Intellectual Property

Intellectual Property


Our specialist team develop strategies to maximise the value of and to protect brands, works and technological advances. We work closely with our clients to provide commercial solutions to their challenging Intellectual Property (IP) issues. Our familiarity with a diverse range of industry sectors and breadth of experience gives us an unparalleled ability to address our clients’ needs in a cost-effective and business focused way.

Our dedicated IP team provide advice on the protection, management and defence of all forms of IP including copyright, patents, trade marks, designs and confidential information.

We offer practical advice with an in-depth appreciation of many technical disciplines. Our team includes a number of solicitors who not only have knowledge about technical matters but have practical experience from working in the technical fields. This ensures effective communication with our clients and experts that we need to engage with on our client’s behalf. We respond quickly to industry developments, and our unique skills and experience provide a strategic edge to our clients. 

Our core capabilities in Intellectual Property include:

  • Advice on IP protection and management strategies (including and in conjunction with other business transactions)

  • Draft contractual terms to protect and define ownership of IP assignments for joint ventures between companies, research institutes and universities

  • Licensing agreements for all forms of IP and information technology

  • Act for applicants and opponents in opposition litigation that is commenced prior to the grant of trade marks, patents and designs

  • Act for IP owners and alleged defendants in infringement litigation over  all forms of IP including copyright,  trade marks, patents, designs, plant breeders' rights, domain names and confidential information.

Patents

  • We acted for a University in proceedings against a former employee of the University concerning the ownership of inventions created by an employee. We also acted for the University in an appeal to the Full Federal Court of Australia and in an application to appeal to the High Court of Australia.

  • We acted for a supplier of agricultural equipment in patent infringement proceedings relating to the supply of a plow. The Applicant agreed to the proceedings against our client being dismissed and to pay our client’s costs.

  • We advised a pharmaceutical company and a company that supplies valves on patent validity and allegations of patent infringement.

Copyright, Design and Confidential Information

  • We acted for a multinational engineering company in proceedings alleging breaches of confidence and copyright. The proceedings were settled at mediation with a confidential settlement.

  • We acted for a number of copyright owners and copyright users in copyright infringement proceedings, particularly in the building and construction industries.

  • We assisted an importer on the parallel importation provisions of the Copyright Act 1968 and subsequently negotiated settlement of a claim for trademark infringement.

Trademarks

  • We have advised many companies on the prospects of obtaining trade mark protection and have obtained a large number of trade marks for our clients.

  • We have acted for a number of large and small companies in trade mark opposition proceedings, including attending hearings on our clients’ behalf.

Darren Pratt

Partner

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+61 8 9426 6732
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Eva Lin

Partner

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+61 8 9426 6765
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Elizabeth Tylich

Partner

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+61 8 9426 6700
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Adam Levin

Partner

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+61 8 9426 6753
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  • 20 December 2016

    Copyright holders are given another tool to fight online infringement

    The Federal Court has delivered its first substantive decision concerning the operation of s. 115A of the Copyright Act.  Section 115A enables copyright owners to apply for injunctive relief requiring internet service providers (ISPs) to block access to websites which facilitate copyright infringement.  

    Authors: Sarah Calautti, Jennifer Cass, Darren Pratt

    Full article 10 Bytes

  • 18 September 2014

    Data breaches – ‘to notify, or not to notify, that is the question'

    Earlier this year the Privacy Act 1988 (Cth) was amended which brought into effect the new Australian Privacy Principles (APPs).  

    The APPs impose obligations on dealing with ‘personal information’.  Personal information is information or an opinion about an identifiable person, or a reasonably identifiable person, regardless of whether the information or opinion is true or whether it is recorded in a material form.  Some examples of personal information include a person’s name, email address, phone number and credit card details.  Personal information also includes ‘sensitive information’, for example, information or an opinion about a person’s ethnic origin, religious beliefs or their health. 

    Author: Elizabeth Tylich

    Download PDF 42 Bytes

  • 2 July 2014

    Liability of licensees

    On 17 June 2014, the Full Federal Court heard an appeal disputing a licensee’s liability to contribute to the litigation costs incurred by the licensor in Austral Masonry (NSW) Pty Ltd v Cementech Pty Limited [2014] FCAFC 72.

    Authors:

    LINK 38 Bytes

  • 31 March 2014

    A dentist's pain - failure to consider proper trade mark principles

    While it is rare for trade mark proceedings to be undertaken in state Supreme Courts, this case reinforces that this jurisdiction is available for that purpose.

    The plaintiff claimed damages for trade mark infringement, misleading and deceptive conduct and passing off.  The defendant denied the claims and counterclaimed for an order that the plaintiff’s trade mark be cancelled.  Not only did the Court entirely reject the plaintiff’s claims, but also agreed with the counterclaim and cancelled the registration of the plaintiff’s trade mark.

    Authors:

    Download PDF 609 Bytes

  • 17 February 2013

    Biotechnology breathes a sigh of relief: Isolated gene sequences are patentable subject matter.

    This case creates an important precedent that the act of isolating a gene sequence is sufficient to create a sufficient artificial state of affairs to satisfy the first limb of the manner of manufacture test of patentability.

    Authors:

    Download PDF 243 Bytes

  • 7 February 2013

    Google successful in appeal against watchdog: Google Inc v ACCC

    On 6 February 2013, the High Court of Australia handed down their decision in the matter of Google Inc v Australian Competition and Consumer Commission [2013] HCA 1. The Court unanimously allowed Google Inc’s appeal from the decision of the Full Court of the Federal Court of Australia, in which the Federal Court held that Google Inc had engaged in misleading and deceptive conduct contrary to section 52 of the Trade Practices Act 1974 (Cth) (now schedule 2 section 18 of the Competition and Consumer Act 2010 (Cth)).

    Authors:

    Download PDF 283 Bytes

  • 25 May 2012

    Jackson McDonald 5th time Perth Law Firm of the Year

    Jackson McDonald consolidated its position as the leading West Australian law firm when named Perth Law Firm of the Year at the 2012 ALB Australasian Law Awards in Sydney on 24 May 2012.

    It is the fifth year out of six that Jackson McDonald has won this prestigious award.

    Authors:

    Download PDF 304 Bytes

  • 1 May 2012

    A boom for multimedia copyright owners - NRL v Optus

    The Full Court of the Federal Court recently held on appeal in the case of National Rugby League Investments Limited v Singtel Optus Ltd [2012] FCAFC 59 that Optus had infringed copyright in television broadcasts by providing a television recording service.

    Authors:

    Download PDF 282 Bytes

  • 10 January 2011

    Doing Business in Asia Pacific

    Jackson McDonald is a proud member of Globalaw and has assisted in the development of this guide.

    Authors:

    Download PDF 4 Bytes