IP and Technology.

Our IP and Technology team acts as a strategic innovation partner, working with our clients to build, scale, manage and exit IP and technology-based businesses.

We help clients to leverage intellectual property and technology to achieve their commercial goals. Our team prides itself on being agile and responsive, offering integrated and seamless solutions from lawyers who are tech-savvy and understand the intricacies of the sectors in which our clients work.

Our expert IP and technology lawyers work with clients to navigate the challenging international regulatory regime governing data management and use, and can establish effective cross-border arrangements for the ownership and use of IP and technology assets. We also have expertise in complex intellectual property and IT litigation, including leading multijurisdictional disputes.

Experience.

*Some of the above representations were undertaken while at previous firms

Acted for a global advertising and media company in the international commercialisation of industry-leading technology in the media and aviation sectors.

Provided strategic trade mark advice and portfolio management services to an Australian media services business.

Provided advice to an Australian not-for-profit medical research facility in relation to privacy and data protection matters.

Acted in the defence of a Federal Court injunction application for trade mark infringement, including claims in relation to the use of Google AdWords.

Acted for a leading provider of software solutions in the resources sector, including establishing a network of SaaS distributors in over 20 countries and leading a patent infringement enforcement action in the Federal Court.

Provided IP commercialisation advice to a biomedical device company involved in the development of the bionic eye.

Acted on behalf of the manufacturer of a Spanish liqueur in the Australian branch of a multi-jurisdictional trade mark dispute.

Acted for an ASX-listed toy company in pursuing copyright and trade mark infringement claims in the Federal Court, including obtaining “Anton Piller” orders to secure key evidence.

Advised on the establishment of an international motorcycle racing event, including the structuring of cross-border arrangements, and negotiation of sponsorship and media rights.

Provided international trademark protection, portfolio management and enforcement services to one of Australia’s most famous performing artists, including acting on behalf of the client in a high-profile multinational trademark dispute.

Acted for one of Australia’s leading providers of telecommunications cybersecurity solutions in the negotiation of SaaS arrangements with government agencies and national telecommunications providers.

Advised the provider of a cloud-based mobile workforce management software platform on the negotiation of SaaS and software reseller agreements.

Intellectual Property

Our IP team has extensive experience across all areas of intellectual property including trade marks, copyright, designs and patents, and works with clients at all stages of the IP life cycle from the establishment and initial protection of IP assets through to exit via IPO or sale.

We assist clients to:

Identify, protect and manage key IP assets, building and implementing an IP protection strategy, which aligns with the commercial goals of the business;
Establish legal structures, which manage risk, support commercialisation and facilitate investment;
Develop robust agreements for the commercialisation of IP assets, including via licensing, joint venture, technology transfer and distribution arrangements;
Acquire, sell or invest in IP assets and IP-based companies, including due diligence reviews and audits, negotiation of transaction documents, and structuring the related investment and financing arrangements;
Resolve disputes relating to IP rights, including early stage claim analysis and investigation and managing dispute resolution processes.

Technology

We offer fully-integrated advice and representation on technology matters ranging from advising on technology development, licensing, deployment and management through to mergers and acquisitions, as well as venture capital and investments in technology companies and technologies. We also advise on the structuring of IP and technology assets, holding vehicles and commercialisation arrangements, and are well placed to provide counsel in relation to employment, regulation, competition, telecommunications, data and cyber security, privacy and outsourcing matters.

We assist clients to:

Establish legal structures that maximise the potential for exploitation of innovation, including acquisition and investment in technology.
Identify and manage risks in the development, deployment, use, sale or procurement of technology.
Develop effective agreements for the procurement and supply of different technologies, including via cloud, SaaS, shared platform and multi-tenancy solutions, partnering, services and systems integration projects and associated contractual arrangements.
Manage risks in the implementation and on-boarding of technology and telecommunications solutions and security of personally identifiable information and data breach response.
Navigate legal and regulatory environments and frameworks relating to technology, including telecommunications, data and cyber security, privacy, financial services, electricity and renewables and other industry-specific regulations.
Proactively identify, manage and resolve technology related disputes.