Trade Marks and Patents Forum
Issues covered include: Trademarks, patents, parallel imports, protection of IP in China, policy register for IP Australia, patent remedies, patent drafting,
Description
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.
Attend and earn 7 CPD units including:
5.5 units in Substantive Law
1.5 units in Professional Skills
This conference was recorded in VIC on 6 June 2019
Session 1
Trade Marks Practice and Procedure
Chair: Michael Wolnizer, Managing Principal, Trade Marks Attorney, Davies Collison Cave; Recommended Non-Contentious Intellectual Property Lawyer, Doyle’s Guide 2018; Leading Trade Mark Lawyer, Doyle’s Guide 2017
9.00am to 10.00am: Latest Developments in ‘Use as a Trade Mark’
- Lessons from the Trident case and Frucor v Coca Cola
- Issues for removal for non-use
- Capacity to distinguish
Presented by Dr Warwick Rothnie, Barrister, List A Barristers; Preeminent Technology, Media & Telecommunications and Leading Intellectual Property Junior Counsel, Doyle’s Guide 2018
10.00am to 11.00am: Parallel Imports: New Legislation, New Developments
- Parallel importation laws in Australia prior to the amendment
- Narrowing the scope where parallel importation of goods will infringe trade mark rights.
- Changes to the law caused by the parallel importation defence under the new s 122A of the Trade Marks Act 1995 (Cth)
- Is there any scope for brand owners to prevent parallel importation? Material differences and use of other laws?
Presented by Chris Round, Partner, K&L Gates; Leading Contentious and Non-Contentious Intellectual Property Lawyer, Doyle’s Guide 2018
11.00am to 11.15am Morning Tea
11.15am to 12.15pm: Removal of Trade Marks for Non-use
- Recent developments in the law relating to non-use applications
- The change to the grace period
- Applicants without legal personality
- The concept of ‘control’ in relation to authorised users
- Extensions of time
Presented by Margaret Ryan, Lawyer and Trade Marks Attorney, IP by Margaret
12.15pm to 1.15pm: INTERNATIONAL GUEST KEYNOTE SPEAKER: Protection of Intellectual Property in the People’s Republic of China: Commercial Relationships
- Background on registration and protection of IP necessary for doing business in China
- Recent developments Impacting manufacturing and distribution relationships
- Practical suggestions for addressing OEM manufacturing risks in trade mark piracy contexts
- ‘Must haves’ in commercial agreements
Presented by Dan Plane, Director, SIPS
Dan Plane is an attorney admitted in both Hong Kong and Australia, currently living and working in Hong Kong and serving on the International Trademark Association’s Anti-Counterfeiting Committee. He is recognized as a China ‘IP Star’ by Managing IP
Session 2
Patent Practice and Procedure
Chair: Helen Rofe QC, List A Barristers; Leading Intellectual Property and, Leading Technology, Media & Telecommunications Senior Counsel, Doyle’s Guide 2018
2.00pm to 2.45pm: The Policy Register for IP Australia
- Hear an insider’s perspective on the Policy Register from a member of the IP Australia Patent Consultation Group
- Analysis of what is on the agenda, including:
- Poisonous/toxic priority
- Best method requirement
- The utility requirement
Presented Michael Caine, Principal and Patent Attorney, Davies Collision Cave; Vice President, Institute of Patent and Trade Mark Attorneys of Australia
2.45pm to 3.30pm: Patent Remedies
- Interlocutory injunctions post Sanofi v Alphapharm
- Damages: Lundbeck v Sandoz
- Claims under undertakings as to damages: Sigma v Wyeth
- Final injunctions: Always available?
- ‘Winnebago’ damages
- Innocence & additional damages: When are they available?
- Declarations of non-infringement
Presented by Rachelle Downie, Senior Associate, Corrs Chambers Westgarth; Intellectual Property & TMT Rising Star, Doyle’s Guide 2018
3.30pm to 3.45pm Afternoon Tea
Professional Skills
3.45pm to 5.15pm: Panel Discussion: Cutting Edge Patent Drafting
Emerging technologies inevitably present new challenges for patent drafting. Initially, there may be minimal prior art, and a number of years may pass before patent offices and courts begin to provide useful guidance on satisfying legal requirements including subject-matter eligibility, sufficiency of description, and inventive step. This session will provide an opportunity to hear from specialists in three fast-moving fields of technology, and to participate in a discussion of techniques and strategies to ‘future-proof’ your drafting.
- Dr. Mark Summerfield: artificial intelligence and machine learning:
- Identifying technical elements of AI and ML systems
- Recent guidance from the Australian, US, European, and Japanese patent offices
- Describing the invention – how much detail is needed?
- Claiming AI and ML inventions
- Tom Cordiner QC: biotechnology
- Richard Hamer: pharmaceutical
Presented by Dr Mark Summerfield, IP and Technology Consultant; Registered Patent and Trade Mark Attorney; Tom Cordiner QC; Preeminent Intellectual Property and Leading Technology, Media & Telecommunications Senior Counsel, Doyle’s Guide 2018; and Richard Hamer, Partner, Allens; Leading Contentious and Recommended Non-Contentious Intellectual Property Lawyer, Doyle’s Guide 2018
5.15pm Closing Comments from the Chair
Venue
RACV City Club
Level 2, 501 Bourke St
Melbourne 3000
VIC
Australia