background in materials science in the private and research sectors, John’s experience enables him to work across multiple areas of technology. He has experience working with a broad range of clients from individual inventors and small to medium enterprises, to large global businesses and research organisations.

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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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