10/04/2007 - 22:00

IP battleground for law firms

10/04/2007 - 22:00

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Law firm Freehills is looking to expand its intellectual property and technology practice in Perth after recruiting Minter Ellison special counsel David Stewart and his two support staff.

IP battleground for law firms

Law firm Freehills is looking to expand its intellectual property and technology practice in Perth after recruiting Minter Ellison special counsel David Stewart and his two support staff.

Freehills believes intellectual property will be a major growth area in WA, helped by the increasing number of corporate headquarters in Perth and the establishment of specialised research institutes in partnership with local universities.

Mr Stewart will work with Freehills’ partner Tony Joyner, who has been managing technology and IP matters as part of his corporate law practice.

Mr Joyner said corporate law firms in Perth have tended to rely on east coast expertise in relation to IP and technology matters, and none of them were fully meeting the needs of the local market.

“We could see that we needed more expertise, broader services and more depth if we were to meet what the market increasingly needed,” Mr Joyner said.

Mr Stewart, who previously worked at Minter Ellison in Perth and Deacons in Hong Kong, is both a fully qualified IP lawyer and a trademark attorney.

He will be moving to Freehills with two trademark administrators.

Minter Ellison managing partner John Poulsen said his firm remained committed to providing clients with technology and IP services, and to that end has recruited an experienced trademark attorney in the UK.

Mr Poulsen said Carrie Bradley would be joining the firm in May and it was also seeking to recruit IP lawyers to bolster the practice.

As an interim measure, Minter Ellison has engaged local firm Paul Mellon & Co to assist with the management of IP and technology matters.

Mr Poulsen said Minter Ellison was using the change of staff as an opportunity to reshape its IP practice, which he said managed 490 trademarks.

“We manage the largest trademark portfolio of any law firm in Perth,” he said.

The practice had traditionally focused on trademark disputes but in future Minter Ellison was aiming to focus on technology commercialisation.

“We plan to rebuild the IT/IP practice around the front-end rather than litigation,” Mr Poulsen said.

Law firms involved in coverage of IP and technology matters broadly fall into two camps.

Firms such as Wray & Associates, Griffith Hack and Lord & Co are specialist patent and trademark attorneys that also provide some commercial legal services.

In contrast, commercial law firms like Freehills and Minter Ellison are seeking to provide more in-depth coverage of IP and technology.

Mr Joyner said major companies such as BHP Billiton, Chevron and Woodside were increasing their investment in research in Perth, through initiatives like the WA Energy Research Alliance and Curtin University’s resources and chemistry precinct.

He said the increasing number of WA companies wanting to export had also led to increased demand for IP advice, for instance from firms wanting to protect trademarks.

STANDING BY BUSINESS. TRUSTED BY BUSINESS.

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