Over 220,000 industrial designs from IP Australia now part of EUIPO platform08 October 2021
IP Australia has joined DESIGNview, enabling more than 220,000 industrial designs from the intellectual property office to be part of the online tool’s database of millions of designs from around the world.
Australia declares support for TRIPS waiver for Covid-19 vaccines05 October 2021
Trade Minister Dan Tehan confirmed this development to journalists in September 2021.
Changes to the Australian Designs Act23 September 2021
Among these is the inclusion of a grace period. During this grace period, applicants may publish their designs and make it public for up to 12 months before applying for protection of said designs.
Australian court ruling says it all: AI can be an inventor12 August 2021
The court recently arrived at such finding for Thaler v. Commissioner of Patents  FCA 879 which involved inventions developed by AI.
Reality TV shows in copyright infringement skirmish05 August 2021
The producers of “Demolition NZ,” a reality TV show from New Zealand, has accused the producers of Australian TV program “Demolition Down Under” of copyright infringement.
Defendant files appeal in copyright infringement case involving ‘80s hit song by Twisted Sister02 July 2021
Australian real estate and mining mogul Clive Palmer filed an appeal last May on the copyright infringement case involving the 1984 hit song “We’re Not Gonna Take It” (WNGTI) by Twisted Sister.
Australian court rules on trademark, copyright case involving Greenpeace and local power company23 June 2021
How will the case impact Australia's IP scene? An Australian IP expert has their say.
Australia introduces patent box for medical, biotech companies10 June 2021
The patent box serves to incentivize local firms to innovate and commercialize in Australia.
2021 Asia IP Profiles: Tell us about your firm!31 May 2021
Later this year, Asia IP will publish the 2021 edition of Asia IP Profiles. This guide is the definitive resource for companies trying to identify the best IP practices in the region, and is based on editorial research, and surveys submitted by leading law firms.
From Clothing the Gap to Clothing the Gaps because of “Gap”23 April 2021
Clothing label forced to rebrand after trademark infringement dispute.
Indigenous Knowledge Consultations 2021 by IP Australia open until May 25, 202131 March 2021
IP Australia aims to improve IP protection for traditional knowledge, cultural expressions by indigenous Australians.
People and places
Sydney-based commercial firm Addisons advises on trademarks, designs, copyright and patents with a special focus on media. Its specialists in the IP and Media practice have advised some of the most prominent brands including the Australian Associated Press, Dymocks, Nintendo and Mastercard International.
Sydney-based Allens is known for an acclaimed practice with expertise across the full gamut of intellectual property matters. The firm has maintained an integrated alliance with Linklaters since 2012. IP practice leader Miriam Stiel is a member of the Management Committee of the Copyright Society of Australia, the Editorial Board of the Australian Intellectual Property Law Bulletin and the Anti-Counterfeiting Committee of the International Trademark Association. Recent promotions include those of Ian Lindsay, Jessica Mottau, Joel Barrett and Phil O’Sullivan to partner.
Ashurst’s intellectual property team provides a complete range of contentious and non-contentious specialist IP services. It has an excellent reputation for providing cutting-edge advice on strategic IP matters, acting for some of the world’s leading companies. The full-service firm has over 375 partners among 1,600 lawyers and staff in 25 offices throughout Australia and the Pacific region to provide corporate services in conjunction with IP support. Key members of the team are Lisa Ritson, Anita Cade, Kellech Smith, Stuart D’Aloisio and Nina Fitzgerald. Paul Jenkins, who is based in Sydney and London, is the firm’s global managing partner.
Key contacts at global firm Baker McKenzie are national managing partner Anthony Foley and leading practitioners Byron Angelopulo and Robert Arnold. Helen Macpherson joined the firm as an IP/tech partner in its Sydney practice.
Commercial law firm Banki Haddock Fiora provides boutique intellectual property, technology and media law services. The firm is noted for representing global clients such as Pfizer, Nestle and Costco. Cofounding partners Peter Banki and Kate Haddock are well-regarded for their experience in the publishing, digital and media industries, while Richard Fiora has more than 25 years’ experience in commercial transactions and corporate issues. Partner Margaret Shearer is also recommended for her trademark expertise.
Full-service international firm Bird & Bird has a strong presence in Australia with over 50 legal experts based in Sydney. Shane Barber, managing partner in Australia, is an expert in communications, media and technology, and is a lead partner of the firm’s Australia corporate law and media law groups with a focus on technology and communications. Partner Lynne Lewis is a key contact for trademark and patent issues, while partner Troy Gurnett is known for litigation, dispute resolution and copyright matters.
Established in 1833, Clayton Utz has about 163 partners and 1,250 support staff in its Melbourne, Sydney, Brisbane, Perth, Canberra and Darwin offices. Known for its innovative approach, the firm has clients across the world including companies in the banking, financial, mining, power and utilities, manufacturing and accounting sectors as well as government institutions.
Commercial law firm Corrs Chambers Westgarth has a strong focus on the protection and commercialization of IP assets with a special practice in pharmaceutical regulation and marketing. Key contacts include partners Frances Wheelahan and David Fixler in Melbourne, and Odette Gourley in Sydney.
Davies Collison Cave and specialist IP firm FPA Patent Attorneys were acquired by QANTM IP Limited in 2016 and are now part of the Australian Securities Exchange-listed firm of over 370 employees across key offices in Melbourne, Sydney, Brisbane and Singapore. DCC continues to operate as an independent business with former partners retaining over 50% interest in QANTM and restructuring to enable increased investment in IT and other systems innovation and expansion into other jurisdictions. Principal Marion Heathcote received INTA’s 2019 President’s Award. Jack Shan and Aaron Yates have been named principal while Edith Hamilton, an expert in complex patent opposition matters, has been named senior patent counsel. Key contacts are Stuart Green for trademarks; Craig Finlayson for corporate and commercial; and Scott Sonneman for patent work. DCC was named Asia IP trademark firm of the year for Australia in 2019.
Dentons, the world’s largest law firm, has been expanding its IP offering in Australia and the Asia Pacific. After formalizing its combination with several offices of the near-century-old Australian law firm Gadens in December 2016, the firm now has offices in Sydney, Perth and Port Moresby, Papua New Guinea. Managing associate James Ellsmore has left the firm.
DLA Piper is a global law firm with close to 500 IP professionals in more than 24 countries; its Australia offices represent a third of the AXS 100 companies and their subsidiaries in IP and other commercial issues. Partner and global co-chair for IP and technology Melinda Upton has extensive experience across all aspects of brand protection, exploitation and enforcement in Australia and other areas.
With a history of 60 years in Australia, independent firm FB Rice provides coverage across all aspects of IP including patent preparation, filing and prosecution; infringement, clearance and validity search; trademark filing and prosecution. The firm also offers corporate services to help clients maximize R&D investment through its R&D Tax Consulting Team. Partner Joanne Martin and Michael Seifried are recommended for their trademark work while Ian Rourke and Connie Merlino are recommended for their patent practice. New hires for the year include trademark attorney Jarrod Lichtblau and patent attorneys Rowena Wilson and Sean Kelley. Michael Chin Quan has left the firm to join Yusarn Audrey in Singapore.
All-purpose law firm Gadens has offices in Adelaide, Brisbane, Melbourne, Perth and Sydney. Its experienced IP lawyers assist rights owners and users to develop, protect and manage their intangible assets, including inventions, brands, business secrets, copyrights, software, franchises, contracts, licenses and reputations.
Gilbert + Tobin is a leading independent corporate law firm with a focus on evolving market sectors; it has a team of over 20 lawyers practicing exclusively in IP law to serve clients in sectors from consumer electronics, entertainment and FMCG to mining and financial services. Partner Kate Harrison leads the litigation group and partner John Lee heads the patent sub-practice within the IP group.
Specialist IP house Griffith Hack boasts expertise across the full spectrum of IP matters, and has branches in Melbourne, Perth, Sydney and Brisbane. The firm collaborates with Glasshouse Advisory to provide full-spectrum IP-related corporate support. Key contacts include principal Anne Makrigiorgos, who was the first female president of the Institute of Patent and Trade Mark Attorneys of Australia; and principal and former Commonwealth Scientific and Industrial Research Organization materials scientist Michelle Hedges. Watermark fully integrated with Griffith Hack in July and ceased to operate as its own brand. Griffith Hack is now part of IPH Limited, following the acquisition in August 2019 of the Xenith IP Group by IPH.
The IP team at global professional services firm Herbert Smith Freehills has offices around the world, including six in Australia. The IP practice is led globally by dispute resolution expert Mark Shillito and by Sue Gilchrist in Australia, whose focus spans patent-issues in the technology, media and pharmaceuticals sectors.
Brisbane-based boutique firm IP Gateway advises on patents, trademarks, registered designs and copyright. Principal Wayne Slater is experienced in identifying IP strategies, prosecuting and enforcing patents and designs with particular focus on patent opposition and validity analysis.
Johnson Winter & Slattery boasts of legal expertise combined with commercial and market awareness where services are tailored with the client’s commercial objectives in mind. JWS was established in 1993 as a boutique corporate firm. Over the years, it has risen to become one of Australia’s leading independent law firms for complex transactions and disputes.
Global law firm Jones Day has 2,500 lawyers scattered in the firm’s 43 locations. Anthony M. Insogna heads its global IP practice. The firm has Australian offices in Sydney, Melbourne, Brisbane and Perth.
King & Wood Mallesons boasts more than 140 partners and over 1,100 lawyers across five major cities in Australia. Its IP practice covers patents, trademarks, copyright, designs, trade secrets, strategic IP advice and IP disputes. Based in Sydney, partner-in-charge Katrina Rathie is a pre-eminent intellectual property lawyer and litigator who focuses on the advertising, marketing, brands, luxury and consumer goods and media sectors. Other key practitioners include Bill Ladas, Kim O’Connell, Matthew Swinn and Cate Nagy.
Established in 1905, Macpherson Kelley is a full-service law firm with offices in Brisbane, Dandenong, Melbourne and Sydney. Its IP practice is strengthened by a team of award-winning lawyers who deliver services in the areas of licensing, application, counterfeit goods, confidential information and trade secrets, international protection, IP ownership consolidation and transfer, IP reviews and audits, plant breeders rights, IT advice and others.
Maddocks is an independent Australian firm that works closely with corporations, businesses and governments throughout Australia and internationally from offices in Canberra, Melbourne and Sydney. The firm is noted for its cyber and data resilience work; it also has a strong TMT team, which provides advice in complex technology contracting, including IT and business process outsourcing; telecommunications regulation and commercial matters; and content creation and distribution. Brendan Coady has more than two decades’ experience as a commercial lawyer; his practice focuses on IP, technology and telecommunications; he also advises on competition and consumer law.
Adelaide-based Madderns assists clients in the management of their IP portfolios, including conducting audits to fully capture and recognize IP assets and providing strategies for identifying risk associated with third-party IP rights. Managing partner Tom Melville is known for his commercially-focused approach and has a strong interest in sustainable technologies and medical technologies. Louise Emmett heads up the trademark team and Mark O’Donnell leads the life sciences and chemistry teams. Other leading practitioners at Madderns include Megan Ryder, Chris Wilkinson and Stephen O’Brien.
McCullough Robertson is a full service, independent Australian law firm with a team of specialist lawyers, associates and paralegals lending a commercial approach to trademark prosecution, advice and enforcement. With more than 4,000 trademarks under management worldwide, the firm has a wealth of experience in both Australian and international filings. Named as Asia IP copyright firm of the year for Australia in 2019, the firm prides itself on holistic approach, providing innovative and practical solutions that includes ongoing assistance in relation to portfolio management, enforcement and protection. Belinda Breakspear who heads up the firm’s IP practice is a key contact. Danielle Hussey has left the firm.
Based in Brisbane, Michael Buck IP is a patent and trademark attorney firm with an IP practice that dates back to 1994. Its client base is made up of local and international companies, startups, individual inventors, educational institutions and research bodies from around the globe. The firm counts among its services the preparation of patent applications for highly technical inventions. Its leading practitioners are Geraldine Rimmer and Kellie Jukkola for trademarks and Andy Mukherji and Michael Buck for patents. New hires include David Tso, whose expertise lies in chemistry and biotechnology.
Leading national law firm Mills Oakley has launched an IP practice in Melbourne with the hire of Steven Wulff, who specializes in strategic IP protection and counseling startups and tech firms. Wulff’s clients include entrepreneurs and investors who develop innovative technologies in the medtech, software, electronics, sportstech, fintech, cleantech, and agtech sectors. Before becoming a lawyer and patent/trademark attorney, Wulff was a government physicist in telecommunications research. Alec Christie joined the firm in Sydney, where he is the founding partner of the firm’s digital law practice, including data privacy.
Sydney-based multinational professional services firm MinterEllison positions itself at the conjunction of legal services and technology. It announced an A$2 million (US$1.34 million) joint venture with AI firm Goat Ventures to apply AI to legal services in March 2018. Leading IP specialists include partners Maria Ho, Lisa Jarrett and Anthony Lloyd, who also leads MinterEllison’s technology practice.
Norton Rose Fulbright has an IP team of more than 50 professionals spread across offices in Sydney, Melbourne, Perth, Canberra and Brisbane. Its clients include major brands and smaller companies from the hospitality and travel, financial institutions, banking, insurance, food technology, pharmaceuticals and life sciences, information technology, entertainment and broadcasting sectors. Frances Drummond is key contact for the IP practice based in Sydney. The firm completed a merger with US-based international law firm Chadbourne & Park but has retained the Norton Rose Fulbright name.
Phillips Ormonde Fitzpatrick has offices in Melbourne, Sydney, Geelong and Adelaide. The POF Group includes three entities: a patent and trademark attorney firm, an in-house law firm focusing on litigation and IP agreements, and a specialist investigations company. Its 23-plus partners help manage client’s portfolios across Australia, New Zealand, Papua New Guinea, Vanuatu and Southeast Asia.
Shelston IP is one of the oldest IP firms in Australia, and today serves global clients as part of IPH Limited, following IPH’s August 2019 acquisition of the Xenith IP Group. Apart from a wide spectrum of IP services for Australian, New Zealand and international clients, Shelston has local expertise in the mining and life sciences industries. Principal Chris Bevitt heads the firm’s commercial law team, combining a strong IP focus with the business acumen experience gained from over 20 years of practice.
Sparke Helmore is a firm with more than 700 people working from eight offices across Australia. Sydney-based Shannon Platt who leads the corporate group and is the national service line leader of the IP team has more than 20 years’ experience representing clients in IP disputes in courts and litigation arising from misleading and deceptive conduct and protecting trade secrets. In July 2020, the firm merged with Laycock Burke Castaldi, with new partner Julien Castaldi bringing substantial IP experience to the merged firms. Senior associate Wyn Davies is a notable new hire.
Spruson & Ferguson companies are incorporated entities owned by IPH Limited, a publicly listed holding company for a number of IP professional services brands operating across Asia. Rory Anderson and Scott Philp were promoted to principal. Among the new hires are Ken Bolton and Ryan Boe, both of whom joined the patent – engineering practice. The firm was named Asia IP patent firm of the year for Australia in 2019. Fisher Adams Kelly Callinans and Cullens combined business operations from April 2018 after a three-way merger and the new firms are now fully integrated into Spruson & Ferguson. Tracey Berger, former managing director of Spruson & Ferguson’s Sydney and Melbourne offices and director of the APAC trademark practice, retired in August 2020. Russell Davis now heads the firm’s Australian offices while Coral Toh leads the Asia trademarks group from Hong Kong.
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