Commercialising IP: Avoiding Bad Decisions and Risks in Auditing and Contracting
Maximising your client’s returns on their IP assets is essential to helping them achieve commercial advantage. Hear from leading commercial and IP experts as you explore how to effectively conduct IP audits. Gain valuable insights into ‘what-can-go-wrong’ through interactive case studies and scenarios to help you develop a strong intangible assets strategy, and examine how to effectively manage the IP contracting process.
Description
Attend and earn 3 CPD hours
Chair: John Glengarry, Partner, Patent and Trademark Attorney, Buddle Findlay, Fellow of the New Zealand Institute of Patent Attorneys (FNZIPA)
Conducting IP Audits and Due Diligence
IP assets can make up a large proportion of the value of a business. Conducting an IP audit on a business can be time consuming and costly but there are low hanging fruits to be had that can make the process time and cost efficient. This presentation will consider approaches for conducting an audit or due diligence of IP including:
- Setting the scope of review: understanding your client and their objectives
- A review of common issues and risk areas identified through an audit or due diligence process
- Recommendations and strategies for managing identified risks
Presented by Briar Richardson, Senior Associate – Corporate and Commercial, MinterEllisonRuddWatts
INTERACTIVE SESSION: Catching the Blunder
An interactive session with examples drawn from real-life and across the spectrum of IP. Participants will be encouraged to identify where companies have made bad IP decisions and to explore the consequences and how they can be fixed.
Presented by Kate Wilson, Intellectual Property Strategist, Registered Patent Attorney
Managing IP in the Contracting Process
- Securing IP ownership in a contracting situation
- Ownership versus licensing
- The potentially tangled web of IP joint ownership
- How to deal with background IP
- Drafting and negotiating IP ownership clauses: avoiding common mistakes
- Managing risk and liability: IP warranties and indemnities
Presented by Scott Yorke, Partner, Bowie Yorke
Learning Objectives:
- Gain a deeper understanding of due diligence requirements in IP Auditing.
- Develop practical problem solving skills by engaging with real world case studies.
- Examine the IP contracting process and how to avoid risk.
Presenters
Kate Wilson, Intellectual Property Strategist, Registered Patent Attorney
Kate is internationally acclaimed in the field of intellectual property strategy and has significant experience in all technology sectors. Her international awards include being considered the "Expert of Experts" in IP Strategy. With degrees in physics and chemistry, Kate understands the fundamentals of science & technology behind most innovations. Kate built her previous IP law firm James & Wells from virtual scratch to national significance. She has been, and is involved with, numerous boards and working groups on local and national levels. Kate has many published articles, presented locally and internationally on all topics with a basis in intangible assets - including presenting on brainstorming techniques to an international forum of IP commercialisation groups in Vienna.
Scott Yorke, Partner, Bowie Yorke
Scott Yorke is one of the founding partners of Bowie Yorke, a boutique law practice that helps clients to develop, commercialise and protect their technologies and innovations. He is an experienced commercial and corporate lawyer with expertise in technology law, international licensing, commercial contracts, corporate structuring and capital raising. Scott worked for eight years at A J Park where he helped to establish the firm's commercial team, before leaving to co-found Bowie Yorke in 2012. Scott is recognised as an intellectual property and technology commercialisation expert. He has written articles on innovation and intellectual property law for local and international publications. He recently appeared in the High Court as an expert witness on intellectual property licensing and royalty rates.
Briar Richardson, Senior Associate – Corporate and Commercial, MinterEllisonRuddWatts
Briar is an intellectual property lawyer with a focus on commercial IP. Briar assists clients with advice in relation to use and registration of trade marks, branding issues, infringement, enforcement and counterfeit strategy programmes, and commercialising IP including licensing and commercial contracts. Areas of expertise include advising on the IP aspects of transactions, including business acquisitions and mergers. Providing local and global brand protection strategies and managing IP portfolios ensuring these meet company objectives. Commercialising IP and drafting and advising on a range of contracts including license agreements, distribution agreements, settlement agreements, confidentiality and non-disclosure agreements and trade mark services.
John Glengarry, Partner, Patent and Trademark Attorney, Buddle Findlay
John Glengarry is a partner in the law firm Buddle Findlay, a Registered Trans-Tasman Patent Attorney, Registered Australian Trade Marks Attorney and specialist intellectual property lawyer with more than 30 years' experience in providing contentious and non-contentious intellectual property legal services in New Zealand and internationally. In addition to being a member of the New Zealand Law Society Intellectual Property Law Committee and the International Trademark Association (INTA) Anti-Counterfeiting Committee, John is Immediate Past President of the New Zealand Group of the Asian Patent Attorneys Association (APAA), a Fellow of the New Zealand Institute of Patent Attorneys (FNZIPA) and a member of Intellectual Property Society of Australia and New Zealand (IPSANZ). John leads Buddle Findlay's national trade marks group and is a co-leader of its intellectual property team.