Intellectual Property

Our Intellectual Property team specialises in all aspects of IP protection, helping clients to identify, acquire, exploit, manage and enforce IP assets.

Our clients include major manufacturers, technology owners and developers, listed life sciences and biotechnology companies, communications and media organisations, software developers and resellers, publishers, internet service providers, major retailers, franchise and distribution networks, advertising agencies, marketing companies, universities, and government departments.

We act for leading Australian and global brands to protect and commercialise intellectual property assets and, where necessary, enforce their rights within Australia and internationally.

Commercialisation and licensing

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We provide clients with advice regarding commercialisation of products, designs, inventions and other intellectual property. We also advise on brand protection strategies, IP assignments and licensing.

Confidential information

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We act for clients in relation to preparing confidentiality agreements / non-disclosure agreements and in disputes concerning breaches of confidentiality.

Copyright

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We advise clients on all aspects of copyright, such as licensing, agreements and disputes concerning copyright infringement, including obtaining Anton Piller orders. We have acted for clients in court proceedings brought for copyright infringement in relation to house plans, source code and other types of copyright. We provide advice in relation to copyright arrangements, clearances, subsistence, royalties, licensing and agreements.

Designs

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We have been involved in some of the leading Australian industrial design cases and regularly advise clients on issues including registrability, infringement, and licensing of registered designs.

IP asset structuring

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We advise clients on how best to structure their corporate arrangements to protect their IP and other assets. We help prepare relevant documentation and agreements to make these arrangements effective.

Patent litigation

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We regularly act for clients in patent infringement and revocation disputes and litigation.

Trade marks

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We have a substantial trade mark practice and provide a complete range of trade mark services to our clients, including trade mark availability and registrability searches, filing of Australian, New Zealand and international trade mark applications, prosecution of Australian and international trade mark applications, trade mark oppositions and removal actions, trade mark watching services, trade mark infringement action and dispute resolution in respect of trade mark matters.

What others say

"Tier 3, Intellectual Property"

Legal 500 2024, 2023, 2022

"First Tier, Intellectual Property, South Australia, Queensland"

Doyles Guide, 2022

Experience

Intellectual Property

Qualcomm Inc

Acting for Qualcomm Inc and Qualcomm Australia Pty Ltd advising on protection of Qualcomm’s confidential commercial information including source codes in the Apple and Samsung patent and anti-trust Federal Court proceedings.

Intellectual Property

SmartSat

Advising the SmartSat CRC, a consortium of universities and other research organisations, on its IP management strategies.

Intellectual Property

InterGrain

Acting for InterGrain, a wheat, barley and oat breeder, in relation to multiple strategic alliances and technology commercialisation, including most recently in relation to the acquisition of a crop breeding program and commercialisation licence.

Intellectual Property

Queensland University of Technology

Acting for Queensland University of Technology in relation to rationalisation of its complex intellectual property ownership and commercialisation agreements with respect to gene edited bananas including drafting and negotiation of a Master Commercialisation Agreement with Australian Banana Research Pty Ltd, and subsequently acting in relation to drafting and negotiation of new research agreements.

Intellectual Property

Codafication

Advising Codafication on deployment of Codafication’s proprietary Virtual Assist, Crunchwork, and Unity Cloud business automation platforms-as-a-service, particularly with Suncorp, QBE, IAG, and other significant insurers and brokers.

Intellectual Property

Reckitt

Acting for multinational healthcare and consumer goods company Reckitt alleging a competitor had infringed its trade mark on a popular dishwashing capsule.

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Key people

Built around principle of quality and value.

Andrew Chalet

Partner

Melbourne

Perth

Ben Coogan

Partner

Brisbane

Bronwyn Furse

Partner

Adelaide

David Gaszner

Partner

Adelaide

Jodi Walkom

Partner

Sydney

Josh Simons

Partner

Adelaide

Katrina Chambers

Partner

Brisbane

Marlia Saunders

Partner

Sydney

Peter Le Guay

Partner

Sydney

Sylvia Fernandez

Partner

Sydney

Tony Conaghan

Partner

Brisbane

Matthew Prescott

Partner

Adelaide

Kerry Awerbuch

Partner

Melbourne

David Ohri

Special Counsel

Melbourne

Dianne Beer

Special Counsel

Sydney

Dr Peytee Grusche

Special Counsel

Perth

Madeleine McMaster

Special Counsel

Melbourne

Related Insights

What's new?

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Intellectual Property

Practical strategies for obtaining expert evidence in intellectual property proceedings

As intellectual property law develops through changes to legislation and continued litigation through the courts, and changes to Court Rules and Practice Notes occur, the ways in which experts are instructed and evidence is obtained from them has also needed to change and evolve.

9 Dec

Intellectual Property

New standalone legislation for protection of Indigenous cultural and intellectual property

The Australian Government is currently undertaking a scoping study to determine how new stand-alone legislation could help Aboriginal and Torres Strait Islander people to protect and commercialise Indigenous Cultural and Intellectual Property.

3 May

Intellectual Property

Franchisors beware: Major Australian franchisor fined to the tune of $1.5 million

A record fine for contempt of court in a proceeding brought by the competition watchdog has been ordered against a franchisor by the Federal Court of Australia.

8 Apr

Intellectual Property

Call It What You Want: Branding lessons from Taylor Swift

Many people are becoming tired of hearing about Taylor Swift after the Australian leg of her Eras Tour swept the country recently.

7 Mar

Intellectual Property

Can 'indifference' excuse liability for copyright infringement?

A recent decision by the High Court of Australia has affirmed that companies that are 'indifferent' to copyright infringement can be held liable for authorising the infringement, but that specific evidence is needed to prove this.

5 Feb

Intellectual Property

Reversing the burden of proof in patent infringement proceedings

The recent case of Calix Limited v Grenof Pty Ltd & Aquadex Pty Ltd (Calix v Grenof) marks the first time the Federal Court of Australia has analysed section 121A of the Patents Act 1990 (Cth) (Act), a provision that reverses the burden of proof in patent infringement proceedings under specific circumstances.

29 May

Intellectual Property

Patent infringement defence reaches boiling point at trial

The importance of selecting appropriately skilled expert witnesses for patent infringement cases was highlighted in a recent Federal Court of Australia decision.

2 May

Intellectual Property

NZ honey producers withdraw from battle over “Manuka Honey” trade mark: lessons from the dispute

The recent end to the Manuka Honey trade mark dispute has demonstrated the importance of distinctiveness when seeking to register certification trade marks in Australia and overseas.

1 Feb

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About us

Thomson Geer is one of Australia's largest independent corporate law firms. We are trusted by companies, governments and institutions to act for their commercial and legal interests.

Thomson Geer acknowledges the Traditional Custodians of Country throughout Australia and their connections to land, sea and community. We pay our respect to their Elders past and present and extend that respect to all Aboriginal and Torres Strait Islander peoples today.