Commercialising IP Intensive
Understanding your client’s IP assets and their value is essential to helping them achieve commercial advantage. Explore how to acknowledge, recognise and protect Mātauranga Māori in IP commercialisation agreements, how to manage the tricky issues in IP licensing agreements, how to conduct effective IP due diligence processes and manage IP portfolios. Walk away with the key skills and tools for success in any IP commercial matter. WEB223NZA33
Description
Attend and earn 3 CPD hours
Chair: Jonathan Aumonier-Ward, Principal, AJ Park
9.15am to 9.20am Opening Comments by the Chair
9.20am to 10.05am IP Commercialisation and Protection of Mātauranga Māori
As the Māori economy expands, Māori seek IP commercialisation agreements that acknowledge, recognise, and protect Mātauranga Māori, that is consistent with tikanga and Te Tiriti o Waitangi.
- Obtain guidance on how you can give effect to these requirements in IP commercialisation agreements, including a review of our obligations under the Convention of Biological Diversity, and suggested frameworks under the Nagoya Protocol.
Presented by Lynell Tuffery Huria, Partner, Kāhui Legal
10.05am to 10.50am Issues in IP Licensing Agreements
- Identifying your IP and determining if it can be licensed in the first place
- Considerations for negotiating royalty rates
- Importance of audit rights
- Survival of rights and obligations following expiry of a license
Presented by Sebastien Aymeric, Senior Associate, Bell Gully
10.50am to 11.00am Break
11.00am to 11.45am Strategies to Conducting a Successful IP Due Diligence
The sale and purchase of any business includes key assets. These assets include IP rights, which are often a key driver for the purchaser and the price they are prepared to pay for a business. IP due diligence therefore plays an integral part in any sale and purchase process and it is important that the IP assets are in order for both vendor and purchaser alike.
Explore the following:
- Identifying key IP assets of a business and why they are so important
- Considerations before entering into and during an IP due diligence and sale/purchase process
- Recommendations and strategies for a successful IP due diligence and sale/purchase process
- Spotting IP issues and risks from a vendor and purchaser perspective
Presented by Hamish Selby, Partner, Buddle Findlay
11.45am to 12.30pm Managing IP Portfolios
Managing an IP portfolio is much more than keeping track of dates and paying fees. It requires a marriage between knowledge of an organisation’s requirements and the relevance of the IP to those requirements. Examine the following important issues:
- Setting up the relationship between the players
- Aligning the IP decisions
- Management tricks
Presented by Kate Wilson, Intellectual Property Strategist, Registered Patent Attorney, KTPi Enterprises Ltd
Learning Objectives:
- Discuss how to acknowledge, recognise, and protect Mātauranga Māori in IP commercialisation agreements
- Benefit from best practice guidance on managing the key issues in IP licensing agreements
- Gain strategies to conducting a successful IP due diligence
- Learn how to effectively manage IP portfolios
Presenters
Jonathan Aumonier
Jonathan is a trade mark and copyright specialist who uses his well-honed problem-solving skills and commercial approach to help his clients achieve their business goals. With over 20 years of experience, he has worked with multinationals operating in a broad range of industries, from hospitality, food and beverage, and sustainable businesses, through to technology, software and communication. He also works with non-profit and charity organisations in New Zealand and overseas. He is a highly acclaimed practitioner and was acknowledged by the World Trademark Review as one of New Zealand’s leading IP enforcement and litigation practitioners with 'a nose for commercial solutions to diverse trademark and copyright issues’.
Lynell Tuffery Huria
For over 30 years, Lynell has specialised in all aspects of trade mark protection, management and enforcement. Lynell is regarded as one of New Zealand’s leading experts on indigenous intellectual property (IP) law in New Zealand and the Pacific. She specialises in advising Māori organisations on IP issues and is passionate about helping Māori navigate the IP system. In her experience, IP is seen as expensive and not in alignment with Te Ao Māori. She is committed to bridging the two world views. She is the immediate past chair of the Indigenous Rights Committee for the International Trademark Association. Lynell has also written advice for Māori on the Plant Variety Rights Act review and is co-author of the paper entitled Māori Interests and Geographical Indicators – Strategic Intellectual Property Management enabling Māori whānau development.
Hamish Selby
Hamish is Partner at Buddle Findlay and co-leads the national IP team. Hamish provides advice on all aspects of intellectual property, including the identification, development, protection, registration, use, commercialisation, enforcement and management of intellectual property rights and portfolios. He is a New Zealand executive committee member of the of Intellectual Property Society of Australia and New Zealand (IPSANZ), a member of the International Trademark Association (INTA) and sits on INTA’s Famous and Well-Known Trademarks Committee.
Kate Wilson
Kate Wilson is an internationally recognised IP strategist and a registered patent attorney in NZ and AU. While a partner in James & Wells, she managed the IP portfolios and was corporate liaison with a number of New Zealand’s iconic organisations. These included Zespri, the Gallagher Group, AgResearch and Bomac Laboratories. Some of the portfolios she managed ended up being part of multi-million dollar mergers with multi-nationals such as Bayer, Lely and Pfizer. Kate has extensive business experience from multiple angles including building up James & Wells, owning a number of non-IP businesses, an independent director, and what she learnt from being a corporate liaison.