Services

Intellectual Property

Advising new and existing businesses on all aspects of the protection, commercialisation, exploitation and management of intellectual property.

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We are the market leader for Intellectual Property (IP).

We are one of the only Australian law firms to boast both IP lawyers and Patent attorneys. The advantage that brings to clients is that we can fully service the most complex matters using a multidisciplinary approach. In addition, being a full-service commercial law firm, we are able to draw upon the skills and experience of other experts relevant to your IP matter, including tax, M&A and structuring specialists

When it comes to IP, we provide a full spectrum of expertise spanning trade marks, patents, designs copyright and plant breeder’s rights.

With significant domestic and international experience, HopgoodGanim Lawyers' IP team advises start-ups, large enterprises and government bodies on all aspects of the protection, commercialisation, exploitation and management of IP.

Several of our IP lawyers and patent attorneys also have scientific or technical qualifications, including information technology, engineering and chemistry. Together, we have the capability to:

  • prepare and draft patent, design and trade mark applications and to advise on patent, design and trade mark prosecution, domestically and internationally;
  • assess the validity of intellectual property rights, including advising on patent novelty and inventiveness;
  • commercialise intellectual property, including conducting IP due diligence, licensing transactions and the most complex public/private collaboration and research agreements; and
  • enforce your intellectual property rights or to vigorously defend claims brought against your business.

No matter what the challenge, our award winning IP team is here to work closely with you and guide you through the process. HopgoodGanim Lawyers was recommended in Doyle’s Guide to Queensland’s Leading Intellectual Property and Telecommunications, Media and Technology Law Firms, 2016, 2015 and 2012. Hayden Delaney was also personally recommended as a Leading lawyer in each of these categories. HopgoodGanim Lawyers and Hayden Delaney are also recommended as leaders in Prosecution and Strategy category for trade marks in the WTR 1000, 2016 and 2017 editions.

IP services

IP protection, advisory and management 

  • Trade mark, patent and design registration
  • IP portfolio management
  • Trade mark, patent and design clearance searching and registrability advice
  • Freedom to operate searches and advice 
  • IP infringement and validity advisory services.

IP commercialisation - We can help you to identify key IP assets in your business in order to leverage those assets for commercial purposes 

  • IP due diligence
  • Drafting and negotiating the most complex licensing and technology-transfer transactions
  • Research commercialisation
  • R&D service agreements
  • Technology distribution (OEM and consumer based distribution licensing arrangements)

IP enforcement and defence 

  • Acting in IP disputes including cease and desist letters
  • Patent and trade mark oppositions in Australia and New Zealand
  • Patent, trade mark, design and copyright litigation in the Federal Court

Trade mark services

  • Trade mark clearance searches on a world-wide basis
  • Trade mark registration and prosecution in Australia, New Zealand and internationally
  • Trade mark monitoring and watching services
  • Trade mark oppositions
  • Trade mark licensing arrangements (including franchising)
  • Trade mark litigation

Patent services

  • Patentability advice, including novelty searches and opinions on patentable subject matter and inventiveness
  • Drafting patent specifications and prosecution patent applications in Australia and New Zealand, as well as PCT applications
  • Patent due diligence in commercial transactions, include patent title and the breadth of the patent claims
  • Patent infringement and validity advice
  • Patent oppositions
  • Patent litigation

Copyright services

  • Advice on subsistence and ownership of copyright works and other subject matter
  • Drafting and negotiating copyright transfers and licenses
  • Copyright infringement advice
  • Copyright litigation
  • Acting for Nvidia Corporation (the world’s largest designer of graphics processing units) in the management and prosecution of its Australian IP portfolio, including the trade marks for its market leading GeForce and Tegra product lines.
  • Acting for Chrysos Corporation in the acquisition and licence of IP assets from CSIRO, including a suite of trade marks and patents. Chrysos was obtaining a technology transfer from CSRIO for the purpose of it commercialising the matter on a worldwide basis. HopgoodGanim acted for Chrysos on the transaction including negotiating a complex Technology Licence and Assignment Agreement, Share Subscription Agreement, Shareholders Agreement and a Scientific Services Agreement.
  • Acting for Forbes LLC’s trade mark prosecution in Australia across a broad set of goods and services.  HopgoodGanim was able to strategically file a set of divisional applications and supporting evidence in order to overcome several complex hurdles in examination, including prior registrations of third parties, and surnomial objections (given that Forbes is a common surname in Australia) and geographical indicator objections (given that Forbes is also a town in Australia).
  • Acting for the Jim Henson Company Inc, in connection with a copyright advisory and licensing matter. The matter pertained to a new series to be distributed via Netflix which was based on various underlying copyright works and character rights relating to a famous Jim Henson Company series.
  • Advising CQUniversity on a research alliance agreement with University of Queensland, the Queensland University of Technology and Curtin University under the new Collaborative Research Networks program run by the Australian Government’s Department of Innovation, Industry, Science and Research - the first of its kind in Australia. 
  • Advising Indigo Telecom on its national television and viral internet advertising campaign “No More Black Spots”. The matter involved providing advice on compliance with Australian Consumer Law and the Telecommunications Consumer Protection Code. 
  • Advising Village Roadshow Theme Parks and Village Roadshow on a suite of international licensing agreements with MTV Networks in relation to brand and trademark rights related to MTV’s Nickelodeon characters. 
  • Advising Michael Hill Jeweller on a suite of changes to its national and international advertising practices in light of the changes brought in by the Australian Consumer Law. 
  • Advising Brisbane Racing Club on intellectual property and competition issues arising from negotiations with Queensland Racing and Sky Channel for a Media Rights and Broadcasting Agreement. 
  • Managing and advising on the intellectual property aspects of a multi- billion dollar potential acquisition of a large listed Australian coal mining company. 
  • Successfully acting for Digga Australia in the landmark Federal Court appeal against the decision of Greenwood J in Norm Engineering Pty Ltd v Digga Australia Pty Ltd [2007] FCA 761. The decision is one of only two significant decisions in this area of law in the 2007 - 2009 years.
  • Acting for Microsoft Corporation in several dealership test purchase programs in Queensland, South Australia and Western Australia. The matters involved acting against small to medium computer dealerships for providing infringing copies of Microsoft programs to end users. 
  • Acting for Cook Medical on a multitude of technology commercialisation agreements, including licence agreements, prototyping agreements, manufacturing agreements, along with general intellectual property advice. 
  • Acting for Gazal Corporation regarding a trade mark and copyright infringement proceedings brought in the Federal Magistrates Court by Hells Angels Motorcycle Corporation (Australia), arising out of various advertising and clothing artwork used by Gazal in relation to its former brand, Mambo. 
  • Advising on music licensing arrangements for Michael Hill Jeweller, including the coordination and management of licences to publically perform and reproduce music tracks as background music in stores in Australia, New Zealand, the United States and Canada. 
  • Advising One Harvest on plant breeders’ rights and their enforceability against various parties involved in mango farming operations in Queensland and the Northern Territory, in the wake of the Timbercorp collapse.

Patents

  • Preparing and filing provisional and complete patent applications in various technologies, including computer-implemented technology, industrial processes and consumer goods, such as for UCBT Pty Ltd, Sniip (Australia) Pty Ltd and CDP Innovations Pty Ltd
  • Filing Australian and New Zealand national phase patent applications on behalf of foreign applicants, including for Spartan Chemical Company, Inc. and Raptor Anchoring Limited
  • Prosecution of patent applications in Australia and overseas, as well as international (PCT) Patent applications, including on behalf of CDP Innovations Pty Ltd and Pendave Pty Ltd
  • Acting for BCP Media on patent infringement proceedings in the Federal Court on issues pertaining to patent infringement and validity.

Facts about patents

 

 

Facts about registered designs

 

 

Is my invention patentable?

 

 

All you need to know about patent infringements