Drafting Agreements for Commercialising and Licensing IP

In this no fluff all strategy practicum, 4 experts in commercialisation of IP through licensing and investments, will guide you through the maze of drafting a watertight agreement and capital raising. Your will strengthen your position by gaining actionable strategies and skills necessary to effectively commercialise your clients’ intellectual property.

Monday, 20 March 2023
11.15am to 12.15pm Contract Law Principles Relevant to IP Agreements
  • Refresher on important differences between deeds and agreements
  • What contractual terms are important for managing risk and liability?
  • Impact of legislation on how IP agreements are drafted
  • War stories about IP and licensing contractual disputes

Presented by James Cameron, Special Counsel, Corrs Chambers Westgarth

10.00am to 11.00am IP Licensing
  • A checklist for clearly licensing IP
  • Assignments and licensing of IP rights
  • Implied IP licences including scope of implied licence and practical tips  
  • Competition Law implications of licensing IP Rights - IP exemption repealed 2019, where are we now?

Presented by Bill Singleton, Partner, HWL Ebsworth

9.00am to 10.00am Commercialisation Through Investments
  • Different types of securities used for raising capital
  • Capital raising without a prospectus, the criteria that investors need to meet and exemptions categories that are typically used
  • The importance of a shareholder’s agreement for both fundraising companies and investors

Presented by Michael Jeffery, Director, Sierra Legal

Chair:

Nicole Murdoch, Founding Director, EAGLEGATE; Trade Mark Attorney; Recommended Intellectual Property Lawyer, Doyle’s Guide 2022

Description

Attend and earn 3 CPD units in Legal Knowledge
This program is applicable to practitioners from all States & Territories

11.00am to 11.15am Morning Tea

Presenters


Michael Jeffery, Director, Sierra Legal
Mike is a Director of Sierra Legal – a boutique corporate and commercial law firm with staff working from Melbourne, Brisbane, Newcastle and Cape Town. Mike has considerable experience providing legal advice and services to leading Australian companies in relation to mergers & acquisitions, capital raisings, takeovers, joint ventures, legal due diligence, supply agreements and restructuring. He advises many significant organisations, including Bingo Industries, Clark Rubber and Medibank Private (but also works with many start-ups and SMEs). Mike has a passion for legal technology (particularly legal automation) and can help clients with building custom web apps to assist with their legal document generation and workflow requirements. Prior to joining Sierra Legal, Mike worked with Australian law firms McCullough Robertson in Brisbane and Middletons (now K&L Gates) in Melbourne.


Nicole Murdoch, Founding Director, EAGLEGATE
Nicole is a Partner at Thynne + Macartney and leads the firm’s IP, Technology, Cyber, and Privacy Law practice group. She provides advice on a wide range of legal matters including Intellectual Property litigation, covering trade mark, patent, copyright, and domain name disputes, as well as related issues such as misleading and deceptive conduct, confidential information, and passing off disputes. She also acts in cyber matters to protect confidential information and trade secrets, and acts in fraud cases. Additionally, she provides Privacy Act advice, assists clients with data breach cases, advises on mandatory data breach notifications, and prosecutes insider threats. As a qualified Lawyer, Electrical Engineer, and Trade Marks Attorney, Nicole’s diverse qualifications and practical experience enable her to fully understand the intersection of law, technology, and business. This allows her to provide advice that is both commercially sensible and technically practical. Before her legal career, Nicole spent a decade in the IT industry. She has held key roles in industry organizations, including the Australian Information Security Association, auDA and the Queensland Law Society Cyber Security working group. She is an AICD Graduate. Nicole has been recognized as a Leading Queensland Intellectual Property Lawyer in the Doyles Guide for the years 2024, 2023, 2022, 2021, 2020, and 2018.


Bill Singleton, Partner, HWL Ebsworth
Bill Singleton is an IT/IP partner at HWL Ebsworth Lawyers in Brisbane and head of the firm's commercial practice group. Bill specialises in advising government and corporate organisations on legal aspects of cloud technology, privacy and data security, social marketing, procurement of ICT products and services, and digital commercialisation. Bill heads one of the largest teams in Brisbane appointed to the State government legal panel to advise on IT/IP matters and in particular IT procurement. Work highlights over the past six months include advising Queensland Health on two of the largest IT procurements in the State and advising a multinational corporation on the largest rollout of Microsoft Dynamics AX in the world this financial year. Bill also acted in the ground breaking indigenous intellectual property rights challenge to the registration of the Yugumbeh word 'Borobi' as the 2018 Gold Coast Commonwealth Games mascot. Bill is regularly included in Doyles, Guide, Best Lawyers and Asia Pacific Legal 500 as a leading IP/IT lawyer.


James Cameron, Special Counsel, Corrs Chambers Westgarth
James Cameron is Special Counsel in the Intellectual Property, Technology & Competition Law team of Corrs Chambers Westgarth. He has been recognised as leading intellectual property lawyer by Doyles Guide and was awarded Biotechnology Law Lawyer of the Year 2021, Brisbane by Best Lawyers. James is sought out by clients in the technology, life sciences, healthcare, education and government sectors on intellectual property and competition and consumer law issues. James regularly advises on the negotiation of contracts with a strong IP focus, including funding, contract research, clinical trial, commercialisation and licensing agreements. James holds a Bachelor of Science from The University of Queensland, and Master of Laws from the University of Melbourne.

WEB233Q08Z

Drafting Agreements for Commercialising and Licensing IP

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DELIVERY MODE BELOW

Single Session
Monday, 20 March 2023
9.00am to 12.15pm
CPD Points 3
$420.00
Online 20250711 20230320

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