Intellectual property & IT

Overview

Optimisation of intellectual property and technology can be critical to driving the competitive advantage of a business or start-up.

Intellectual property

Our IP group will help your business growth by protecting and leveraging your brand, ideas, inventions and innovations and your creative works.

With an enviable track-record in disputes, clients rely on our breadth and depth of knowledge to solve their most significant challenges across copyright, trade marks, designs and know-how.  In addition, we have specific expertise in the therapeutic goods and general life sciences sector. We provide specialist advice to private and publicly listed companies, government entities and not-for-profit organisations including:

  • due diligence
  • collaborative development projects
  • brand protection
  • product labelling
  • divestment and acquisition of IP
  • advertising and promotions
  • new media and e-commerce
  • licensing of copyright, trade marks, patent protected inventions and know-how
  • protection and disclosure of confidential information
  • advice on copyright, trade marks, designs, circuit layouts and confidential information.

Information technology

On the technology side, our lawyers are experienced, responsive and alive to the actual requirements of clients operating in the technology and communications areas. We have a deep understanding of the challenges involved and how to promote successful outcomes.

Our track record includes complex and business critical work for both customer and vendor side organisations in Australia and around the world. We provide legal and regulatory support for all aspects of technology procurement, outsourcing and other commercial arrangements, including:

  • preparation and negotiation of a wide range of IT contracts including software development, licensing, distribution, maintenance and support agreements, software as a service (SaaS) agreements, cloud services agreements, dispute resolution service agreements and customer contracts
  • structuring, negotiating and implementing technology joint ventures and a variety of partnering and sourcing arrangements
  • advisory and contentious work arising out of technology and sourcing agreements, including mediation, litigation and arbitration work
  • expert advice on privacy issues.

Experience

Intellectual Property

Arafura Limited

Provided advice in relation to its international trade mark portfolio.

Australian Chamber Orchestra

Drafted agreements for adapting a children's book into a dramatic performance and negotiated licence agreement with the NSW Department of Education.

Australian News Channel

Provided advice in relation to its Australian trade mark portfolio.

Beiersdorf Australia

Advice on, and drafting, sponsorship agreements, marketing campaign agreement, talent agreements, experiential marketing agreement, creative services agreement, digital services agreement, and social media services agreement. Advice in relation to advertisements in various media. Working with Beiersdorf on its privacy compliance audit and assisting in the drafting of relevant documents including its privacy policy.

Fitness & Lifestyle Group

Providing IP advice and commencing trade mark opposition proceedings against Lorna Jane in relation to a trade mark application filed, regarding cltohing and other goods; and providing general advice in relation to assignment of trade marks and trade mark licensing agreement.

Gensolve

Advising on the chain of title investigation into the owned and licensed components of its proprietary Gensolve Practice Manager Software, as part of a restructure prior preparing Gensolve for its next stage.

GoDaddy, Inc

Responding to allegations of IP infringement connected with websites hosted on GoDaddy registered domains.

IXUP

Advising on the preparation of its template licence and channel agreements for the commercialisation of its proprietary data analytics software, including negotiations with major corporate customers.

Osborne Clarke Germany

Providing advice on a confidential basis to one of their clients on copyright infringement and other risks associated with creating an interoperable software product to allow maintenance on the products of a third party manufacturer based in Australia.

Sky International AG

Advice in relation to its Australian trade mark portfolio.

Straxcorp

IP licensing and commercialisation arrangements in connection with a global collaboration for the creation of a cloud based software solution to be offered with a medical device to health practitioners and researchers.

IT

Australian Energy Markets Commission

Advising on whole of business IT infrastructure managed service arrangements with Dimension Data and contracts with Quark and GPSL for a business critical structured publishing solution for the management and publication of the National Electricity Rules and other AEMC regulations.

Bauer Media

Advising on enhanced privacy obligations under GDPR and its implications on Australian operations.

Illion Australia

Advising on the agreements governing data flow, data syndication, IP licensing and commercialisation of data–based products.

Global Systems Integrator

Advising on the systems integration aspects of a Commonwealth Government project and a managed services and support contract with a health care insurance provider for the update of its digital claims platform.

GrainCorp

Advised on the implementation and terms governing its CropConnect online grain marketplace.

Hudson

Advising on its joint venture with PredictiveHire relating to the development and commercialisation of models to predict recruitment success.

Microsoft

Advising on the US Clarifying Lawful Overseas Use of Data Act and its interaction with Australian telecommunications, surveillance, interception and law enforcement legislation. Providing telecommunications regulatory advice relating to the establishment of its proposed Azure Transport service in Australia. Advising on privacy, data sovereignty, prudential regulation and procurement compliance aspects of the storage and use of data located in data centres in Australia and overseas. Negotiating and advising on the whole of government volume licensing and IT services arrangements for every Australian State Government and Federal Government.

MultiNet

Advising on its contracts with Enzen for the design, integration, implementation, transformation and transition to a new whole of retail business IT system, in a hybrid implementation across Australian and Indian data centres.

Okta Inc

Advising on its entry into the Australian market, localisation of its standard contracts and negotiations with major Australian customers including HCF, CBUS Super, and Transurban.

Open Colleges

Negotiating SaaS agreement with platform supplier and commercialisation arrangements with partner firms in connection with the development of a cloud training solution offering.

Origin Energy

Advising on its multi–sourced implementation and integration of a new LPG CRM and Billing system provided by Zuora and System Partners.

Prozone

Negotiating a collaboration and cross–licensing agreement for sports statistics with a competitor in the context of anticipated litigation over copyright infringement and breach of confidentiality.

ResMed

Advising on the Australian law aspects of its sleep apnoea and advanced data analytics joint venture with Verily.

Recognition

Christine Ecob [is] a pharmaceuticals pro who complements her stellar trademark practice with notable packaging and labelling expertise.
World Trademark Review 1000, 2018

Related insights Read more insight

Review 2019

With significant regulatory change coming into effect the spotlight is staying firmly on culture, ethics and regulatory compliance. An organisation’s social licence to operate remains a priority...

More
Repeal of IP exception to competition law

If your business is involved in the licensing or assignment of IP rights (such as patents, registered designs or copyrights), you should urgently seek legal advice to ensure that all such...

More
Looming changes – are you ready for the Consumer Data Right?

With the Federal Government announcing its intention to introduce a Consumer Data Right (CDR) from 1 July 2019, how can you be prepared?

More