14th Annual Trade Marks and Patents Symposium

Join the Trade Marks and Patents Symposium for an insightful day of expert presentations and discussions on the latest trends and key topics including one CPE hour on ethics and professional conduct. Don’t miss this opportunity to tackle the key legal, ethical, and commercial challenges faced by Trade Mark and Patent Attorneys.

Wednesday, 4 June 2025
Description

Attend and earn 7 CPD/CPE units including: 
6 CPD units in Substantive Law  
1 CPD unit in Ethics and Professional Responsibility

OR


3 CPE units for Trade Mark Attorneys  
3 CPE units for Patent Attorneys  
1 CPE unit in Ethics and Professional Responsibility

This program is applicable to practitioners from all States & Territories

10.00am to 11.00am The Importance of Due Diligence in Brand Searches

 

  • The need for trade mark and common law searches when adopting a new business name or brand - to avoid infringing the rights of another businesses
  • The Flexopack case and good faith trade mark infringement defences
  • Cases following Flexopack
  • Cases before Flexopack - subjective vs objective tests 

Presented by Margaret Ryan, Lawyer and Trade Marks Attorney, IP by Margaret

11.00am to 11.15am Morning Tea
Mandatory Ethics or Professional Conduct CP
12.15pm to 1.15pm Ethics for IP Practitioners

 

  • Sources of obligations
  • Unique conflict of interest issues applying to IP practitioners
  • Acting for or against friends, relatives and former clients or their rights
  • Case studies, recent cases and the lessons learned  

Presented by Glenn McGowan KC, Partner and Chief Counsel, Gadens

1.15pm to 2.00pm Networking Lunch
Session 3: Patents Update 2025

Chair: Mark Summerfield, IP and Technology Consultant, Patentology

4.15pm to 5.15pm Extending Exclusivity and Royalty Payment Obligations in Patent Licensing

 

Consider how or whether one may extend royalty obligations beyond the term and territory of any particular patents. Matters or strategies considered include; 

  •  Licensing of additional rights alongside patents
  • The ability to collect royalties for licensee activities where no patent filings exist
  • The concept of ‘patent misuse’
  • Legal responses to these kinds of strategies in some key jurisdictions 

Presented by Rhys Munzel, Partner, FAL Lawyers

Session 1: Trade Marks Update 2025

Chair: Joanna Lawrence, Partner, Ashurst Australia; Leading Non-Contentious Intellectual Property Lawyers, Doyle’s List 2024

9.00am to 10.00am Recent Decisions in the Court and Trade Marks Office

 

A status update on the latest decisions with lessons learned and critical factors, including:

  • 'Oro' (Cantarella v Lavazza)
  • Trends in opposition and infringement matters
  • Non-use under section 92 

Presented by Tim Burn-Francis, Barrister, List G Barristers 

11.15am to 12.15pm Trade Mark Infringement

 

  • What tests prove infringement?
  • How to substantiate a real and tangible danger of confusion as to source, assess substantial identity or deceptive similarity, and indicate origin from use?
  • How relevant is commercial value, selling power, competition, fair trading or consumer protection?
  • What distinct features of trade marks compared with other IP might attract Attorneys' focus? 

Presented by Dr Steven Stern, Barrister, Svenson’s List

Session 2: Ethics for Trade Mark and Patent Attorneys

Chair: Joanna Lawrence, Partner, Ashurst Australia; Leading Non-Contentious Intellectual Property Lawyers, Doyle’s List 2024

2.00pm to 3.00pm Expert Evidence in Patent Proceedings

 

  • Expert Evidence Practice Note
  • Interactions with an expert witness
  • Justice Downes in EIS GmbH v LELO Oceania Pty Ltd (Expert Evidence) [2024]
  • Who drafts the report - New Aim Pty Ltd v Leung [2022] FCA 722? 

Presented by Paul Warden-Hutton, Senior Partner, Oxygene IP, Patent and Trade Mark Attorneys

3.00pm to 4.00pm Key Steps to Effectively Commercialise Technology

 

Commercialising technology is about transforming ideas into market-ready solutions. Examine the essential issues including: 

  • Technology assessment
  • Industry engagement
  • Grants
  • IP strategy
  • IP valuation 

Presented by Jane Perrier, Executive Consultant, DCC Ventures

4.00pm to 4.15pm Afternoon Tea

Presenters


Joanna Lawrence, Partner, Ashurst Australia
Joanna Lawrence is a Partner in the intellectual property team at Ashurst. Joanna's practice encompasses both contentious and non-contentious intellectual property law, with a particular focus on trade marks, domain names, consumer protection law, copyright, design and food law. Joanna also has a strong interest in pro bono. In addition to assisting many of Ashurst's pro bono clients with trade mark and other IP matters, she is a member of the INTA Pro Bono Committee. Joanna is a regular presenter and chair at Legalwise intellectual property and food law seminars.


Dr Steven Stern, Barrister, Svenson’s List
Dr Steven Stern FIPTA CTA ICC BEc LLB (Mon) LLM PhD (Melb) practises at the Victorian Bar specialising in litigation and other disputes relating to trade marks. Dr Stern is a Registered Trade Mark Attorney and a Fellow of The Institute of Patent and Trade Mark Attorneys of Australia. From 2017 to 2023 Dr Stern was the Honorary Secretary of List S Svenson Barristers. Dr Stern presently is the Honorary Secretary of the Victorian Bar Council's Library Committee. As Corporation Secretary/Principal Legal Officer at the Australian Wool Corporation and as University Secretary/University General Counsel at Victoria University, Dr Stern oversaw the patent and trade mark activities of these two corporate bodies. Dr Stern's Master of Laws degree at The University of Melbourne involved a major thesis on the protection of computer software which won the praise of Professor James Lahore and an abridgement of which was published as a major article in the Australian Law Journal. As University General Counsel, Dr Stern was responsible to the University Council and the Vice-Chancellor for providing overall professional direction of the University's legal affairs focusing on: the more complex issues involving legal policy, interpretation or strategy, and matters with other significant ramifications. He has a wide background in the provision of legal services in government, universities, the corporate sector and in private practice. In his role to the National Companies and Securities Commission/Australian Securities Commission, Dr Stern was responsible for all the non-enforcement legal work of the Commission. From the Commission, Dr Stern spent approximately two years as a Senior Associate of Mallesons Stephen Jaques working principally on securities issues. Whilst there he was credited with having a major role in designing the legal structure of a due diligence exercise for the prospectus of a bank's rights issue - that to a degree was said to have set a pattern for subsequent issues.


Glenn McGowan KC, Partner and Chief Counsel, Gadens
Glenn McGowan is Partner and Chief Counsel at Gadens with over 30 years experience in practice, almost exclusively in the superior and appellate courts. He spent 27 years at the independent Bar, taking silk in 2004, before joining Gadens in 2015 as its inaugural Chief Counsel. His practice is heavily dominated by large intellectual property cases (patents, trade marks, copyright, confidential information, trade practices and designs), mostly in the Federal Court, involving all areas of technology including chemistry, software, biotechnology, pharmaceuticals, engineering, polymers, etc. Glenn is a qualified mediator and arbitrator. He also appears in and advises in general commercial disputes in all courts, briefed by Gadens and other firms.


Margaret Ryan, Lawyer and Trade Marks Attorney, IP by Margaret
Margaret received the University Medal in Law from the University of Sydney and commenced her career in Intellectual Property when she worked as a Research Assistant to the late Federal Court Justice Sheppard, who specialised in IP. Margaret has practised in IP law for over 30 years. She has worked in the IP departments of two major commercial law firms and spent almost 20 years practising in a specialist IP firm, including as a Special Counsel. Margaret has undertaken both commercial and litigious work, as well as appearing in trade mark opposition hearings. Margaret established her own practice in 2018, undertaking IP commercial and dispute resolution work and trade marks advice, filings and oppositions. She provides honest, client-focussed and practical advice and representation to her clients. Margaret has lectured and tutored in IP at Victoria University and is the current contributor to the copyright section of The Law Handbook.


Mark Summerfield, IP and Technology Consultant, Patentology
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.


Paul Warden-Hutton, Senior Partner, Oxygene IP
A senior partner of the Oxygen IP, Paul holds a BBiomedSc majoring in Chemistry and Biochemistry. His BBiomedSc(Hons) year was his introduction to applied research, where he used biophysical and biological tools to investigate the causative gene of hereditary sex-linked anaemia in mice. Paul continued his applied research in the completion of a PhD in biophysics in which he performed spectroscopic, computational and informatic studies of the prion protein. In 2003, Paul started in the intellectual property profession when he joined a Japanese patent attorney firm in Osaka. Paul largely provided advice to non-Japanese IP owners in relation to Japanese patent law and its landscape. With his physics, computational and biochemistry backgrounds, Paul worked in both the firm’s information technology and life sciences and teams. Paul is a registered trans-Tasman patent attorney and trade mark attorney with a Masters in Intellectual Property Law. He entered the profession in Australia in 2005. Paul’s practice includes drafting, prosecution and litigation of engineering, spectroscopic, medical imaging, sensor-technologies, clean technology, mechanical, computer software, biophysical and material science matters before IP Australia and IPONZ. He has conducted several patent proceedings before the Federal Court of Australia. With his background in applied research, Paul’s work covers most technology areas, including pneumatics, medical devices, chemical processing, anaesthesia/sleep monitoring devices, safety devices, building materials and business methods. Paul also enjoys the gymnastics of trade marks and designs and handles matters before both IP Australia and the IPONZ. Paul is a Fellow of The Institute of Patent and Trade Mark Attorneys of Australia, a Member of the Asian Patent Attorney Association, The Intellectual Property Society of Australia and New Zealand and The Royal Australian Chemical Institute. Having spent over two years in Japan, Paul has a working competency in Japanese.


Jane Perrier, Executive Consultant, DCC Ventures
Jane is a passionate advocate of the role of intellectual property in stimulating ideas, growth and adaptive change. She is a creative, strategic thinker and problem solver, focused on client centric outcomes which balance business objectives and risk. Jane co-leads DCC’s consultancy practice, helping clients leverage value and mitigate risks associated with intangible assets at an enterprise level. She is the former General Counsel, Intellectual Property, and Special Counsel Technology, Innovation & Intellectual Property for Telstra Corporation Limited where she led teams for over 20 years advising on IP, innovation, technology, data and commercialisation issues. In 2019 (after leaving Telstra) Jane co-founded a joint venture start-up with Davies Collison Cave’s ASX listed parent, Qantm Intellectual Property Limited. The start-up was subsequently rolled into DCC. Jane has broad experience advising and collaborating with boards, senior leaders, government agencies, regulatory and industry bodies. She is a former appointee and consultant to the federal government’s former Advisory Council on Intellectual Property (ACIP), and is currently a member of the Law Council of Australia’s IP Committee. She has authored multiple submissions on IP and innovation, and is regularly invited to present on these issues including as a guest lecturer at the University of Melbourne. Jane is a graduate of the Australian Institute of Company Directors. She is a former not-for-profit company secretary and board member, including as advisor to the Chief Commissioner of Victoria Police. She is currently a non-executive director and audit & risk committee member on the board of a Victorian Government company.


Rhys Munzel, Partner, FAL Lawyers
Rhys values initiative, loyalty, and dependability, as a person, and as a lawyer. Since joining FAL Lawyers Rhys has advised on matters involving: technology commercialisation, IP ownership and infringement, IT procurement, employment law, and general contracts. He has assisted to establish research entities and technology startups and has advised Government departments and small businesses alike. He is well versed in patentability opinion work and has extensive expertise in patent opposition procedures. As a patent attorney Rhys has used his technical background in chemical engineering to assist clients in diverse areas such as medical diagnostic devices, building and construction devices, bulk transport, and biomedical devices. He has assisted various clients including startups, listed companies, universities, and cooperative research centres to file, prosecute and manage their patents. Rhys grew up on a fish farm near Echuca, and enjoys returning to camp, fish and water ski. Rhys is a sports fan and barracks for Essendon, the Melbourne Storm, the ACT Brumbies and otherwise any team who hasn’t won for a while.


Tim Burn-Francis, Barrister, List G Barristers
Tim Burn-Francis practises in all areas of commercial litigation, with a particular focus on intellectual property, media and entertainment law. Tim is briefed in a variety of complex commercial matters, including intellectual property disputes, opposition hearings, defamation proceedings, and contractual disputes. He has represented clients in the Federal Court of Australia, the Supreme Courts of Victoria and New South Wales, a confidential arbitration under the ACICA Rules and before IP Australia. Prior to coming to the Bar, Tim was a solicitor at specialist intellectual property and entertainment firm, Simpsons, and worked in the intellectual property and trade mark prosecution teams at Herbert Smith Freehills. At both Simpsons and HSF, he acted on some of Australia’s most recent high profile intellectual property and entertainment industry cases. Tim holds a Juris Doctor and Bachelor of Commerce from the University of Melbourne. Tim read with Peter Creighton-Selvay, and his senior mentor was Ed Heerey KC.

256V01

14th Annual Trade Marks and Patents Symposium

CHOOSE YOUR SESSION AND
DELIVERY MODE BELOW

All Sessions
Wednesday, 4 June 2025
9.00am to 5.15pm Australia/Sydney
CPD Points 7
$795.00
Face to Face 20250331 20250604

Face to Face

Register
Online 20250331 20250604

Online

Register
On Demand 20250331 20250604

Post Seminar Recording

Register
Session One
Wednesday, 4 June 2025
9.00am to 12.15pm Australia/Sydney
CPD Points 3
$420.00
Face to Face 20250331 20250604

Face to Face

Register
Online 20250331 20250604

Online

Register
On Demand 20250331 20250604

Post Seminar Recording

Register
Session Two
Wednesday, 4 June 2025
12.15pm to 2.00pm Australia/Sydney
CPD Points 1
$160.00
Face to Face 20250331 20250604

Face to Face

Register
Online 20250331 20250604

Online

Register
On Demand 20250331 20250604

Post Seminar Recording

Register
Session Three
Wednesday, 4 June 2025
2.00pm to 5.15pm Australia/Sydney
CPD Points 3
$420.00
Face to Face 20250331 20250604

Face to Face

Register
Online 20250331 20250604

Online

Register
On Demand 20250331 20250604

Post Seminar Recording

Register