Intellectual Property Conference

Session ID: 183NZA01
Date: Tuesday, 13 March 2018
Time: 09:00am - 05:15pm
Venue: Stamford Plaza Auckland, Ground Floor, 22 - 26 Albert St, Auckland

Face to face


Standard $715.00

Also available as

WEB183NZA01 Live Web Seminar


Session Content

Date: Tuesday 13 March 2018
Time: 9.00am to 5.15pm
Venue: Stamford Auckland, 22 - 26 Albert St Auckland

Attend and earn 7 CPD hours

Some of the pre-eminent practitioners in New Zealand will cover the gamut in IP law. Commercial lawyers, in-house counsel, IP specialists, and patent and trade mark attorneys alike will gain practical insights and the latest updates in patents, trademarks and the commercialisation of IP.

Session 1: Trade Marks, Patents and Ethics

A practitioner registered as a patent or a trade mark attorney must complete at least 10 hours of CPE annually, and those registered as both must complete 15 hours per year. One of those hours must cover ethics or professional responsibility. It is all here for you.

Chair: John Glengarry, Partner, Buddle Findlay; Leading Intellectual Property Lawyer, Doyle's Guide 2016

Examining Cases and Developments in New Zealand Trade Mark Law
Update and analysis of recent developments in trade mark law and key cases in New Zealand that your clients will expect you to know.

  • New Zealand High Court and Court of Appeal decisions
  • Key IPONZ decisions
  • Recent developments in IPONZ Hearings Office case management

Presented by Sheana Wheeldon, Barrister, Quay Chambers; Recommended IP & TMT Barrister, Doyle's Guide 2016

Trade Mark and Technology Update

  • Accessibility of international databases
  • Image searching
  • Different international IP offices and their current approaches
  • Online filing systems
  • Pre-approved goods and related software

Prepared by Alan Potter, Owner / Principal, Potter IP; Leading Intellectual Property Lawyer, Doyle's Guide 2016

Patent Law Case Update and Other Recent Developments
Get caught up on recent and significant patent law cases that will have an impact on your clients and your practice.

Presented by Jason Wach, Senior Associate, James & Wells

Ethics or Professional Conduct CPE
Ethics for Patent and Trade Mark Attorneys

  • The new Code of Conduct regime in practice
  • Unsatisfactory professional conduct
  • Understanding your duty to your client
  • Recognising a conflict of interest and knowing how to deal with it
  • What are your rights, privileges and responsibilities when dealing with clients?
  • What can happen if a complaint is made?
  • Practical examples, takeaways and guidance

Presented by Kate McHaffie, Partner, AJ Park; Leading Intellectual Property Lawyer, Doyle's Guide 2016

Learning Objectives:

  • Analyse the latest trade mark cases and technology trends
  • Examine key patent law cases and developments in the past year
  • Consider critical ethical issues for patent and trade mark attorneys

Session 2: Commercialising IP: Licences, Contracts, Sales and Enforcement

So you or your client has some IP. That's great and all, but it doesn't mean a thing if you can't capitalise on the opportunities it provides. IP is only as valuable as its commercial prospects, so you better know how to make it work for you or your client. From licensing to contracting to enforcement tactics that make legal AND business sense, arm yourself with the strategies you need to give true value to IP.

Chair: Penny Catley, Partner, Baldwins Intellectual Property; Recommended Intellectual Property Lawyer, Doyle's Guide 2016

IP Licensing and Commercial Arrangements: Legal Considerations and Business Decisions

  • Identifying your IP and determining if it can be licensed in the first place
  • Licensee due diligence
  • Considerations for negotiating royalty rates
  • Assignment vs novation and novation by prior consent
  • Importance of audit rights
  • Survival of rights and obligations following expiry of a license

Presented by Sean Brogan, Head of Commercial, Baldwins Intellectual Property

Managing IP in the Contracting Process

  • Securing IP ownership in a contracting situation
  • Ownership versus licensing
  • The potentially tangled web of IP joint ownership
  • How to deal with background IP
  • Drafting and negotiating IP ownership clauses: avoiding common mistakes
  • Managing risk and liability: IP warranties and indemnities

Presented by Scott Yorke, Partner, Bowie Yorke

Preparing Intellectual Property for Sale

  • The importance and complexity of pre-transaction IP due diligence
  • Pre-sale assignments to remedy ownership defects
  • Selling unregistered IP
  • Common IP issues relating to the sale of a businesses
  • Conducting IP audits

Presented by Richard Watts, Partner and Co-Head of IP Group, Simpson Grierson; Leading Intellectual Property Lawyer, Doyle's Guide 2016

Infringement, Enforcement and Brand Protection: Finding the Best Legal and Business Approach

  • Taking stock: assessing a case of IP infringement and developing a plan
  • Quick and cheap: initial strategies for dealing with IP infringement without spending too much money or time
    • Cease and desist letters: Just a hollow threat?
  • Getting serious: escalating your enforcement efforts
  • This means war: when does it make legal and business sense to go all out?
    • The court process: timing, cost, and when it might be worth it
  • Damages and consequences: What can you realistically get out of all this?

Presented by Rachel Colley, Partner, CreateIP

Learning Objectives:

  • Hone your skills in the IP licensing and IP contracting process
  • Master how to prepare IP for sale to avoid any mistakes
  • Consider how to effectively and efficiently enforce IP rights

Chair: John Glengarry

John Glengarry specialises in intellectual property law and has extensive experience in New Zealand and overseas. John's practice covers the development, clearance, establishment, management, exploitation and enforcement of intellectual property rights. He is experienced in patent, registered trade mark, fair trading, passing off and copyright advisory and dispute work, including litigation. John looks after the worldwide trade mark portfolios of a range of New Zealand businesses and the New Zealand trade mark portfolios of a number of overseas based businesses. John's clients come from the public sector, food and other FMCG, building, banking, finance, education, tourism, pharmacy, pharmaceuticals, medical devices, information and communications technology, entertainment, the wine industry and other business areas. John is registered as a Patent Attorney in New Zealand and Australia. In addition to his leadership roles with NZLS, INTA and APAA, John is a Fellow of the New Zealand Institute of Patent Attorneys (FNZIPA) and a member of Intellectual Property Society of Australia and New Zealand (IPSANZ). John leads our national trade marks group and is a co-leader of our intellectual property team.

Sheana Wheeldon

Sheana Wheeldon is a dual qualified lawyer and patent attorney, and one of New Zealand's leading Intellectual Property practitioners. She has over 25 years' experience covering all areas of IP law, and has practised as a barrister since 2015, after ten years as a partner and head of the IP practice at national firm Kensington Swan. Her special interest is resolution of contentious IP matters, particularly trade mark proceedings at IPONZ and other disputes in the trade mark, patent and copyright fields. With a focus on commerciality, Sheana is often successful in resolving disputes cost-effectively and without the need for drawn out litigation. Sheana has a strong interest in Alternative Dispute Resolution. She is a Resolution Institute accredited mediator and a member of the Domain Name Commission's Panel of Experts who decide disputes concerning .nz domain names. She is a member of the New Zealand Law Society IP Committee, Vice-President of IPSANZ and a member of the New Zealand IPSANZ Committee. Sheana is named as a leading New Zealand IP lawyer in numerous publications including Who's Who Legal: Patents 2017, Expert Guides - Women in Business Law 2017, Asia IP Experts (Trade Marks, Patents, Enforcement, Litigation, Pharma and biotech) 2016, World Trademark Review 2016, Euromoney Trade Mark Expert Guide 2016, Asialaw Leading Lawyers 2016.

Alan Potter

Alan Potter is a founding principal at Potter IP. Alan has practiced in intellectual property for over 20 years. He was initially a partner in a top tier commercial law firm, Simpson Grierson, and most recently was the Managing Partner of New Zealand's largest specialist intellectual property firm, AJ Park. Born in Canada, Alan has degrees in both law and commerce, and is a qualified patent attorney. With a background in litigation and commercial IP law, Alan now specialises in helping New Zealand businesses to make IP decisions that are clearly aligned with the business strategy.

Jason Wach

Jason Wach is an experienced intellectual property litigator. As a member of the Auckland Litigation Team, his practice includes patent infringement, trade mark opposition, validity and infringement, copyright infringement, copyright licensing, counterfeiting, trade secrets and restraints of trade, patent opposition, misleading and deceptive conduct, domain name disputes, mediation and general commercial disputes. Jason is passionate about pursuing his clients' interests and is comfortable with technical subject matter. He has appeared as counsel in the trade marks and patent offices, District Court, High Court, and Court of Appeal. Jason also advises on legislative compliance, and general commercial matters, including branding, intellectual property licensing, and manufacturing, supply and distribution agreements. He has extensive experience in securing

Kate McHaffie

Kate McHaffie joined AJ Park in 1998 and heads the Wellington dispute resolution and litigation team, handling contentious matters involving all kinds of intellectual property. She has litigation experience in the areas of patents, trade marks, copyright and registered designs. In addition to her litigation expertise, Kate is part of AJ Park's advertising team, which advises on legal advertising code, and industry regulatory requirements for marketing in New Zealand. The technical nature of her work appeals to Kate's scientific side, and the variety of clients and subject matter she encounters keeps her intellectually challenged. Committed, practical and inquisitive, Kate thrives in an environment focused on innovation. Kate's particular area of interest is pharmaceutical inventions, and she has been involved in patent cases for international corporations such as GlaxoSmithKline, AstraZeneca, and Sanofi-Aventis. She has also acted for clients in the manufacturing and telecommunications industries. Kate works hard to understand each client's business and their goal so she can advise on the best way to achieve that, whether by litigation or an alternative dispute resolution mechanism. Kate is passionate about supporting and encouraging women in the patent attorney profession to progress and succeed. Underpinning everything she does is the desire to truly make a difference.

Penny Catley

Penny Catley is a commercial intellectual property lawyer in Australia and New Zealand. She has practiced for more than 25 years and is a registered patent attorney in both countries. Penny has worked for clients in a number of industries including dairy, food and beverage, wine, education, fashion, energy and FMCG among others. She currently acts for successful local companies Z Energy, Westland Milk Products and Merino New Zealand as well as international companies Harley-Davidson, Novartis, Australian fashion designer Collette Dinnigan and CIVC, a collective representing the French Champagne houses. Penny is President of the New Zealand Institute of Patent Attorneys.

Sean Brogan

Sean Brogan advises clients on a broad range of commercial, corporate, IP and IT law matters. Sean helps private and public sector bodies structure their business and operations in order to protect, commercialise and otherwise best use their assets. He has substantial experience in advising on and drafting all manner of commercial documentation. Sean has particular expertise in advising on IT and IP contracts, including large scale outsourcing and service agreements. Sean is based in our Auckland office and regularly travels to Hamilton and Christchurch to work with clients. Before joining Baldwins, Sean worked in the commercial and corporate department of a well-known boutique firm in Sydney. He also spent several years in one of the UK's leading technology and outsourcing law firms. Sean enjoys the variety of businesses he works with, from new innovative technologies to more traditional service delivery models, and the unique challenges each one offers.

Scott Yorke

Scott Yorke is one of the founding partners of Bowie Yorke, a boutique law practice that helps clients to develop, commercialise and protect their technologies and innovations. He is an experienced commercial and corporate lawyer with expertise in technology law, international licensing, commercial contracts, corporate structuring and capital raising. Early in his career, Scott worked as a corporate commercial lawyer in Auckland before spending three years as in-house lawyer for a large UK company. Returning home, Scott worked for eight years at A J Park where he helped to establish the firm's commercial team, before leaving to co-found Bowie Yorke in 2012. Scott is recognised as an intellectual property and technology commercialisation expert. He has written articles on innovation and intellectual property law for local and international publications. He has also delivered seminars to a number of professional organisations, including the Licensing Executives Society Australia and New Zealand, the Intellectual Property Society of Australia and New Zealand, and the Auckland District Law Society. He recently appeared in the High Court as an expert witness on intellectual property licensing and royalty rates.

Richard Watts

Richard Watts co-heads the firm's intellectual property group, advising a number of the world's leading companies in the FMCG, pharmaceutical, IT, and sports industries. His practice covers both non-contentious and contentious IP. Richard works with a number of leading pharmaceutical companies and research institutions, particularly in international licensing and enforcement. This work includes development and implementation of patent and IP commercialisation strategies for leading local and international businesses. He has been involved in a number of New Zealand's most significant patent disputes, in the pharmaceutical and construction industries. Acting for a number of leading brands in the FMCG area, Richard has co-ordinated trade mark protection, enforcement and border protection measures for numerous household names, both in New Zealand and abroad. Richard is also highly regarded in copyright law, particularly in relation to IT and new technologies, having advised a number of the world's favorite brands in relation to the launch of their new electronic and web products in New Zealand. Richard appears frequently in IP disputes, having appeared in leading Supreme Court and Court of Appeal IP cases, as well as in the High Court, Copyright Tribunal and Intellectual Property Office.

Rachel Colley

Having trained as a barrister in England, back in 1999 Rachel won a bet with a friend and moved to New Zealand, joining the litigation team of a top commercial law firm. She brings over 15 years of experience in brand development, management and risk strategies, anti-counterfeiting and border protection measures, compliance, commercialization, and enforcement, having worked with various sectors from publishing, fashion and entertainment to automotive, pharmaceutical and FMCG industries. Rachel is a member of the International Trademarks Association (INTA), is a past chair and sits on the New Zealand committee for, the Intellectual Property Society of Australia and New Zealand (IPSANZ) and is also a member of the Honourable Society of the Inner Temple.

Venue Details

Stamford Plaza Auckland

Ground Floor, 22 - 26 Albert St
Auckland 1010

Ph: 64 9 309 888


The Stamford Plaza Auckland is a short 5 minute walk from the main

train/bus station Britomart. There is onsite valet parking, charged at a rate

of NZ$45 per car. Alternatively there are numerous public car parks in the

area including Challenge House, 1/3 Wolfe Street.

Parking is not included in the registrartion fee and price is subject to


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