Patents Intensive

Equip yourself with the knowledge to anticipate change, make informed decisions, and strategically position yourself in the ever-evolving landscape of patent law. Whether you find yourself navigating the complexities of patent prosecution, litigation, or licensing, our in-depth Intensive is designed to ensure that you stay ahead, informed, and empowered

Thursday, 6 June 2024
Early Bird discount ends 10 May 2024 $556.50
Description

Attend and earn 7 CPD units including:
5 units in Substantive Law
1 unit in Ethics & Professional Responsibility
1 unit in Professional Skills

This program is applicable to practitioners from all States & Territories

11.15am to 12.15pm AI Patentability and Insights from the Emotional Perception AI Case

 

  • Key considerations in Emotional Perception AI Ltd v Comptroller-General of Patents, Designs and Trade Marks, including the basis for UKIPO's initial rejection and the High Court’s decision
  • Comparing the UK approach to patenting AI-based inventions with the current practices and outcomes in Australia
  • UKIPO's change in examination guidance and practice and the potential impact on future patent applications in both the UK and Australia
  • Broader legal and strategic considerations for patenting AI technologies for inventors and applicants

Presented by Mark Summerfield, Patent Attorney, IP and Technology Consultant

12.15pm to 1.15pm Keeping an Eye on the End Game: Attorney/Lawyer Strategies and Recent Developments

 

  • Matters to be aware of when preparing evidence in patent oppositions and before the Federal Court:
    • Rules of evidence
    • Considerations for expert evidence including Novartis v Pharmacor and New Aim v Leung
    • Fact evidence preparation
  • Preliminary discovery –   when it can be obtained and how to resist an application
  • Unjustified threats and consequences

Presented by Natalie Shoolman, Principal, Wrays; Leading Contentious Intellectual Property Lawyer – NSW, Doyle's Guide 2023; Best Lawyer in Australia for Intellectual Property 2023, IAM Patent 1000 for Patent Litigation in Australia 2023

4.00pm to 4.15pm Break
Session 3: Ethical Considerations for Patent and Trade Mark Attorneys
Ethics and Professional Responsibility
4.15pm to 5.15pm What is the Ethical Standard for Competency and Client Communication?

 

  • An overview of the Code of Conduct and ‘unsatisfactory professional conduct’
  • Lessons from Trans-Tasman IP Attorneys Board v Massang
  • Understanding the requisite standard of competence and duty of care
  • When is a registered attorney obliged to disclose particular information?

Presented by John Scicluna, Senior Associate, Griffith Hack

Session 1: Case Updates, Due Diligence and Patentability


Chair: Robert Wulff, Principal, Griffith Hack

9.00am to 10.00am Patents Insights: Examining Key Decisions Over the Last Year


Stay at the forefront of legal developments with the latest updates. Delve into key rulings, established precedents, and emerging trends that are likely to shape the future of patent law.

Presented by Phoebe Arcus, Barrister, 5 Wentworth Chambers; Leading Intellectual Property Junior Counsel – NSW and Australia, Doyle's Guide 2023

Professional Skills
10.00am to 11.00am Due Diligence for Patent Investees and Investors

 

  • Ideal investee information and due diligence parameters, including patent ownership, licensing agreements and potential infringement issues
  • Assessing level of risk in conducting a high-level investigation against the costs associated with conducting more in-depth due diligence
  • Interpreting investigations to gauge the strength, enforceability, and market relevance of a patent portfolio

Presented by Kate Wilson, Registered Patent Attorney, James & Wells

11.00am to 11.15am Morning Break
Session 2: Patent Litigation: Strategies, Best Practice and ACCC Proceedings


Chair: 
Melissa McGrath, Barrister, Nigel Bowen Chambers

2.00pm to 3.00pm Key Considerations in Patent Litigation: Best Method, Support and Sufficiency

 

  • How has a decade of “Raising the Bar” shaped Australian patent landscape
  • Latest case law
  • Tips for complying with the “best method”, “disclosure” and “support” requirements
  • Strategic considerations in patent infringement/revocation proceedings

Presented by Ben Mee, Barrister, 5 Wentworth Chambers; Leading Intellectual Property Junior Counsel – NSW and Australia, Doyle’s Guide 2023; Asia-Pacific 2024: Intellectual Property: The Bar, Chambers

3.00pm to 4.00pm Pharmaceutical Patent Litigation and the ACCC

 

  • Unpacking the current legislative framework
  • Competition in the Australian pharmaceutical industry
  • Juno Pharmaceuticals Pty Ltd & Ors
  • A rosy future for generics and originators?

Presented by Paul Whenman, Consulting Partner, FB Rice; IP Star 2023, Managing IP

Presenters


Melissa McGrath, Barrister, Nigel Bowen Chambers
Melissa McGrath is a specialist intellectual property lawyer with degrees in both law and science who advises domestic and multinational clients on commercial issues and dispute resolution strategy. She has worked with clients such as Universal Music Australia, Sony Music Australia, Westpac, Vodafone, Warner Chapel Music Australia, Louis Vuitton Malletier, Cadbury, Samsung, H Lundbeck and Mylan.


Natalie Shoolman, Principal, Wrays
Natalie Shoolman is an experienced commercial litigator who specialises in intellectual property and technology litigation and the intersection between intellectual property and competition and consumer law. Natalie has been voted by her peers as one of Australia's Best Lawyers in Intellectual Property Law (Best Lawyers Australia 2019 - 2022), ranked by IAM Patent 1000 – Patent Litigation - Bronze (2021), recommended for patent litigation (2018) and recognised as a Rising Star (2020-2021) in Managing Intellectual Property’s IP Stars. She is considered to be one of Australia's leading "next generation" Intellectual Property lawyers (The Legal Asia-Pacific 500: 2017- 2019). With a First Class Honours degree in Science and a passion for innovation, Natalie has significant experience acting for and advising clients on all aspects of intellectual property law across a broad range of industries including pharmaceutical, biotechnology, software, telecommunications, government, clean energy, mining and FMCG. Natalie's practice includes patent infringement and revocation proceedings, patent oppositions, copyright, trade mark and design infringement, breach of confidence and consumer law disputes. Natalie has particular expertise in managing complex, multi-jurisdictional patent infringement and revocation proceedings and advising clients on ways to maximise the life of their patent portfolios.


Paul Whenman, Consulting Partner, FB Rice
Paul Whenman is a consulting partner in our Sydney chemistry team. As a qualified patent attorney, Paul has had a distinguished career with the firm as managing partner for 10 years. Throughout his 37 years’ practice in FB Rice, he has gained significant experience in chemically related patents, including pharmaceuticals, animal health products, food technology, personal care products and alloys. Indeed a significant component of Paul’s practice relates to the interplay between the regulation of pharmaceuticals and animal health products and patent systems. Of particular relevance is the patent term extension regime in Australia and foreign jurisdictions. Commensurate with his deep understanding of patent law and chemical technologies, Paul regularly publishes articles offering opinions and insights into a variety of topics. With a significant international reputation, Paul has been recognized as an IP Star for patent prosecution in Managing Intellectual Property for a number of years, most recently in 2022. He is also listed by IAM as a Strategy 300 IP strategist 2022. As the importance of South East Asian markets have grown, Paul maintains a strong focus on IP developments in those countries as means of providing the best experience for clients. Within FB Rice, Paul has trained and mentored many attorneys. An important component of this training has been a focus on the ethical considerations relevant for attorneys and the conduct of an attorneys practice. The experience gained as managing partner and subsequently as life sciences practice group leader combined with the technical and legal foundations as a practicing attorney, have provided Paul with a significant depth of knowledge of relevance to all patent and trade mark attorneys. In reliance of this knowledge, IPTA invited Paul to deliver two presentations to its members on ethics in 2020-2021.


Kate Wilson, Registered Patent Attorney, KTPI Enterprises
Kate, a former founding partner of James & Wells, is a registered patent attorney (in New Zealand and Australia), has degrees in physics and chemistry, and is internationally recognised as a leading IP strategist with particular experience in patent matters. She is also an educator in all matters IP and intangible asset related and has extensive expertise in establishing and managing IP portfolios. After stepping down from the James & Wells partnership in 2015, Kate established some non-IP related businesses and sits on a number of corporate boards. Kate is now focussed on providing strategic IP and business advice as a consultant at James & Wells.


Phoebe Arcus, Barrister, 5 Wentworth Chambers
Phoebe Arcus is a Barrister at 5 Wentworth Chambers, specialising in intellectual property (including patent, trade mark, copyright, design and domain name disputes), corporate law and trade practices and is recognised as a leading junior counsel in intellectual property in numerous legal ranking guides, such as Chambers & Partners, the Doyle’s Guide and Best Lawyers, among others. Phoebe is a member of the Intellectual Property Committee, Business Law Section of the Law Council of Australia and a member of the Wellbeing Committee of the New South Wales Bar Association. Prior to the bar, Phoebe worked as a solicitor for King & Wood, Mallesons, Sydney and as an Associate to Hon. Justice Bennett SC AC AO of the Federal Court of Australia. She is also admitted in the United States (New York) and is a current member of the New York Bar Association.


Dr. Mark Summerfield, Patent Attorney, IP and Technology Consultant
Dr Mark Summerfield is a registered Trans-Tasman Patent Attorney, specialising in patent law and practice in the fields of digital and computer systems, information and communications technologies, and computer software. Mark provides consultancy services on patents (including drafting and prosecution), IP strategy, and related matters in his specialist technology fields. He is also currently a PhD candidate at the Melbourne Law School where he is investigating applications of natural language processing technologies to the analysis of patent claims with application to patent law and policy. He worked for over a decade with one of Australia’s leading boutique IP firms advising individuals, companies and research institutions on management and protection of their intellectual assets. Since 2010 Mark has maintained a blog (patentology.com.au), where he writes regularly on local and international issues relating to innovation, patents, law, policy and the IP profession. He speaks regularly on topics related to patents, IP and digital technology, and lectures on Australian patent practice at the University of Melbourne.


Ben Mee, Barrister, 5 Wentworth Chambers
Ben Mee specialises in Intellectual Property law, and holds a BSc (Biochemistry)-LLB (Hons I, University Medal), and an LLM in Commercial Law (Hons I) from Cambridge University. Ben has particular strength in patent matters in the pharmaceutical, biotechnology and information technology/software sectors, and appellate work. He is recognised in Band 1 for Intellectual Property by Chambers and Partners, and is listed in Doyle’s Guide, Who’s Who Legal, and Best Lawyers Australia. He regularly appears led and unled in the Federal Court, Patent Office and Trade Marks Office. Prior to being called to the Bar in 2014, he practised as a solicitor with Allens in intellectual property and competition law, and was an Associate to former Chief Justice of the High Court the Hon RS French AC.


John Scicluna, Senior Associate, Griffith Hack
John Scicluna is a registered patent and trade marks attorney based in Sydney. With a background in materials science in the private and research sectors, John’s experience enables him to work across multiple areas of technology. He has experience working with a broad range of clients from individual inventors and small to medium enterprises, to large global businesses and research organisations.


Robert Wulff, Principal, Griffith Hack
Robert Wulff is a Sydney-based principal of national IP firm Griffith Hack IP Attorneys & Lawyers, having joined the firm in 1989. Robert's patent practice is focused on Australia's resources & building products industries and energy technologies. He works with a range of organisations to develop offensive and defensive IP strategies, working closely with his firm’s litigators and IP management consultants. He also has extensive experience in registered designs and is a WIPO-accredited designs expert. Robert is a registered patent attorney with degrees in Chemistry and Chemical Engineering from the University of Sydney. Robert holds an equivalent Masters of Science in Chemical Engineering from the Royal Institute of Technology, Stockholm.

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Patents Intensive

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Thursday, 6 June 2024
9.00am to 5.15pm Australia/Sydney
CPD Points 7
7
$795.00
Early Bird discount ends 10 May 2024 $556.50
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Session One
Thursday, 6 June 2024
9.00am to 1.15pm Australia/Sydney
CPD Points 4
4
$505.00
Early Bird discount ends 10 May 2024 $353.50
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Session Two
Thursday, 6 June 2024
2.00pm to 4.15pm Australia/Sydney
CPD Points 2
2
$305.00
Early Bird discount ends 10 May 2024 $213.50
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Session Three
Thursday, 6 June 2024
4.15pm to 5.15pm Australia/Sydney
CPD Points 1
1
$160.00
Early Bird discount ends 10 May 2024 $112.00
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