Trade Marks and Patents Conference 2023

Join us for a comprehensive review of Trade Marks and Patents law, with updates, key developments, and the opportunity to earn your Ethics CPE/CPD point. Explore brand protection, Trade Mark ownership, and non-use opposition proceedings in trade mark law. Get the latest insights into patents, including European amendments and key cases, and gain a unique perspective on supporting amendments from Australian-drafted priority text. 

Tuesday, 23 May 2023
Session 1: Trade Marks Key Developments

Chair: Sonia Stewart, Barrister, 5 Wentworth Chambers

4.15pm to 5.15pm Drafting Tips for Supporting European Amendments from Australian-drafted Priority Text
  • General drafting tips for Australia Patent Attorneys
  • Article 123 EPC – Support in the application as filed
  • Claim drafting and relevant insertion in the specification
  • Description (background, problem-solution, Markush-group, ranges and examples)
  • Patent eligible subject matter under the European Convention

Presented by Helene Fiorucci, Founder & CEO of HEFIP, European & French Patent Attorney, and US Patent Agent.

9.00am to 10.00am Reputation in Trade Mark Law: Self Care v Allergan
  • Consideration of the Allergan v Self Care proceedings currently before the High Court
  • Discussion of recent Federal Court authorities
  • Consequences for trade mark examination practice
  • Comparative perspectives – US and Europe
  • Practical tips for trade mark office and court matters

Presented by Angus Lang SC, Senior Counsel, Tenth Floor Chambers; Best Lawyers 2023, Intellectual Property Law; Leading Intellectual Property Senior Counsel, Doyle’s Guide 2022

Session 3: Critical Patent Updates

Chair: Dr David Myers, Of Counsel, Franke Hyland

Mandatory Ethics or Professional Conduct CPE
2.00pm to 3.00pm Ethics: Code of Conduct for Trade Mark and Patent Attorneys
  • Presenting your client’s case to an opposing side and negotiation  - what are the ethical rules?
  • Do typical tactics used in business negotiations conflict with your ethical obligations and the legal professional conduct rules?
  • Where does danger lurk?

Presented by Lynne Lewis, Partner, Bird & Bird

Session 2: Ethics for Trade Mark and Patent Attorneys

Chair: Dr David Myers, Of Counsel, Franke Hyland

10.00am to 11.00am Brand Protection
  • Review of recent trade mark decisions of the High Court and the Federal Court of Australia
  • Lessons in licensing from Realestate.com.au Pty Ltd v Hardingham

Presented by Fiona McNeil, Barrister, 5 Selborne Chambers

11.15am to 12.15pm Trade Mark Ownership Structuring
  • Trade mark ownership
  • Authorised use
  • Common trade mark holdings structuring models, their benefits and drawbacks
  • Overview of recent relevant cases

Presented by Lauren Eade, Senior Trade Mark Counsel, Davies Collison Cave

12.15pm to 1.15pm Tips & Traps in Non-use Opposition Proceedings
  • Proving an intention to use
  • Establishing use of the registered mark for the registered goods/services
  • How to persuade the Registrar to exercise discretion

Presented by Tracey Berger, Hearing Officer- Trade Marks & Designs, IP Australia

3.00pm to 4.00pm Patents – Key Issues from the Courts
  • Overview of the latest on judgements, trends in case management and remedies
  • Raising the Bar Reforms – progress since 2013
  • Unresolved patent validity issues in the biological therapeutic space: validity of broad antibody claims
    • Overview of antibody claims that have come before Australian courts
    • The Australian Repatha case – Patent Office decision currently on appeal
    • Update on the US Repatha proceedings
    • Looking forward in Australia

Presented by Kate Donald, Senior Associate, Corrs Chambers Westgarth, With Materials prepared by Kate Donald and Odette Gourley, Partner, Corrs Chambers Westgarth 

Description

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

OR

1 CPE unit in Ethics and Professional Conduct
4 CPE points in Trade Marks
2 CPE points in Patents

This program is applicable to practitioners from all States & Territories

11.00am to 11.15am Morning tea break
4.00pm to 4.15pm Afternoon tea break

Presenters


Ms. Sonia Stewart, Barrister, 5 Wentworth Chambers
Sonia was admitted as a solicitor in 2001 and called to the Bar in 2016. She specialises in intellectual property, regulatory and consumer law, with particular expertise in trade marks, brand protection law and related commercial matters, including competitor and regulatory actions for misleading and deceptive conduct arising from advertising claims. Sonia has significant experience in appearing for and advising highly-regulated and fast-moving consumer goods industries, including tobacco, alcohol, gambling, food & beverages, pharmaceuticals, cosmetics, advertising to children and to other vulnerable classes of consumers. She has appeared in large-scale litigation at trial and appellate level and represented a wide variety of national and international clients. Sonia formerly held senior in-house and executive roles as General Manager, Regulatory & Responsible Gambling, at Tabcorp and as Head of Corporate Affairs & Legal for Imperial Tobacco Australia. In private practice, Sonia was also a Senior Associate at Mallesons Stephen Jaques (now, King & Wood Mallesons) in the Intellectual Property and Dispute Resolution practice group.


Mr. Angus Lang SC, Senior Counsel, Tenth Floor Chambers
Angus Lang is a barrister at Tenth Floor Chambers in Sydney specialising in intellectual property litigation. He has appeared in numerous patent, copyright, trade mark and trade practices disputes at trial and appellate level. Mr Lang practises throughout Australia, primarily in the Federal Court of Australia, the Federal Circuit Court, and the patent and trade mark offices. His clients include market leaders across a variety of industries, including mobile telecommunications, pharmaceuticals, media, mechanical engineering and consumer goods. Mr Lang teaches intellectual property law at undergraduate and graduate level in Australia and Europe. For a number of years he has conducted comparative intellectual property law courses at the Humboldt-Universität in Berlin and the Martin-Luther-, Universität in Halle, Germany. He also lectures in intellectual property at the University of Sydney and the University of New South Wales. Mr Lang has published regularly in the field, in Australian and international journals. His current research interests include aspects of patent claim construction, patent exhaustion and trade mark dilution. Mr Lang is the former National Chair of the Intellectual Property Committee of the Law Council of Australia, a member of the AI Expert Group appointed by the Department of Industry and a member of the Intellectual Property Society of Australia and New Zealand, and the German Australian-Pacific Lawyers' Association. Mr. Lang is listed in Best Lawyers Australia 2023 for his work in Intellectual Property Law.


Ms. Fiona McNeil, Barrister, 5 Selborne Chambers
Fiona McNeil is a barrister at 5 Selborne Chambers. Fiona has a broad commercial law practice which includes advising and appearing in intellectual property and consumer protection matters.


Ms. Lauren Eade, Senior Trade Mark Counsel, Davies Collison Cave
Lauren Eade joined Davies Collison Cave as a Senior Associate in 2016. Lauren has more than 15 years' experience in trade mark clearance, advisory, registration, portfolio management and enforcement matters, and in high-value intellectual property transactions and intellectual property commercialisation. Lauren has worked for clients across a broad range of industries including FMCG, Internet service and Internet retail, healthcare/pharmaceuticals, arts/media, fashion, tourism, tertiary education, mining, agriculture, and government.


Ms. Tracey Berger, Hearing Officer- Trade Marks & Designs, IP Australia
Tracey spent 25 years in private practice as a trade mark lawyer for Spruson & Ferguson, a leading intellectual property firm working with a diverse client base from individuals, SMEs and local businesses to Fortune 500 companies to manage, protect and enforce their trade marks. She provided her clients with commercial solutions to legal problems. She was a partner of the firm from 2002 and co-authored the seminal text Australia’s Law of Trade Marks and Passing Off (4th ed.) in 2004. In 2014, Tracey was appointed Head of Trade Marks (Asia) in 2014 which involved managing the firm’s trade mark practice in Asia Pacific overseeing culturally diverse teams in 10 offices across 6 countries. From 2017, she also took on the role of Managing Director (Australia). Tracey also sat on the Australian and Singapore boards of the firm helping to guide their strategic direction. She actively participated in the International Trade Mark Association sitting on various committees, speaking on a number of occasions at their International and Leadership conferences as well as being involved in various INTA publications. After a career break, Tracey joined the Oppositions & Hearings section of IP Australia in January 2022 where she determines trade mark disputes as a Hearing Officer.


Dr David Myers, Of Counsel, Franke Hyland
David Myers is an Australian and NZ patent attorney with an agricultural sciences and fermentation background. David has over 20 years experience in patents relating to the chemical and life sciences fields, and has extensive experience in patent oppositions, other contentious matters and litigation support, as well as drafting and prosecuting patent specifications in a diverse range of fields, including pharmaceuticals, nutraceuticals and methods of treatment (both human and veterinary), plant breeding, modification, propagation and cultivation, biochemistry, molecular biology, microbiology, fermentation, food technology, pest control, diagnostic devices and methods, and even steel manufacture. David also has extensive experience with Plant Breeder’s/Variety Rights, both in Australia and New Zealand. David is very client-focused and strives towards obtaining the best possible outcome for his clients, be this in obtaining or challenging IP rights.


Ms. Lynne Lewis, Partner, Bird & Bird
Lynne is an experienced and respected advisor in the area of intellectual property. She is particularly recognized for her work in trade marks, patents, copyright, breach of confidence and advertising litigation. Lynne specializes in litigation and commercial advice across a broad range of industries including, pharmaceutical; biotechnology; medical devices; fast moving consumer goods; automotive; aviation; fashion; food and beverages; financial services; energy and resources; and telecommunications industries.


Odette Gourley, Partner, Corrs Chambers Westgarth
Odette is one of Australia’s foremost intellectual property and regulatory lawyers with special knowledge and experience in the pharmaceutical and life sciences industries. Odette is an expert across the full range of IP including patents, trade marks, copyright, registered designs and trade secrets. In regulatory and advertising and marketing law her expertise include the Competition and Consumer Act, regulation for TGA, PBS, NHA, APVMA, AICIS, FSANZ, Gene Technology, Biosecurity, cosmetics, FOI including industry ethical and advertising codes for a wide range of products. Odette has acted in notable cases that have changed the law. In patents, Odette acted for AstraZeneca (Hassle) in successfully defending the validity of a drug formulation patent and that case is now a leading authority on the standard for obviousness under Australian law. In administrative law, the decision in the Roche case on scheduling of over the counter medicines resulted in revision of the statutory provisions. In trademarks, Odette acted for Gallo in the High Court, now the leading authority on the nature of trade mark use, and for Winnebago in the Federal Court recovering the brand for the American owner after 30 years of unauthorised use. The Winnebago case established the principle of user pays damages for IP infringement under Australian law which are recoverable even where damages on a lost sales basis are not available nor an account of profits. In the Johnson & Johnson v Unilever case in the Federal Court, Odette successfully defended the methodology adopted for consumer in use testing to support comparative advertising claims. With her deep experience in all aspects of IP, regulatory and advertising and marketing law, Odette is able to provide illuminating insights in relation to recent developments and future trends.


Ms. Helene Fiorucci, Founder & CEO of HEFIP, European & French Patent Attorney, and US Patent Agent.
Helene is the founding partner of HEFIP (headquarters in Georgia USA), an IP Law Firm for small and medium tech companies and startups, specialized in Chemistry, Biotechnologies and Pharmacy. Helene Fiorucci is a qualified European and French patent attorney, as well as a US patent agent. Her practice focuses on all facets of Intellectual Property practice, with a special focus on Patent Law. She has worked both in private practice and in-house for more than 20 years, advising companies ranging from start-ups to multinationals, including French and American Universities. She can offer her services and support on many legal issues relating to patentability, patent validity, opposition and infringement, licensing, and competitive intelligence. Helene provides counselling on all aspects of domestic and international patent practice, including patent filing, patent prosecution and patent enforcement. Helene also has extensive experience in drafting and negotiating agreements, including license agreements, joint development agreements, consulting agreements and research agreements.


Ms. Kate Donald, Senior Associate, Corrs Chambers Westgarth
Kate is an experienced patent litigator with a unique combination of high calibre science and law skills. Following Honours degrees in Science and Law from Monash University including funded overseas synchrotron research in Japan and Taiwan, and funded study at the University of California, Berkeley for a year (scholarship awarded competitively to two out of 100 applicants), Kate worked in industry as a research scientist and inventor before joining Spruson & Ferguson patent attorneys and from there had an opportunity to join Corrs in IP. Kate worked as a patent litigator in London at an international law firm on a leave of absence from Corrs. Kate is passionate about patents, and is a key senior lawyer in Corrs’ patent litigation practice in cases before the Courts and Patent Office. Kate has advised on a broad range of technologies, including small molecules, immunotherapies, vaccines, synthetic polymers and disposable hygiene garments.

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Trade Marks and Patents Conference 2023

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All Sessions
Tuesday, 23 May 2023
to Australia/Sydney
CPD Points 7
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Morning Session
Tuesday, 23 May 2023
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CPD Points 4
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Afternoon Session
Tuesday, 23 May 2023
to Australia/Sydney
CPD Points 1
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$160.00
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Afternoon Session
Tuesday, 23 May 2023
to Australia/Sydney
CPD Points 2
2
$305.00
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