Patents Update 2025: Extending Exclusivity and Royalty Payment Obligations in Patent Licensing

Wednesday, 4 June 2025
Description

Attend and earn 1 CPD hour in Substantive Law 

OR  

1 CPE hour for Patent Attorneys
This program is applicable to practitioners from all States & Territories

Chair

Mark SummerfieldIP and Technology Consultant, Patentology

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

Presenters


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.


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.

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Patents Update 2025: Extending Exclusivity and Royalty Payment Obligations in Patent Licensing

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Single Session
CPD Points 1
$160.00
$112.00
On Demand 20250421 20250604

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