Session 2: Commercialising IP: Licences, Contracts, Sales and Enforcement (Live Stream)

Session ID: WEB183NZA01B
Date: Tuesday, 13 March 2018
Time: 02:00pm - 05:15pm
Venue: This live web seminar is being streamed from AUCKLAND

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Session Content

Date: Tuesday 13 March 2018
Time: 2.00pm to 5.15pm
Live Stream

Attend and earn 3 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.

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: 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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