Intellectual Property: Managing Commercial Risks and Disputes
Help your clients achieve maximum commercial advantage with this practical half-day programme. Navigate the tricky issues involved in complex IP licensing agreements and the risk areas in an audit and due diligence process. Take a deep dive into two IP cases relating to extradition of copyright and infringement of plant variety rights. Plus, gain the skills essential to acting in trade mark matters when disputes arise. WEB219NZA08
Description
Attend and earn 3 CPD hours
Chair: Charlotte Henley, Partner, Dentons Kensington Swan
1.15pm to 1.20pm Opening Comments by the Chair
COMMERCIALISING AND MANAGING INTELLECTUAL PROPERTY
1.20pm to 2.05pm Issues in Complex IP Licensing Agreements: Dealing with the Tricky Issues
- Clearly defining the licence scope
- Common issues in overseas licensing
- Potential competition law issues in licences and IP dispute settlement agreements
- Other key licence terms
Presented by Grace Thomas-Edmond, Principal, AJ Park Law
2.05pm to 2.50pm IP Audits and Due Diligence: Common Issues and Solutions
Conducting an IP audit on a business can be time consuming and costly but there are ways to make this process time and cost efficient. Consider approaches for conducting an audit or due diligence of IP including:
- Setting the scope of review: understanding your client and their objectives
- 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, MinterEllisonRuddWatts
2.50pm to 3.00pm Break
COPYRIGHT, PLANT VARIETY RIGHTS AND TRADE MARK DISPUTES
3.00pm to 3.45pm A Spotlight on Copyright and Plant Variety Rights: Recent IP Cases of Interest
A deep dive into two recent significant cases concerning:
- Extradition of copyright
- Infringement of plant variety rights
Presented by Kate Duckworth, Lawyer, Patent & Trade Mark Attorney, Kate Duckworth Intellectual Property
3.45pm to 4.30pm Trade Mark Disputes: Practical Tips for Your Toolkit
- Making realistic first assessments
- Developing a plan
- Navigating difficult clients
Presented by Shelley Slade-Gully, Partner, Tompkins Wake
Learning Objectives:
- Receive practical guidance on complex IP licensing agreements
- Gain tips and strategies for managing risks in an audit or due diligence process
- Reflect on two recent cases in copyright and plant variety rights
- Understand how to develop a plan and navigate difficult clients in trade mark disputes
Presenters
Charlotte Henley, Partner, Dentons Kensington Swan
Charlotte is a Partner at Dentons Kensington Swan with over 25 years experience in helping clients identify, protect and commercialise their intellectual property. She advises businesses and government entities in New Zealand and internationally on a wide range of IP issues, including trade marks, copyright, domain names and designs. She is one of the few lawyers in New Zealand with extensive experience in plant variety rights protection and enforcement. She also regularly advises on advertising and marketing materials, including social media initiatives, and ensuring compliance with local advertising laws. She has extensive experience with resolving IP disputes, as well as handling IP audits and transfers of intangible assets in large transactions. Commercialisation of IP is one of her key areas of expertise, and Charlotte enjoys working with clients to tailor their IP strategies to deliver outcomes of value. She has extensive expertise with IP licensing arrangements. Charlotte is a member of the Intellectual Property Society of Australia and New Zealand and a member of the International Trade Marks Association, as well as being a registered patent attorney and an Australian registered trade marks attorney.
Grace Thomas-Edmond, Principal, AJ Park Law
Grace is a Principal in the commercial law team at AJ Park. She provides commercial advice to clients on technology, intellectual property (IP) licence agreements and related issues. These include licensing of a range of IP, IP ownership and strategy, infringement issues, and the protection of confidential information and trade secrets. Her role also involves providing general company advice, and preparing and reviewing company constitutions and shareholders’ agreements, ICT and software procurement contracts, confidentiality agreements and sale and purchase contracts. Grace’s clients range from start-ups through to government agencies and Crown Research Institutes. Among Grace’s interesting recent cases was working on music licensing terms with Radio New Zealand and working on a variety of licensing agreements for Crown Research Institutes. Grace was named in NZ Lawyer’s 2020 Rising Stars list, which described her as “a great role model for young women in the legal profession”.
Briar Richardson, Senior Associate, 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; IP infringement risk assessments including mitigating third party infringement risks, dispute resolution and strategy; Counterfeit issues, particularly strategies and customs notice filings for local border control, as well as establishing strategy for international counterfeiting issues; Advising on consumer law and privacy issues.
Kate Duckworth, Lawyer, Patent & Trade Mark Attorney, Kate Duckworth Intellectual Property
Kate Duckworth is an intellectual property law expert with over 15 years of experience in intellectual property litigation and dispute resolution, protecting and enforcing intellectual property rights, as well as in designing strategies and giving commercial advice including drafting agreements like licences, manufacturing, settlement, confidentiality, publishing and sale and purchase agreements.
Shelley Slade Gully, Partner, Tompkins Wake
Shelley is a specialist in Intellectual Property law and Education law, joining Tompkins Wake in 2018, becoming a Partner in 2020. Shelley leads our IP practice and specialises in trade mark law, with expertise in multi-jurisdictional trade mark portfolio management and cross border IP strategies. She regularly advises on trade mark strategy, IP licensing and dispute matters (including trade mark opposition and revocation proceedings with the Intellectual Property Office of NZ, copyright and design disputes). Named as a recommended lawyer in The Legal 500 for Intellectual Property in the Asia Pacific, Shelley’s immense value to clients lies in her drive to thoroughly appreciate and understand the client’s desired outcomes, empowering clients to align their IP strategies with their core business strategies and functions.