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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
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 Bindhu Holavanahalli, Senior Associate, Wrays

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 Patent Attorney Competency and Communication: It’s All About the Client

 

  • What does the Code of Conduct and Guidelines require now?
  • What are the likely future requirements?
  • Are all clients the same?
  • Acting on clients’ instructions
  • Commercial conflict of interest-clarified by the Report?
  • Some illustrative hypotheticals

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

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.

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 40 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/Notable Practitioner for patent prosecution in Managing Intellectual Property for many years, most recently in 2025. 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.

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 SC is a leading Australian barrister specialising in intellectual property, commercial litigation, competition and consumer law, and data protection and privacy law. Appointed Senior Counsel in 2024, she appears regularly in complex trials and appeals before the Federal Court of Australia, the High Court of Australia and specialist intellectual property tribunals. Phoebe acts for clients across a diverse range of industries, including pharmaceuticals, life sciences, technology, telecommunications, consumer goods, finance, mining and government. In addition to her advocacy practice, she is a member of the World Intellectual Property Organization (WIPO) Arbitration and Mediation Centre’s List of Neutrals and regularly acts in arbitrations and mediations. Before coming to the Bar, Phoebe practised as a solicitor at Mallesons Stephen Jaques and served as Associate to the Hon Justice Annabelle Bennett AC SC of the Federal Court of Australia. She holds a Master of Laws from New York University and a Bachelor of Laws from the University of New South Wales and is admitted to practise in both Australia and New York. Phoebe is consistently recognised by Chambers & Partners, Legal 500, Best Lawyers, Doyle’s Guide and World Trademark Review, and is highly regarded for her exceptional advocacy, strategic insight and deep expertise across all facets of intellectual property law.

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.

Robert Wulff, Principal, Griffith Hack
Robert is a Principal and Registered Patent Attorney at Griffith Hack. Based in Sydney and with more than three decades of experience advising organisations on the strategic protection, management and commercialisation of intellectual property, his practice focuses on patents, designs and broader IP strategy across chemical, process and mechanical engineering, applied chemistry and clean technology industries. He regularly works with clients in the building and construction, mining and resources, energy, water and waste treatment, packaging, manufacturing and agricultural technology sectors. Robert holds a Bachelor of Science (Chemistry) and a Bachelor of Chemical Engineering from the University of Sydney, as well as a Master of Science equivalent qualification in Chemical Engineering from the Royal Institute of Technology in Stockholm. He is a Registered Patent Attorney in Australia and New Zealand and a member of the Institute of Patent and Trade Mark Attorneys of Australia (IPTA). Recognised as a World Intellectual Property Review (WIPR) Leader from 2024 to 2026, Robert is widely respected for helping organisations develop commercially-focused IP strategies that align with business objectives and support innovation. His expertise spans patents, designs and the protection of emerging technologies, making him a trusted adviser to some of Australia's most innovative companies.

Bindhu Holavanahalli, Senior Associate, Wrays
Bindhu Holavanahalli is an intellectual property lawyer and registered patent & trade marks attorney, working within the dispute resolution and life sciences teams at Wrays. Admitted to practice in 2014, Bindhu assists clients in a range of patent opposition and patent litigation matters, including complex pharmaceutical litigation and mining technology matters. Bindhu also has experience assisting clients with brand protection, trade mark and related consumer law matters.

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Patents Intensive

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All Sessions
Thursday, 6 June 2024
9.00am to 5.15pm Australia/Sydney
CPD Points 7
$795.00
$556.50
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Session One Only
Thursday, 6 June 2024
9.00am to 1.15pm Australia/Sydney
CPD Points 4
$505.00
$353.50
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Session Two Only
Thursday, 6 June 2024
2.00pm to 4.15pm Australia/Sydney
CPD Points 2
$305.00
$213.50
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Session Three Only
Thursday, 6 June 2024
4.15pm to 5.15pm Australia/Sydney
CPD Points 1
$160.00
$112.00
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