Intellectual Property / Information Technology

The Australasian member firms of ALFA International offer clients intellectual property (IP) and information technology (IT) legal advice and assistance globally, based on both technical expertise and hands-on experience.

IP assets are a large and invaluable component of the total assets of many businesses. IP includes traditional IP such as trademarks, patents, registered designs, copyright, circuit layouts and plant breeder rights in addition to the broader area of domain names, business names, confidential information, trade secrets and know-how.  Businesses can gain a significant competitive advantage on the one hand and limit unfair competition on the other by effectively identifying, capturing, protecting and exploiting their IP assets.

IT, including social media, has transformed the way businesses operate.  Even small businesses can trade in a global environment. While IT brings great benefits, it also demands users give attention to a whole range of legal and commercial issues.  The IT industry is diverse and under constant development and change.

Areas of expertise include:

  • IP audits to identify, protect and maximise IP asset value,
  • advising innovators on corporate and business structures,
  • advising investors in IP ventures,
  • advising on the protection and defence of IP assets,
  • trade mark and domain name registration and protection,
  • advice with respect to infringement, misleading and deceptive conduct and passing off matters,
  • IP due diligence,
  • acquisition and divestment of IP,
  • IP and IT commercialisation,
  • e-commerce contracts and jurisdiction issues,
  • computer and technology licensing,
  • software development and support agreements,
  • e-commerce terms of trade,
  • telecommunications services arrangements,
  • privacy law including online data security, and
  • disputes and cybersquatting.

Clients

The Australasian member firms provide legal advice to large corporations and publicly listed companies, through to small entrepreneurial companies and businesses from a diverse range of industry sectors including software and systems, telecommunications, defence, bio-technology, professional services, banking and finance, property and government.

Some of our matters include:

  • Acting for a US-based company in negotiating the assignment of trade marks to that company following the improper registration of those trade marks by a licensee company in New Zealand contrary to the applicable licence agreement.
  • Acting for a private Australian company that holds patents around the world for an innovative process by which wine is stored in a can, including advice in relation to licensing the IP to third parties wishing to manufacture and distribute the products in other countries.
  • Acting for a national transport company in Federal Court proceedings involving allegations of breach of copyright and breach of confidence involving indirect access to drawings of a truck trailer.
  • Negotiating software development and installation contracts between a developer and a national sporting body, a top four bank, an ASX-listed recruitment company and a leading supermarket chain.
  • Advising a prominent media and entertainment company on the management and implementation of brand protection programs (including trade marks) and negotiations for commercial agreements relating to the exploitation, licensing and distribution of their products and intellectual property. All matters for this client are carried out quickly so as to ensure that its intellectual property rights are not undermined by substantial sales of unlicensed or pirated goods.
  • Assisting a multichannel retailer client to secure a working agreement with a digital marketing firm for their "Interact" modules, email messaging and related digital marketing products and services.  We were responsible for negotiating and documenting all aspects of the master subscription agreement, professional services agreement and purchase orders. The work was challenging, primarily because the initial contract documents were extremely vendor-favourable.  We successfully renegotiated the contract documents to ensure better balance between the parties and appropriate resolution of the legal issues we identified (regarding warranties, liability, service delivery, and other key vendor obligations) and the client's specific commercial concerns.
  • Working with the in-house team of a national retail group on the management of its portfolio (domestic and international) of over 300 trademarks, including the conduct of availability searches, feasibility studies for new brands, prosecution of applications, letters of demand to infringers, responding to allegations of infringement, oppositions and negotiation of coexistence agreements.
  • Advising a client on the risk associated with the parallel importation of various products (equipment, wine, books, and coffee) into Australia.
  • Advising the Australian subsidiary of a major overseas based defence contractor in relation to complex intellectual property ownership and protection issues concerning the company’s involvement in a very large value defence contract.  Advice included issues regarding ownership by the Commonwealth, the head contractor and subcontractors of background IP and project-created IP; rights and obligations to protect that IP, including by registration methods; and the respective rights of parties to use the IP and the extent of those rights, having regard to contract terms and the client’s ability to source third party government-owned IP for the purposes of the project.

 

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