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Intellectual property law is complex and constantly evolving, particularly with new technologies continuously entering the market and the abundance of innovative ideas for products and services. With the majority of businesses now having a presence online, and the ease of accessibility of material and information, it is even more important to identify, secure and protect valuable intangible assets.
One of the intellectual property group’s strengths is being able to service clients through the whole lifecycle of intellectual property matters.
Our team provides advice in respect of the development, protection, commercialisation and enforcement of all forms of intellectual property. We also provide strategic advice on intellectual property asset management for Australia and key international territories.
We act for clients if a dispute arises or when enforcement steps are required to protect intellectual property assets including preventing counterfeit goods from entering Australia.
The group has wide-ranging experience across many industry sectors including Federal and State Government, manufacturing, financial services, technology, media, energy & resources, education, telecommunications and health, amongst others.
The group’s expertise specifically includes:
Trade Marks
Our national team offers a range of trade mark services to clients. We provide pre-application advice which includes a comprehensive trade mark searching and clearance service. We have extensive experience registering trade marks in Australia as well as overseas jurisdictions (including under the Madrid Protocol system) utilising international agents where required.
Our trade mark services include the utilisation of a dedicated trade mark software program which enables us to track and monitor trade marks for clients, in Australia as well as in key international territories. The firm currently manages thousands of trade marks for clients, registered all over the world.
Patents and Designs
Our national patent and design team manage patents and design portfolios for numerous local and international clients. Where required we liaise with patent attorneys with the appropriate technical background to file and prosecute patent applications on behalf of clients.
Our team’s lawyers handle all aspect of design applications, from searching, registration, examination, oppositions and enforcement.
As part of our services we are able to offer our clients assistance with freedom to operate searches, patentablity and registrability advice, infringement and validity advice.
Copyright
Our team partners with our clients to commercialise, license and protect our clients’ valuable assets and copyright works. We draft and negotiate complex copyright and other IP licences, particularly in the media, entertainment, technology and financial services sectors. We act for creators and acquirers of content in the print, electronic and digital media, providing innovative pre-publication advice, copyright advice and advertising clearances.
IP Litigation
Our IP Litigation specialists advise on all forms of IP enforcement and develop strategies for the protection of IP rights. We handle litigation matters in all jurisdictions and assist in negotiating the resolution of contentious IP disputes, as well as appearing in proceedings before IP Australia.
We act for Australian and international clients in a range of industries in relation to copyright, trade mark, patent and design infringement matters and anti-counterfeiting, including issuing cease and desist notices and obtaining injunctions. We conduct enforcement and dispute resolution processes including trade mark oppositions and domain name disputes. We also provide advice regarding third party infringement claims. We remove offending online material and take active steps to protect confidential information, data, trade secrets and other proprietary material.
Sub Categories
Experience
- A global fashion label by managing an international trade mark portfolio, including all trade mark registration work in Australia and overseas, attending to renewals, trade mark infringement, availability and registrability advice, handling contentious matters and negotiating and documenting settlement agreements;
- A global airline in alleged copyright infringement relating to use of licensed music in a worldwide advertising campaign. Court proceedings for copyright infringement involved parties from US, UK, France and Australia with arguments as to ownership, originality, infringement, licences by various parties and arrangements with international copyright collection agencies;
- An Australian bank by assisting with a rebranding project involving registration of new trade marks and domain names;
- A veterinary client regarding the protection and exploitation of certain new technology developed by the client and assisted with obtaining patent protection. Also provided advice regarding licensing arrangements with third parties and ownership issues regarding the new technology;
- A medical researcher/founder on the commercialisation of patented technology relating to the non-invasive measurement of blood oxygen, including the commercialisation arrangements with a Hospital;
- State Government as providers of intellectual property services and exclusive provider of trade mark services to a Government Tourism Portfolio;
- A major Australian University on a copyright dispute over unauthorised use of published content;
- A national automotive parts retailer on a dispute over the importation of counterfeit parts; and
- An energy company by advising on the development, protection and commercialisation of $25 million technology to produce digital cadastral maps of electricity transmission corridor assets.