Profile

World Trademark Review WTR 1000

• Top Trademark Prosecution and Strategy Individual in Australia, 2020-2022 (Silver); 2019 (Bronze); 2018 (listed); and 2017 (Leading)
• Top Trademark Transactions Individual in Australia, 2020-2022 (Recommended) 
• Top Trademark Prosecution and Strategy Firm in Australia, 2020-2022 (Bronze)
• Top Trademark Prosecution and Strategy Firm in Australia, 2017-2019 (Recommended)

Lawyers Weekly Partner of the Year

•  Finalist, 2017 and 2018

• Acting for Cryptsoft Pty Ltd in a global inbound OEM software and intellectual property licence to one of the world’s top five banks (based on total market capitalisation). The matter is culmination of over 12 months of negotiations with the New York based office of that licensee, and is one of the largest inbound OEM licensing transactions entered into by Cryptsoft this year.
• Acting for Cryptsoft Pty Ltd in a game changing IP licensing transaction (copyright and trade marks) in respect of Intel Software Guard Extensions (Intel SGX). The matter was handled by Intel’s head corporate office in Santa Clara.
• We advised LexisNexis on preparing and negotiating a multi-agency Standing Offer Arrangement for licencing LexisNexis Australia’s electronic information services and research tools to customers in the Queensland Government. This included: preparing a suite of contract documents including the head agreement and customer contract terms; and providing guidance in relation to effectively embodying the client’s licensing and pricing model to government customers within those contact terms; and advising on considerations such as liability, indemnities, warranties and intellectual property protection.
• We also assisted LexisNexis to incorporate cloud services into its standard contract terms for delivering IT services to professional services customers. This included providing guidance on, and strategies for overcoming, specific risks and issues relevant in providing cloud services, and drafting appropriate cloud-specific terms into its customer terms.
• Tendering and procurement assistance for the City of Wanneroo’s acquisition of a new Finance System, including preparing a bespoke contract, and advising on legal strategies to minimise the risk of vendor lock-in and maximise knowledge transfer to the City.
• Advising Algomi on the privacy compliance issues under Australian law arising out of its bond trading analytics platforms, Synchronicity® and Honeycomb® and the cross-jurisdictional issues in respect of UK data protection laws. Also considering whether the licensing of the on-premise and SaaS-based software applications might also constitute regulated activity under the financial services provisions in Chapter 7 of the Corporations Act 2001 (Cth).
• Managing all of Nvidia Corporation’s, the world’s largest designer of graphics processing units, trade mark work in Australia, including the trade marks for its market leading GeForce and Tegra product lines.
• Acting for Siemens Industry Software in Australia, enforcing its anti piracy and counterfeiting program in Australia.