Intellectual Property Conference 2021
This jam-packed conference brings together leading practitioners in New Zealand to examine nine of the latest IP issues and trends. You will receive a round-up on the latest IPONZ and High Court trade mark decisions, what makes a strong patent and practical case studies on how different IP rights intersect. Gain insight into IP related issues in software and technology contracts and how best to effectively align IP strategy with corporate strategy. 216NZA06
Description
Attend and earn 7 CPE hours
Session 1
Intellectual Property Updates
Chair: John Glengarry, Partner, Buddle Findlay
9.00am to 9.05am Opening Comments by the Chair
9.05am to 9.50am The Latest IPONZ and High Court Trade Mark Decisions
Receive a roundup of the latest IPONZ and High Court trade mark decisions and gain insight into the latest trends and issues.
Presented by Laura Carter, Barrister, Sangro Chambers
9.50am to 10.35am What Makes a Strong Patent? Good Practices and Some General Considerations
- Recent developments, including recent AU/NZ case law
- Good practices and issues to consider
- Examples and scenarios
Presented by John Mansell, Partner, Catalyst Intellectual Property
10.35am to 10.50am Morning Break
10.50am to 11.35am IP Related Issues in Software and Other Technology Contracts: Recent Developments
- Recent developments in software and other technology
- IP related issues in software and other technology contracts
- The importance of data – ownership, use and protection of data
Presented by Edwin Lim, Partner, Hudson Gavin Martin
11.35am to 12.20pm The Intersection of Intellectual Property Rights: Practical Case Studies
Analyse how and where different forms of IP interests overlap and/or complement each other with key takeaways from practical case studies.
Presented by Sébastien Aymeric, Senior Associate, James & Wells
12.20pm to 1.05pm Effectively Managing IP: Aligning IP Strategy with Corporate Strategy
- The matrix of base IP rights and their nature
- Understanding what type of IP is needed for particular types of businesses and the products and services they provide
- Local business v exporter
- IP tips relating to the sale of a businesses
Presented by Chris Young, Partner and Head of Intellectual Property, MinterEllisonRuddWatts
1.05pm to 1.15pm Final Q+A and Closing Comments
Learning Objectives:
- Stay on top of the latest IPONZ and High Court trade mark decisions
- Benefit from essential guidance on what makes a strong patent
- Consider recent developments in technology and software and the related IP issues
- Examine case studies on how IP rights overlap or complement each other
- Receive practical guidance on aligning IP strategy with corporate strategy and gain IP tips relating to the sale of a business
Session 2
Disputes and Ensuring Best Ethical Practice
Chair: Penny Catley, Principal, AJ Park
2.00pm to 2.05pm Opening Comments by the Chair
2.05pm to 3.05pm Expert Evidence in IP Proceedings
- What is expert evidence?
- What are the requirements for admissible expert evidence?
- The High Court Rules and Code of Conduct
- The “basis” rule
- Selecting the expert
- The brief of evidence of the expert
Presented by John Katz KC, Bankside Chambers
3.05pm to 3.20pm Afternoon Break
3.20pm to 4.15pm IP Litigation Disputes: A Spotlight on Remedies
- Damages v account of profits
- Recent court guidance on damages
- Eight Mile Style v NZ National Party
- Geostel v Oraka
- Enforcing an undertaking as to damages
- Standing and proof
- Quantum
- Costs awards
Presented by Earl Gray, Barrister, Sangro Chambers
4.15pm to 5.15pm Ethics: Pitfalls of Trade Marks and Patent Practice
- Practical scenarios, takeaways and guidance
- Ethical issues in emerging technology
- Ethical decision making in litigation and prosecution: Duties of candour and disclosure
- Recognising a conflict of interest and knowing how to deal with it
Presented by David Marriott, Barrister
Learning Objectives:
- Examine the admissibility of expert evidence in IP proceedings
- Reflect on the court’s approach to damages in IP disputes
- Consider best practice to ensure you behave ethically and professionally
Presenters
John Glengarry, Partner, Buddle Findlay
John Glengarry is a partner in the law firm Buddle Findlay, a Registered Trans-Tasman Patent Attorney, Registered Australian Trade Marks Attorney, Notary Public 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.
Laura Carter, Barrister, Sangro Chambers
Laura is a barrister specialising in commercial and intellectual property disputes. She has extensive experience advising on a wide range of IP issues, and acting on contentious trade mark, patent, copyright, Fair Trading Act and other consumer law disputes. She has regularly appeared before IPONZ, in the High Court, and in the Court of Appeal. Laura is a registered patent attorney (Australia and New Zealand).
John Mansell, Partner, Catalyst Intellectual Property
John has over 15 years’ experience advising Australasian innovators on all aspects of intellectual property law, and working with overseas clients to protect and enforce their IP rights in New Zealand and Australia. John is an intellectual property lawyer as well as a patent attorney registered to practice in both New Zealand and Australia. John’s focus is on innovation in the life sciences, with particular interest in pharmaceuticals and diagnostics, biologicals, genomics and proteomics, agriculture, and food technology. He also has experience with other technologies. John works comfortably with researchers, commercialisation managers, and corporate leaders to deliver business-focused intellectual property strategies and IP portfolios that are properly aligned with their commercial goals. John practices across all aspects of intellectual property law, including IP strategy, patent drafting, prosecution, litigation and enforcement, portfolio management and due diligence, as well as providing validity and infringement advice.
Edwin Lim, Partner, Hudson Gavin Martin
Ed is a partner at Hudson Gavin Martin, a boutique technology, media and intellectual property law firm. Ed’s main areas of practice are technology and IP development, commercialisation, protection and procurement. Ed has worked with businesses across various industry sectors (both customers and vendors) and has numerous clients offering SaaS solutions. In addition to his law degree, he has a degree majoring in Information Systems, so understands the technical, business and legal issues involved in technology projects. Ed is a committee member of the Auckland District Law Society Technology Law Committee, and is the Secretary of the NZ Middle East Business Council.
Sébastien Aymeric, Senior Associate, James & Wells
Sébastien is an experienced intellectual property (IP) commercialisation and litigation lawyer. He uses his previous in-house experience as a Legal and Commercial Manager at Huawei to provide business-focussed advice to his clients. He specialises in disputes and their resolution, and regularly acts in matters concerning trade marks, patents, copyright, confidential information and contracts, in the Intellectual Property Offices and Courts of New Zealand and Australia. Sébastien’s commercialisation experience includes drafting, reviewing and negotiating various IP agreements, from licensing, to research and development and commercialisation of technology. He regularly appears in leading media, commenting on various intellectual property issues. Sébastien is ranked in the Legal 500 Law Directory and Leading Lawyer Rankings for his extensive experience in disputes.
Chris Young, Partner and Head of Intellectual Property, MinterEllisonRuddWatts
Chris heads the intellectual property team in New Zealand and has a widely recognised IP practice internationally. He gives practical advice on all aspects of IP through its life cycle including development, protection, transfer, enforcement and commercialisation. With more than 20 years’ experience in licensing and commercialisation, franchising, commercial arrangements and the IP aspects of transactions, including business acquisitions and mergers, and financing, commercial IP is a key area of Chris’ practice. Chris has been actively involved in the International Trademarks Association (INTA) and the International Bar Association (IBA) for years and served on a range of important committees having chaired INTA’s East Asia Pacific Famous Marks subcommittee, and been on the Parallel Imports Committee, Internet Committee and the Asia Pacific Global Advisory Council. Chris is currently the New Zealand representative on INTA’s Bulletin Committee.
Penny Catley, Principal, AJ Park
Penny Catley has over 25 years’ experience as a commercial intellectual property lawyer, advising on trade marks, copyright, trade secrets and related commercial agreements. She has practised for more than 25 years and is a registered patent attorney in both countries. Penny enjoys interacting with her local and international clients and getting to know their business issues. She is passionate about maximising the value of her clients’ intangible assets.
Penny has worked for clients in a number of industries, including dairy, food and beverage, wine, education, fashion, energy and FMCG among others. She currently acts for successful local companies Z Energy and Westland Milk Products, as well as international companies Harley-Davidson and Novartis, and Australian fashion designer Collette Dinnigan. Penny is a past President of the New Zealand Institute of Patent Attorneys (NZIPA). Before joining Baldwins (now AJ Park), Penny worked for 11 years (four of those as a partner) at full-service law firm Kensington Swan, where she headed up the intellectual property team. Penny started her career at AJ Park.
John Katz KC, Bankside Chambers
John has been in practice for almost 50 years and brings a national and international reputation to his work as a commercial litigator. Formerly a partner at Simpson Grierson, John began practice as a barrister sole specialising in intellectual property litigation in 1991. His work as a writer on intellectual property matters has brought him particular note, with many published works in the area including contributing to the Laws of New Zealand and editing the New Zealand Intellectual Property Journal to which he regularly contributes. In 2011, he wrote Search Orders published by LexisNexis. In 2018 he wrote Expert Evidence in Civil Proceedings published by Thompson Reuters. He also acts regularly in professional disciplinary matters. John has maintained an active academic career, primarily as a lecturer at the University of Auckland. John’s current areas of specialisation include intellectual property litigation, general commercial litigation, pre-emptive remedies including search and freezing orders. He also has a substantial practice in professional disciplinary matters with emphasis on lawyers’ disciplinary proceedings.
Earl Gray, Barrister, Sangro Chambers
Earl is an independent barrister specialising in disputes and advisory covering all aspects of intellectual property, and related fields such as sales and marketing, life sciences, sports and franchising. He was previously a partner for 21 years and head of IP with Simpson Grierson. With 30 years’ experience in the field, Earl has appeared in IP cases in New Zealand's Supreme Court, Court of Appeal, High Court, District Court and Intellectual Property Office, and has run disputes before New Zealand's Advertising Standards Complaints Board and Copyright Tribunal, and various domain name dispute tribunals. He has been ranked as leading in all major IP, sports law and life sciences directories for many years. Earl also writes the Trade Marks title for Laws of New Zealand, and significant sections of the LexisNexis Copyright and Design publication.
David Marriott, Barrister
David has been a civil litigator for over 20 years and a barrister sole since 2009, specialising in intellectual property, commercial and employment litigation. Prior to going to the bar he was a partner and litigation team leader at a leading intellectual property law and patent attorney firm. David has extensive experience representing both New Zealand and international clients the Courts and tribunals at all levels, including: the High Court, Court of Appeal, Supreme Court/Privy Council. As well as assisting clients to resolve their disputes through alternative dispute resolution means. David is a member of the NZ Law Society’s Litigation Skills Faculty and sits as a member of one of its Lawyers’ Standards Committees.
Venue
Cliftons
Level 4/45 Queen Street
Auckland CBD
Auckland 1010
New Zealand
Parking
Parking is not included in your registration. Nearby options are:
- Downtown Carpark (4 min walk) Click here for rates
- Britomart Carpark (10 min walk) Click here for rates
Directions
CLOSEST TRAIN STATION - Britomart Station, 600m (5 min walk)
CLOSEST BUS STOP - Multiple stops on Queen St and Customs St (1 min walk)