Intellectual Property Symposium

This program will take you though the most pressing issues in Intellectual Property law right now. You will receive an update on key cases and practical solutions for those seeking to protect descriptive trade marks, software patents, and understand developments in design registration. Round off your CPD compliance by attending the ethics, practice management and professional skills session in the afternoon and explore key workplace issues, how to maximise value of IP and your ethical obligations.

Wednesday, 22 March 2023
Professional Skills
3.00pm to 4.00pm Valuing and Structuring Your IP to Maximise Business Value
  • Identifying and quantifying all enterprise intangible assets
  • Structuring IP: commercial and tax considerations
  • IP royalty determination and valuation
  • Gaining a voice for IP in transactions, strategy and risk management

Presented by Tim Heberden CA, Partner IP Advisory and M&A Valuations, Deloitte; Registered Business Valuer

10.50am to 11.35am Software Patents and AI Inventors: Latest Developments
  • Patenting computer-implemented inventions in Australia following Aristocrat v Commissioner of Patents
    • Key take-aways from the High Court
    • Developments at the Federal Court
    • Australian Patent Office practice in the wake of Aristocrat
  • Inventions devised using AI technologies
    • Recent developments in applications by the AI ‘inventor’ DABUS
    • International strategies for patenting inventions made using AI

Presented by Dr Mark Summerfield, IP and Technology Consultant; Registered Patent Attorney

Session 2: Ethics, Practice Management and Professional Skills for IP Lawyers

Chair: Gina Tresidder, Principal, Russell Kennedy Lawyers

Practice Management & Business Skills
2.00pm to 3.00pm Workplace Issues for Intellectual Property Lawyers
  • When do employees own the IP created at work
  • How can employers protect IP created by employees
  • The importance of confidentiality agreements
  • The Fair Work Commission decision of James Mark Mansfield v Amplified AI Pty Limited [2021] FWC 6702 (30 December 2021) 

Presented by Virginia Liu, Special Counsel, Ernest & Young

Session 1: Trade Marks, Patents, Designs and Copyright Update

Chair: Glenn McGowan KC, Partner & Chief Counsel, Gadens; Recommended Contentious Intellectual Property Lawyer, Doyle’s Guide 2022

9.50am to 10.35am Protecting Descriptive Marks: The Business Issues
  • The distinctiveness requirement for registration under the Trade Marks Act 1995 (Cth)
  • Other challenges: passing off & misleading and deceptive conduct
  • ‘Generification’ and loss of distinctiveness

Presented by Ben Thorn, Legal Practitioner Director, Xuveo Legal; Recommended Intellectual Property Lawyer, Doyle’s Guide 2021; Deputy Chair, Privacy Data Technology and Intellectual Property Law Committee, Queensland Law Society

11.35am to 12.20pm Copyright in Fictional Characters
• Sherlock Holmes, Dr Watson, Pippi Longstocking and now Del Boy. Who is next? • Discussion of Shazam Productions Ltd v Only Fools The Dining Experience Ltd and others [2022] EWHC 1379 and its implications • Are fictional characters likely to be provided with copyright protection in Australia?
12.20pm to 1.05pm Registered Designs – now with added teeth!
  • The standard of ‘substantially similar in overall impression’ introduced by the Designs Act 2003
  • Interpretation of this standard by the Designs Office 2007-2022
  • New standard imposed by the Federal court in GME Pty Ltd v Uniden Australia Pty Ltd [2022] FCA 520

Presented by Barry Newman, Principal and Patent Attorney, Armour IP Patent and Trade Mark Attorneys

Ethics & Professional Responsibility
4.15pm to 5.15pm Ethics for Intellectual Property Lawyers
  • Your obligations to act ethically
  • Recent examples that illustrate the importance of keeping ethical obligations front of mind including:
    • External lawyers and in-house lawyers working together
    • Privilege and in-house lawyers

Presented by Meagan Ryan, Senior Legal Counsel (Commercial and Intellectual Property), Bega Cheese Limited

9.05am to 9.50am Trade Marks Case Update
  • Allergan and Botox case
  • Update/decision onKaty Perry case
  • Self Care v Allergan outcome of the appeal proceedings (or if no decision by then) what was argued on appeal
    • Comparative advertising and TM defences

Presented by Brett Doyle, Director, Brands & Trade Marks, Clayton Utz; Best Lawyers 2023, Intellectual Property Law

Description

Attend and earn 7 CPD units including:
4 units in Substantive Law
1 unit in Ethics & Professional Responsibility
1 unit in Practice Management & Business Skills
1 unit in Professional Skills

This program is applicable to practitioners from all States & Territories

9.00am to 9.05am Opening Comments by the Chair
10.35am to 10.50am Morning Tea
1.05pm to 1.15pm Final Q&A and Closing Comments by the Chair
4.00pm to 4.15pm Afternoon Tea

Presenters


Mr Glenn McGowan KC, Partner & 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.


Ben Thorn, Legal Practitioner Director, Xuveo Legal
Ben Thorn is the founder and director of Xuveo Legal, a Brisbane-based commercial and IP law firm. He has over 15 years of experience in the intellectual property and commercial law fields and has represented clients from a diverse range of industries and sectors including creative industries, design, fashion, agriculture, information technology, manufacturing, education, not-for-profit and disability support services. Ben has been recognised alongside Xuveo Legal as a recommended lawyer in the Queensland Leading Intellectual Property Lawyers category of Doyle’s Guide. Ben is a member of the Queensland Law Society (QLS); the Intellectual Property Society of Australia and New Zealand (IPSANZ); and the .au Domain Administration (auDA). He is also a volunteer Member (2018-) and current Deputy Chair (2022-) of the QLS Privacy, Data, Technology and Intellectual Property Policy Committee. Ben holds a Bachelor of Laws with Honours, a Bachelor of Arts (Asian Studies) and a Graduate Diploma of Legal Practice from Griffith University. He is admitted as a solicitor of the Supreme Court of Queensland and the High Court of Australia.


Susan Gatford, Barrister, Svenson Barristers
Susan Gatford is an intellectual property barrister at the Victorian Bar. She has appeared in a wide range of patent, trade mark, trade practices, copyright and designs trials and appeals, as well as in numerous interlocutory hearings. She also appears in corporate, contractual, franchising and general commercial trials. Her practice is principally in the Federal Court but she also appears in the Supreme Court and represents parties in IP Australia hearings. Recommended in Doyle's Guide to leading intellectual property barristers, she has extensive experience acting for Australian and multinational corporations in the fashion, design, consumer, manufacturing, construction, entertainment, electronics, software, franchising, agricultural and biotechnology sectors. Susan is a member of the Victorian IPSANZ committee and the Deputy Chair of the Victorian Bar’s Alternative Dispute Resolution committee. She holds an LLB, a Master of Laws, and a Bachelor of Science (Honours) majoring in genetics and botany. She is also a Registered Trade Mark Attorney and an accredited mediator.


Brett Doyle, Director, Brands & Trade Marks, Clayton Utz
Brett Doyle is a Special Counsel in charge of the Clayton Utz Trade Mark and Brand Protection Group. He is both a lawyer and a registered trade mark attorney with over 30 years' experience in intellectual property. He was previously a partner in a major international law firm; has worked at specialist patent and trade mark attorney firms as well as holding the position of the General / IP Counsel for an Australian advertising agency., Brett has acted in all manner of IP issues including contentious disputes, administrative proceedings and non-contentious contractual and licensing matters. He has advised on the strategic development and protection of trade mark portfolios, including removal, opposition, and on infringement actions and trade mark licensing.


Dr Mark Summerfield, IP and Technology Consultant; Registered Patent Attorney
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 evaluation of patent scope and implications for 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 and IP, and lectures on Australian patent practice at the University of Melbourne.


Barry Newman, Principal and Patent Attorney, Armour IP Patent and Trade Mark Attorneys
Barry Newman has an Honours Degree in Engineering (Mechanical) and a Bachelor degree in Science (Mathematics). He is a Fellow of the Institute of Patent and Trade Mark Attorneys of Australia, and is registered to practice in both Australia and New Zealand. Barry's main practice is in the mining, oil-and-gas, and automotive sectors, with clients including household names in these areas. He has a particular interest in 'Clean' technologies, and has been published internationally on patent issues relating to global warming.


Gina Tresidder, Principal, Russell Kennedy Lawyers
Gina is a Principal in Russell Kennedy's Corporate and Commercial team, specialising in all aspects of intellectual property (IP). She acts for clients in a diverse range of industries including fast moving consumer goods (FMCG), medical products, healthcare, industrial and automotive products, media, marketing, food and hospitality, property development, franchising, fashion, insurance, financial services, government and technology. Gina assists clients to proactively manage their intangible assets and establish effective and profitable business relationships. She has a wealth of experience advising on all aspects of IP, including trade marks, designs, copyright, confidential information, domain names and consumer protection matters. Gina works with clients to manage the full lifecycle of their IP from brand development, to forming protection strategies, to managing Australian and international portfolios, to commercialisation, strategic management, enforcement and disputes. She has significant technical expertise in structuring a range of software and technology agreements for both acquirers and suppliers of IT services and products and has a keen interest in, and advises on, Australia's evolving privacy and data protection landscape. Gina regularly presents at seminars and conferences on a range of legal topics for clients and industry groups. Gina’s experience includes international experience working for a Japanese specialist IP firm and in-house, reporting to the Global IP Counsel of a leading international gaming company.


Mr. Tim Heberden CA, Partner IP Advisory and M&A Valuations, Deloitte; Registered Business Valuer
Tim is a specialist in intellectual property valuation, royalty determination and the monetisation of technology, data and brands. He is named in the IAM Strategy 300 – the World’s Leading IP Strategists. Tim is technical author of the ‘Guidance Note on the Valuation of Intellectual Property’ (issued by RICS), and is the author of a chapter on IP royalties for ‘International Licensing & Technology Transfer’. Having specialised in IP economics for twenty years, Tim is able to integrate the economic, functional and legal characteristics of IP assets into robust valuations and royalty opinions. His team use a range of value-based metrics to provide insights that unlock hidden IP value, and mitigate the risk associated with technology data and brands. Tim is a CA, MBA, Registered Business Valuer and Fellow of the Royal Institution of Chartered Surveyors, a Fellow of the Australian Marketing Institute and a Certified Practicing Marketer.


Meagan Ryan, Senior Legal Counsel, Bega Cheese Limited
Meagan Ryan, Senior Legal Counsel (Commercial and Intellectual Property), Bega Group. Meagan is an intellectual property lawyer with a particular interest in trade marks. Working in-house at Bega Group she is fortunate to work with iconic brands such as VEGEMITE. Meagan has dual undergraduate degrees of Law and Biomedical Science from Bond University and a Master of Laws (Intellectual Property and Information Law) from King's College London. Meagan is a previous Co-Chair of the Law Institute of Victoria’s Intellectual Property / Information Technology Committee.

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Intellectual Property Symposium

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All Sessions
Wednesday, 22 March 2023
9.00am to 5.15pm Australia/Sydney
CPD Points 7
7
$795.00
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Morning Session
Wednesday, 22 March 2023
9.00am to 1.15pm Australia/Sydney
CPD Points 4
4
$505.00
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Afternoon Session
Wednesday, 22 March 2023
2.00pm to 5.15pm Australia/Sydney
CPD Points 3
3
$420.00
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