Intellectual Property Licensing and Commercialisation: A Practical Workshop

Session ID: 186Q02
Date: Wednesday, 20 June 2018
Time: 02:00pm - 05:15pm
Venue: Mercure Hotel Brisbane, Mezzanine Floor, 85-87 North Quay, Brisbane

Face to face

Legal Knowledge: 3

State: QLD CPD:3
Standard Price $480.00
Early Bird Discount $395.00

Also available as

WEB186Q02 Live Web Seminar OND186Q02 Seminar Recording


Session Content

Date: Wednesday 20 June 2018
Time: 2.00pm to 5.15pm
Venue: Mercure Brisbane, North Quay Brisbane

Attend and earn 3 CPD units in Legal Knowledge

This unique workshop will review the strategies to consider when negotiating, drafting, and finalising an IP commercialisation or licensing arrangement. The in-depth presentations will cover the key areas your clients will expect you to excel at, including trade mark licencing, co-existence agreements, patent licencing and resolving patent disputes. Examine the fundamentals of these arrangements all the way through to the tricky issues your clients will bring to you expecting answers and results.

Chair: Ben Coogan, Partner, Thomson Geer; Leading, Intellectual Property Doyle's Guide 2017


Trade Mark Licensing

  • When is a license required?
  • Fundamentals of a trade mark license
  • Dealing with registered and unregistered trade marks
  • Key licence terms and commercial considerations
  • Dealing with other brand resources: domain names and social media
  • Common problems with licensing agreement: major clauses mistakes

Trade Mark Co-Existence Agreements

  • Contrasting a co-existence agreement with a license
  • Identifying objectives and guiding principles
  • Key terms regulating registration and use
  • Dealing with the unknown: providing certainty for the future
  • Alternatives to a co-existence agreement: advantages and disadvantages

Presented by Cameron Gascoyne, Partner, Clayton Utz; Recommended Intellectual Property and TMT Lawyer, Doyle's Guide 2017


Patent Licensing for Commercialisation

  • Licensing essentials: terminology, types and benefits of licensing
  • Preparing to license
  • Anatomy of a license agreement
  • Special considerations
  • Licensor vs licensee wish list
  • Managing the licensing process
  • Examples of poor drafting

Licensing to Resolve a Patent Dispute

  • How and when this occurs
  • What the parties are trying to achieve
  • Competition law implications
  • Practical issues of licensing in a dispute context

Presented by Rachel Sciascia, Partner, Gadens; Rising Star and Recommended Intellectual Property Lawyer, Doyle's Guide 2016


Chair:Ben Coogan

Ben Coogan has a specialised focus on the franchising sector. He advises franchisors about their legal responsibilities under the Code, his team issues franchising documentation on behalf of franchisors and is acutely aware of the commercial and competitive pressures facing his clients and the franchise sector. He has also considerable specialist experience in litigation within Queensland and nationally across the Federal Court of Australia, and internationally. Ben also advises and litigates disputes relating to competition and consumer, confidential information and trade secrets law. Ben is a qualified mediator and regularly acts as mediator in a variety of disputes. He also has experience in acting for clients and as an independent supervising solicitor in the execution of Anton Piller orders. He has written various articles and presented seminars on topics including intellectual property disputes, franchising and competition and consumer law, and holds his Masters of Laws specialising in intellectual property law. He has presented seminars at the FCA National Convention over a number of years. Ben is a current committee member of the Queensland Law Society's Competition and Consumer Law Committee. He is a long-serving past committee member and treasurer of the Licensing and Executives Society of Australia & New Zealand (LESANZ) (Queensland Chapter), a member of the Franchise Council of Australia (FCA), the Intellectual Property Society of Australia & New Zealand (IPSANZ), and Australian Corporate Counsel (ACC). Amongst the most recent awards and recognition that Ben has received are the following: Defamation and Media Lawyer of the Year 2016 - Brisbane, Best Lawyers 2016; Leading Intellectual Property Lawyer, Doyle's Guide 2017; Best Lawyers 2017, Franchise Law and Intellectual Property Law.

Cameron Gascoyne

Cameron Gascoyne is a partner of Clayton Utz specialising in intellectual property law. Cameron has substantial experience advising on the development, protection and commercialisation of intellectual property. He advises on strategic alliances, joint ventures and other commercial arrangements for collaborative research and development projects, and advises clients on arrangements for licensing core business technology. Cameron acts for a range of government and private sector clients across a broad range of industries.

Rachel Sciascia

Rachel Sciascia assists a broad range of clients including established businesses, start-ups, universities, government, research organisations, not-for-profit organisations and large multi-national corporations listed on both Australian and international exchanges in matters relating to research and development, intellectual property licensing, transfer and commercialisation. Rachel is particularly well-known for her expertise in advising on the structure of, and negotiating the legal and governance arrangements for collaborative research ventures and entities conducting research and development and commercialising innovation. Prior to becoming a lawyer, Rachel managed a genetic research institute which has provided her with in-depth knowledge of the research and development sector which enhances her ability to add value in providing legal services to the sector. This experience makes her ideally placed to advise clients across the spectrum of innovation-from the laboratory to market. Rachel also understands the impact of the obligations from research funding arrangements on the commercialisation of research outputs and how these can be managed in the structure at the outset. Rachel also advises in relation to intellectual property aspects of corporate structures, major projects and transactions. Rachel is a regular presenter on IP-related subjects at various industry forums and conferences. Rachel is currently the chairperson of the Queensland Committee of the Licensing Executives Society of Australia New Zealand and a member of AusBiotech. Rachel has been named in Doyle's Guide in 2015 and 2016 as a recommended lawyer in the category of Leading Intellectual Property Lawyers (Brisbane area) and as a 'Rising Star' in Intellectual Property (Australia wide). Rachel was also a finalist in Special Counsel of the Year at the Women in Law Awards.

Venue Details

Mercure Hotel Brisbane

Mezzanine Floor, 85-87 North Quay
Brisbane 4003

Ph: 732372300


The Mercure Hotel has a riverside location in the heart of the

CBD. For public transportation users, the Roma Street Train Station

and King George Square Bus Station are both located an easy 10 minute

walk away.

Secure Parking at Mercure Hotel offers a discounted daily rate from $36 by

validating tickets at Mercure Reception prior to departure. Alternatively,

you may book in advance via Secure-A-Spot website

to secure cheaper daily

rates as little as $19.00.

There are further public car parks located on either Tank or

Herschel Streets. Standard public rates apply.

Parking is not included in the registration fee and prices are subject to


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"An excellent series of seminars with great relevance to me."

Delegate - Evidence Examined in Criminal Matters, Perth, November 2017






, Evidence Examined in Criminal Matters

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