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In-depth Features

Australia’s Federal Government 2021-2022 budget, which was announced on May 11, 2021, proposed a patent box scheme. It would lower the tax rate on profits generated by Australian medical and biotechnology companies from patented inventions that were researched and developed in Australia. From the previous corporate tax rates of 30% for large enterprises and 25% for small and medium-sized firms, the patent box puts the effective concessional corporate tax rate at 17%. Its aim is to encourage Australian companies in the medical and biotech sectors to engage in research, innovation,  manufacturing and commercialization right on local soil instead of transferring their intellectual property to offshore facilities.


Another major development in Australia’s IP scene concerns innovation patents. Beginning August 26, 2021, new standalone innovation patents can no longer be filed in Australia. Standard patent applications filed before August 25, 2021, will be converted into innovation patents.


Meanwhile, the country’s franchise law has also been substantially amended.


Product counterfeiting continues to be a significant issue in Australia. However, the situation does appear to be improving.


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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.


Ashurst’s intellectual property team provides a complete range of contentious and non-contentious specialist IP services. The firm, which was named Australia copyright firm of the year at the 2020 Asia IP Awards, 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 a partner. Her area of expertise are IP and patent litigation.


Commercial law firm Banki Haddock Fiora provides 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 was acquired by QANTM IP Limited in 2016 and are now part of the Australian Securities Exchange-listed company. 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; she is a key contact for trademark work at the firm. Other key contacts include Scott Sonneman for patent work and Craig Finlayson for corporate and commercial work. DCC was named Australia patents firm of the year at the 2020 Asia IP Awards.


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. Donald Robertson has joined Dentons’ Sydney office as a competition and economic regulation partner in the firm’s IP and technology practice. Robertson joins the firm as a corporate advisory and dispute resolution lawyer specializing in capital markets and regulatory law, competition law, international contract and commercial law, blockchain and cryptocurrency law and international investment law.


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.


Specialist IP firm FPA Patent Attorneys was acquired by QANTM IP Limited in 2016. The firm has leveraged its position as part of that group to expand its network from Melbourne and Sydney to also include Singapore. The firm is loaded with technical experts in a range of industries, including mining and resources, energy, pharma, biotechnology, industrial chemicals, food and beverages, construction, medical technologies and others. Key contacts for patent prosecution work at the firm include Karen Bentley, Chris Bird, Daneta Crump, Adam Denley, John Dower, Carl Harrap and Stuart Irvine.


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. Griffith Hack is now part of IPH Limited, following the acquisition in August 2019 of the Xenith IP Group by IPH.


Sydney-based independent boutique Halfords IP is a full-service IP firm providing patent, trademark and design services to startups, established businesses, universities and research organizations and other entities. Partner Dan Berger is noted for his work in the medical, nanotechnology, materials and designs sectors, while partner Anthony Cowle is well-regarded for electrical, ICT, medical and designs work. Partner Geoff Davidson handles mechanical, chemical and medical matters, as well as trademarks.


The IP team at global professional services firm Herbert Smith Freehills has offices around the world, including six in Australia. Partner Sue Gilchrist heads up the IP practice in Australia. Her focus spans patent issues in the technology, media and pharmaceuticals sectors. The firm has named Linda Evans as partner in its Sydney competition, regulation and trade practice, where she will advise clients on all aspects of trade practices and competition law.


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.


James & Wells provides a full range of IP services in Australia, New Zealand and the Pacific Islands. Led by managing partner Tim Walden, its team of legal professionals in Australia lends its expertise to assist companies to own and maximize their IP assets not just in Australia but overseas as well. The latest addition to the team is partner Adam Luxton, who joined its Brisbane office. Luxton helps lead the firm’s expansion in Australia, adding his extensive engineering and ICT expertise to the firm’s strong patent capabilities.


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 42 locations. Anthony M. Insogna heads its global IP practice. The firm has Australian offices in Sydney, Melbourne, Brisbane and Perth. Partner Michael Lundberg has joined the firm’s global disputes practice in its Perth office. Lundberg has worked as a litigator for more than 27 years, acting for and advising clients in disputes in the energy and resources sector and the engineering and construction sectors.


K&L Gates boasts some 300 lawyers in Australia, including those handling intellectual property and related matters. Jonathan Feder leads the firm’s Australia IP group from Melbourne, where he brings experience in a broad range of legal areas relating to IP, including registration of trademarks and designs, trademark and design enforcement, copyright protection, trade protection and licensing. Feder and his team have acted for clients in numerous leading IP cases in the Federal Court of Australia, including Elwood Clothing v. Cotton On Clothing, Seafolly v. City Beach and numerous cases for the G-Star group of companies. More than half of the firm’s global IP lawyers are registered to practice before the U.S. Patent and Trademark Office. The latest additions to the team are partner Tom Young and special counsel Julie Brown, who will both be based in Brisbane, partner Patrick Sands in Melbourne, and partner Richard Chew in Sydney.


King & Wood Mallesons boasts more than 140 partners and over 1,100 lawyers across Brisbane, Canberra, Melbourne, Sydney and Perth. Its IP practice covers patents, trademarks, copyright, designs, trade secrets, strategic IP advice and IP disputes. 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. The firm won the Australia trademarks award at the 2020 Asia IP Awards.


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. The firm prides itself on holistic approach, providing innovative and practical solutions that includes ongoing assistance in relation to port-folio management, enforcement and protection. Belinda Breakspear, who heads up the firm’s IP practice, is a key contact.


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. Among the firm’s new hires is Heather O’Kane, senior counsel and patent and trademark attorney.


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.


Sydney-based multinational professional services firm MinterEllison positions itself at the conjunction of legal services and technology. Leading IP specialists include senior consulting lawyer Maria Ho and partner Lisa Jarrett. Andrew Cunningham, the firm’s Sydney-based managing partner for consulting solutions and innovation, has spent more than 30 years with the firm and is now tasked with using “innovation to transform the client experience.” As innovation leader, Cunningham is developing and implementing strategy to “achieve the firm’s vision to be recognized by our clients as the firm which provides the most innovative solutions.”


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.


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.


Pizzeys, part of the IPH Limited group, operates in Australia, New Zealand and Singapore. Principal Lars Koch in Canberra has experience as deputy commissioner of patents at the Australian Patent Office, as well as Supervising Examiner of Patents and Director of Patent Training at the office. Principal Jenny Mackie in Brisbane heads the firm’s trademark department.


Shelston IP was one of the oldest IP firms in Australia, but as of November 1, 2021, the Shelston IP brand ceased to exist, as the firm was merged with fellow IPH Limited property Spruson & Ferguson Australia. Chris Bevitt, who led the Shelston IP commercial law team, is now a principal and head of Spruson & Ferguson Lawyers in Sydney.


Simpsons has built a strong reputation as an intellectual property and entertainment law practices. Director Adam Moxon Simpson has litigated the rights to music and lyrics, including the Australian classic “Love is in the Air” and the Twisted Sister 1980s rock anthem “We’re Not Gonna Take It.” Director Jules Munro has represented a leading lifestyle and media celebrity in connection with TV productions, ambassadorships, brand protection and assisting with media relations and brand integration business advice; he is an active volunteer with the Arts Law Centre of Australia, providing free legal advice to members of the Centre in relation to the arts and entertainment industries.


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. Among Sparke Helmore’s notable new hires is partner Dalvin Chien, whose area of expertise is information technology.


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. 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. David Kennedy was named managing director of the firm’s Australian business effective August 30, 2021. Kennedy is a qualified mechanical engineer, a patent and trademark attorney and an accomplished professional services leader. Principal Daniel Wilson leads the firm’s trademarks practice from Sydney, working closely with Khajaque Kortian, principal and head of Spruson & Ferguson Lawyers, which handles litigation for the group. Russell Davies heads the firm’s Australian offices; his ex-tensive patent and design experience includes drafting of patent specifications, prosecution of patent and design applications both before the Australian Patent Office and in foreign jurisdictions, handling of opposition and contentious matters, as well as provision of advice with regards to validity and infringement of patent and design rights.


Independent IP specialist Wrays celebrated the 100th anniversary of its founding last year. The firm fashions it-self as a patent and trademark service, law firm and corporate advisory service, providing a holistic, end-to-end IP solution. Principal Richard Baddeley comes highly recommended, and his chemical engineering background gives him a leg up in many disciplines; he has represented a multinational energy company’s patent and trademark interests in Australia for more than 20 years; completed numerous patent drafting, prosecution and opposition assignments in hydrocarbon exploration and production, extractive metallurgy including biohydrometallurgy, nickel, copper, uranium and gold hydrometallurgy; and managed IP assignments in renew-able energy and innovative agricultural methods. The firm has other experts in consumer goods, agribusiness, chemicals, medical technology, life sciences, energy, food and beverage, IT and re-sources.

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