Intellectual property

Contacts: Adam Rosser, Ben Wilson

We have extensive experience in intellectual property advice, commercialisation and dispute resolution. 

We advise our clients on the legal requirements to create intellectual property rights, and the matters necessary to establish in order to obtain protection.  This includes advice on the applicability of copyright, the protective value of company names, business names and trade marks, and where it is appropriate to register a design or seek a patent.

As an example, we have advised a national retailer in relation to possible infringement of copyright in a piece of music sought to be used in an advertising campaign, and on the composition of original music of a similar style to avoid infringement and produce an excellent commercial outcome.

We assist our clients with agreements relating to the licensing of intellectual property of all types.  This includes confidential information and trade secrets, as well as registered intellectual property.

We prepare confidentiality agreements for use in negotiations, license agreements to allow commercialisation of the intellectual property, and royalty agreements to allow owner of intellectual property to earn ongoing income.

We are also very experienced in the creation of documentation for franchises, which involve the licensing of intellectual property in brand names and marketing material, as well as copyright in policy and procedure manuals, and confidentiality in customer information.

As another example, we have assisted a client involved in internet and website development with its terms of trade so as to protect and keep separate the developer’s intellectual property in the software from its clients’ intellectual property in their commercial content.

We assist our clients to protect their rights and to resolve disputes in relation to intellectual property, both through negotiation and through litigation in Court.  We are able to conduct disputes throughout Australia.

We have conducted large litigation in the Federal Court both prosecuting and defending allegations of infringement of intellectual property.

As an example, we have acted in a patent dispute in the Federal Court for a supplier of equipment to the mining and mineral exploration industry in relation to a patent dispute with a major multi-national company.  In that case, there were difficult questions of interpretation of the Patents Act, and of patent claims.  That matter also involved a question about the exploitation of the patents overseas.

As another example, we have acted for a small business seeking to protect its trade mark from infringing use by numerous other businesses at the same time, including a national chain.  In that matter, we wrote a series of letters informing the other businesses of our client’s rights and requiring that the infringing trade mark be removed.  We were successful in doing so.

We have a substantial interest and experience in engineering and technological matters.  We are very familiar discussing technical drawings and complex processes.  We are keen to understand our clients’ business and technology.