State of the market

Despite the slump caused by the credit crunch, demand for intellectual property (IP) legal services has remained strong and resilient in Australian and New Zealand markets.

Although some Australian firms have noted fewer due diligence exercises, IP work flows have remained steady for the past few years. One of the factors behind this is an overall upsurge in counterfeiting and infringement, typically caused when companies cut funding for research and development in favour of replicating successful products from competitors.

Companies are under pressure to cut costs suggests Baker & McKenzie partner Robert Arnold, and some market players are capitalising on this by selling counterfeit products such as computer hardware, fashion accessories and cigarettes. Resolving these matters has become the 'bread and butter' of lawyers, who find they get better results by adopting a strategic approach in identifying counterfeiting networks, from their sources to distribution channels.

The pharmaceutical and medical device industries have provided cross-border work for firms, particularly multi-jurisdictional patent invalidity cases and the unauthorised sale of pharmaceutical products via unregulated online traders. Baker & McKenzie partner Elisabeth Coffey has seen a "spate of cases" in which blockbuster pharmaceutical product patents nearing the end of their life are copied by generic brands before expiry.

Given the above, it is not surprising that there has been a flurry of IP litigation work and some of the most well-known examples include legal action between: several motion picture companies and iiNet over illegal file sharing over the iiNet network; Telstra and Fox Sports over rights in relation to NRL highlights packages; and Nine Network and IceTV over the ongoing dispute over electronic TV guides.

On another note, climate change work flows are expected to provide a good line of business for IP lawyers as well. Mallesons Stephen Jaques expects the federal government's proposed Renewable Energy Bill and Carbon Pollution Reduction Scheme to bring up to five years' worth of climate change research & development (R&D) work. "There will be huge opportunities for commercial and venture capital IP lawyers in projects from the Clean Coal Fund (A$900m), Low Emissions Technology Development Fund (A$500m) and National Low Emissions Coal Fund CCS (A$100m)," says partner Scott Bouvier.

This is not to say that there are no areas of slowing growth. The venture capital side of IP is expected to be weak for the next six months, with equity only likely to flow in about one to two years when R&D products results and markets recover. Mallesons expects significant patent and trademark litigation work as companies try to protect their innovations and brands in the credit crunch in positioning themselves for recovery.

Similarly filing of patents may face a short-term setback as companies review low-priority portfolios and tighten them. "I spoke to a research institute that had trimmed a couple of hundred thousand dollars off its patent budget," says Bouvier. "There will be a general rationalisation to focus on what's important, so that will take some fat work away from the IP legal sector."

The area that could perhaps change would be clients growing more concerned about getting value for money. "The downturn is putting pressure on how much clients can pay, so we are moving away from the timesheet and charging in new ways. For example, a lot of registration work is on a fixed-fee basis, so clients ask if we can do more fixed-fee work," says Arnold.

Quick dispute resolution is increasingly required of Kiwi IP lawyers and this is particularly the case in the consumer products area, suggests Kensington Swan partner Sheana Wheeldon, where high-end clients are keen to protect sales by taking action against counterfeit or infringing products. "These clients seem to be reasonably keen on protecting their IP. They have generally looked for a quick resolution, even if it's not perfect - most cases settle before they get to litigation," she says.

In the past, many IP disputes have involved a lot of written correspondence and 'bickering' before reaching a resolution; however, nowadays there is less written correspondence and more parties are in favour of a quick compromise to settle disputes. "This is how more clients think now, so we focus on giving them value for money. We have fixed-fee arrangements for routine trademark filing, but don't see demand for them in other areas. Fixed fees often have to be at the high end because they need to accommodate contingencies, and clients know this," she states.

Despite the changing market, lawyers remain optimistic that work flows will remain steady. Bouvier expects to be very busy with IP matters for the rest of his career and most firms would welcome this concept.

SYDNEY

As usual Sydney lawyers have received the overwhelming majority of IP work and, not too surprisingly, partner fees were some of the highest. One client commented that most national top-tier firms charge between A$600-800 per hour, which is "out of control". The general view was that firms should charge according to how much work was done, with a top price for high-level strategic advice and a lower one for process-based work.

Gilbert + Tobin was considered "commercially realistic" and more affordable than any of the national firms; it was strategic in delivering patent litigation services, thorough in its analysis and impressed clients with its general legal knowledge. Its service turnaround was "excellent" and it "never dropped the ball" when it came to delivering the end product. Anthony Muratore offered a global perspective; he was thorough, professional and competent, and clearly understood specialised issues and the technologies his clients were involved in. Rachel Launders was proactive in her trademark work and commercial, and understood her clients' business. Lisa Taliadoros had the right combination of aggression and commerciality, while Lisa Lennon was very thorough in handling IP portfolios, attentive to detail and "knew her job". Siabon Seet was very organised and coped well with the pressures of major litigation.

Banki Haddock Fiora was personable and proactive, and experienced in trademark IP matters. Clients could not fault the firm's legal expertise and mentioned that its client service was one of the best they had ever seen. Margaret Shearer was intelligent, client-focused practical and commercial, experienced in dealing with international companies and "more pragmatic than any other IP lawyer". She was also considered to be a "warm and friendly person to deal with" with a good grasp of IP law, but never "wimped out". Kate Haddock regularly visited her clients and had deep client knowledge. Peter Banki was personable and an experienced copyright litigator, and able to simplify matters in a calm way.

FB Rice & Co was one of the more cost-effective patent and trademark firms, notably for its general IP advice. Chris O'Sullivan was very technical and experienced in the patent drafting space, and known for his knowledge of business method and computer-implemented inventions. Paul Whenman was both practical and "strong", and had extensive experience in industrial chemistry. Charles Berman was experienced at advising US clients and known for his start-up work for medical manufacturers. Gail Hill was mentioned for her trademark opposition and removal work, with a good knowledge of cross-cultural branding issues and the wine industry.

Baker & McKenzie had a high level of copyright advice, and very close client relationships to the point where clients considered them part of their team. Ross Maclean was down-to-earth, approachable, realistic and conservative, and able to "step outside the box" to help clients gain "optimum protection". Richard Gough was a successful litigator, even in difficult, "hard-core" or even "high-risk" disputes. He provided clients with excellent input and had a "proactive eye" for trademark registration. Robert Arnold was also singled out for praise.

Often chosen for its "good size, fit and culture" and ability to tend to matters "well in advance", Henry Davis York was a favourite for everything at the "right price". Donna Short was hardworking and proactive, quick to respond and a good communicator, who was consistently able to bring in the right expertise and come up with good ideas. She was also good at providing regular feedback and reminding clients of important dates.

Herbert Geer's Dan Brush was friendly and considered "outstanding" in his service. He also had a good client focus to help them achieve their goals and they were "delighted" with his new technology work. Special counsel Diane Beer could identify problems and also ways to execute them.

Corrs Chambers westgarth had a "personal touch" that made it stand out from its competitors. Odette Gourley was professional, accessible and cost-effective, which made a big difference in the currently economic climate.

Simpsons Solicitors was a well-regarded specialist IP firm. Adam Simpson has built long-term client relationships with government departments, had a good work ethic, and gave "trusted" practical advice. Gules Munro was a "young gun" with a focus on the entertainment industry. Shane Simpson was a "veteran of the IP world".

Harris & Company Solicitors had also undertaken its share of IP work. Grant Hansen showed strength across commercial aspects of IP and took a pragmatic approach; he was also cost-effective, innovative and a self-starter.

Phillips Ormonde Fitzpatrick's Ken Hamilton was praised for his "fundamental" trademark and opposition work, which was timely, cost-effective and quick.

Collins Biggers & Paisley was noted for its border-protection work and to this end, Antony Riordan was quick and provided excellent advice.

Shelston IP's Jack Redfern managed IP matters well, and was commercial, realistic and "good value for money".

Thomson Playford Cutlers was also mentioned for its service, which met client needs satisfactorily. Peter Le Guay was mentioned for his trademark work.

Truman Hoyle was recognised for its ability to serve clients with interests in new economy industries across the Asia Pacific region. Mark Vincent was chosen for his strategic approach, Shawn Skyring was praised for his IP enforcement work, Kathryn Edhill was mentioned for her ability to enforce IP but also provide competition advice, while Graham Maher was also singled out for praise.

Griffith Hack's John Lee was mentioned for his litigation work.

Guild Lawyers was very good for general IP. Paul Baker was thorough, knowledgeable and professional.

Piper Alderman's Robert Postema was an astute, "personable" and corporate lawyer.

Gadens Lawyers' Wendy Blacker was mentioned.

Duncan Cotterill's Neil Scott was mentioned.

Mallesons Stephen Jaques was very cost-effective, responsive and commercial and fast to produce "one or two pager deals". Katrina Rathie handled ongoing and rather complex matters with ease. She was praised as helpful, responsive, highly client-focused and good with licensing work, could handle "tricky" issues and capable of finding solutions for both sides that ensured good IP protection. Maurice Gonsalves was "extremely dynamic" and practical, and knew his subject matter. He was able to understand his client's business objectives and find innovative solutions to help them achieve them. Scott Bouvier was always available, prepared to give his own opinion and also prepared to "go litigious" when required. One client had no hesitation in recommending him. Kim O'Connell was mentioned for patents litigation.

Clients often turned to Allens Arthur Robinson for its size and considered it to be "one of the top firms" for general IP matters and developments in law. Ian McGill was commercial, accessible and proactive in training staff, and had a complete and thorough knowledge of law. Jim Dwyer was a "strategic IP thinker", well supported by his capable staff - particularly in his trademark prosecution and registration work - and had a keen eye for IP issues. David Yates was clear, articulate and willing to learn, and also knew how to work well with clients, rather than trying to dictate. Philip Kerr was knowledgable and courteous, and put his clients' interests first. Trevor Davies was "technically exceptional", "very strong strategically" and easy to work with.

Minter Ellison was a top pick for its good knowledge of copyright matters and peacemaker approach to resolving disputes without lengthy litigation. Charles Alexander was very highly regarded by clients because he focused on outcomes, maintained good client relationships, had good contacts and provided a commercial perspective, while being mindful of client requirements. He demonstrated a "masterful command" of IP issues and was able to work in a highly adversarial environment without "resorting to fighting or litigation", which one client considered to be rare. Lynne Peach was client-focused, innovative and highly regarded in trademarks and patents, and large-scale litigation was one of her strengths. Anthony Lloyd and Keith Robinson were mentioned for their extensive practices in IT-related IP issues.

Clayton Utz was one of the sizable firms with enough resources to provide more than adequate manpower. John Collins could understand technology quickly, had a "depth of experience" and an "inclusive" style of leadership, but didn't take himself "overly seriously". Mary Still was "tough", well-organised and a strategic thinker, while John Fairbairn was a young "technically savvy" partner with a deep understanding of copyright law. Jim FitzSimons and Robert Cutler were also mentioned for their IT-related IP work.

Blake Dawson was known to be strong on IP aspects of acquisitions. Lisa Ritson was very knowledgable and capable, and made clients feel comfortable - and safe. Emma Rodigare was one of the few junior lawyers praised for her excellent and responsive service. Melinda Upton was capable in trademark matters, while Ben Miller was mentioned for his patent and litigation work.

Freehills was mentioned for its strength in the trade practices area. Sue Gilchrist was practical, creative, commercial, responsive and always available, and able to understand both commercial and legal issues.

MELBOURNE

One important observation that clients made was the need for large top-tier firms to ensure quotes were done accurately and that accumulating legal fees were more closely monitored. One client said that previously large firms have been lacking in their provision of quotes across various lawyers, so it was difficult to work out how much standard IP services may cost. There was also concern from one client who discovered that his legal adviser often operated outside the scope of his instructions.

Davies Collison Cave was mentioned for its registration work and being "above average" in its follow-up, involvement in client businesses and taking the "extra step". Richard Jarvis went to great lengths to explain IP matters from a commercial perspective. Joy Atacador was considered to be a very good, commercial and practical senior associate. Associate Helen Mutimer was proactive, friendly and sensible. Rodney De Boos, Ian Pascarl and Marion Heathcote were mentioned.

Mason Sier Turnbull was one of the Melbourne firms that won praise. Special counsel Marianne Dunham had longstanding client relationships, and was known for her pragmatic and practical approach and "specialty" in IP, and understanding of issues of ownership. Special counsel Darren Sommers had a depth of knowledge in franchising matters. Noelene Treloar was an "expert" in science or IT-related IP matters.

Phillips Ormonde Fitzpatrick's Greg Chambers specialised in patent and trademark litigation, Ray Evans and David Tagell were mentioned for their chemistry IP work, and Ross McFarlane was mentioned for his technology expertise.

Piper Alderman was praised for its effective multi-party agreements in both the private and public sectors. George Raitt was mentioned for his exceptional risk management, practical approach and "long experience". Tim Clarke was enthusiastic about start-up IPs.

Deacons had a good track record for Australia-based and offshore matters. Bernard O'Shea was talented at licensing, collaboration agreements and working with overseas clients operating in the pharmaceutical or biotechnology space.

FB Rice & Co was also singled out for praise. Jenny Petering was praised for her "active" approach to IP management and strategic commercial advice. Associate Marcus Caulfield only left clients with good experiences.

Arnold Bloch Liebler's Michael Dodge was astute, commercially-focused and a lateral thinker. Jane Sheridan was efficient, straightforward and commercial, while Zaven Mardirossian was innovative, strategic and comprehensive.

Corrs Chambers Westgarth's Philip Catania was praised for his IP knowledge, commercial nous and an excellent team, with whom he enjoyed working. Stephen Stern continues to be recognised as a prominent IP and litigation expert.

Herbert Geer's Graeme Hodgkinson was mentioned for traditional trademark and branding work.

Madgwicks' Rick Goldberg was thorough, results-orientated and commercially and risk-management-focused.

Baker & McKenzie was mentioned for its global presence and plentiful resources.

Griffith Hack's Wayne Condon was praised for his patent litigation, Russell Berry was commended for being commercial in his advice, Andrew Goatcher was good with copyright litigation, and both Greg Munt and Chris Sgourakis were mentioned.

Allens provided "five-star service", was thorough and enthusiastic, and very good at complex litigation that demanded a high-level of resources. Andrew Butler was easygoing, responsive and strategic, and good at drafting documents. Sarah Matheson was detail-orientated, good at client-relationship management, knew the progress of the litigation and had a good idea of how to achieve outcomes. Tim Golder had "great industry experience" and always tried to go the extra mile with his client service. Richard Hamer was technical, open-minded and a clear communicator.

Freehills brought a high-degree of technical, commercial and litigation expertise. Campbell Thompson and Ken Adams did a "first-class job" in client-relationship management and were committed, proactive and hardworking - and also capable of "synthesising" complex facts into a very commercial and sophisticated strategy.

Minters provided a competent, broad and strong skillset when it came to IP work. Paul Zawa was precise, determined and prompt to respond, helpful, strategic and thorough. Ron Pila, Paul Kallenbach and Oliver Barrett were also mentioned.

Clayton Utz's Kate Marshall had a good understanding of scientific concepts and was hardworking, clear - a "direct thinker" and agood communicator. Chris McLeod was commercial; "user-friendly" from a client's perspective and cool under pressure.

Clients believed they "could not go wrong" with Mallesons, especially Mark Weber, who brought a "huge amount of experience" in diverse IP contracts and solutions. Clients commented that he was creative, diligent and reliable, and seen as one of the "veterans". Wayne McMaster was mentioned for his patents work, and Natalie Hickey was a high-profile copyright and trademark litigator. Robert Cooper was mentioned for his patents and copyright litigation, and Cheng Lim had a high-profile copyright client base.

Blake Dawson's Peter Chalk was "one of the best generalist IP lawyers in Australia" and a "master of IP law". Mary Padbury was an IP pioneer and noted for her copyright and patent work. Belinda Findlay was known for her trademark and copyright work in the food industry, while Grant Fisher was knowledgeable in chemistry, pharmaceuticals and biotechnology, and also known for his trademark and patent work.

BRISBANE

McCullough Robertson was professional, timely, helpful, friendly and facilitated "well-presented" meetings. David Downie provided sound technical advice and demonstrated negotiation and problem-solving skills that were of "great benefit" during long contract negotiations. He was patient and helpful even in frustrating circumstances and reached solutions that all parties were happy with.

Cullen & Co had longstanding client relationships and was known for its trademark and filing work. Gary Nock provided "excellent" and "sound" advice.

One of Griffith Hack's strength was advising on patent matters. Brendan Nugent understood technical aspects of patent work and was "timely".

Minters left its clients with a pleasant experience, with its prompt, open and understanding approach. Consultant Margaret Brown was "outstanding", "absolutely professional" and pointed clients in the right direction, while being efficient, honest and "genuine" in how she kept her clients' best interests at heart. Special counsel Suzanne Sheridan was able to work within "heavy time pressures", met deadlines and was "thorough".

Clayton Utz's Jeremy Charlston was a "first-choice lawyer" for government and had a good grasp of IT-related aspects of IP.

Mallesons' John Swinston was mentioned for his patent litigation.

Blake's David Wenck was also mentioned.

ADELAIDE

Thomson Playford Cutlers was knowledgeable, effective at helping start-ups "create their own success stories" and had a "high level" of competence. Adrian Tembel was a license-agreement "architect", intelligent and strategic, and "happy to work at any hour of the day or night". Competent and able to liaise with overseas contacts, he was also dubbed an "extrovert" and "charismatic" - which European clients responded well to. Associate Andrew Ross was also praised.

Finlaysons provided "excellent" client service, and sound and accurate advice. Clients simply "could not speak more highly" of the firm. John MacPhail was knowledgeable and helpful "right from the start", and gave good, practical but not overly technical advice. He had great availability, was responsive and astute, and willing to go the "extra mile" in his work - for a reasonable price.

The late John Maciel from Piper Alderman received a special mention as an "IP specialist" who was tenacious and commercially astute, and interpreted client requirements from a practical perspective. Tim O'Callaghan was laid-back and straightforward in his brand protection and litigation work, while Tony Abbott was "likeable" and "highly astute".

Phillips Ormonde Fitzpatrick offered good scientific knowledge and a strong understanding of patents. Greg Bartlett had great relationships with clients interested in filing overseas, Karen Spark was known for her mechanical expertise. Associates Jeff Holman and Justin Coombs were singled out for praise.

Madderns was a "strong player" in patent and generalist IP, and "technically strong". Martin Pannall was technically sound and had longstanding relationships. Mark O'Donnell was competent and "entrepreneurial".

Minters left clients with a very positive experience, mainly due to the firm's "high level of service". Josh Simons was commercially astute, with a helpful competition background. Richard Pash was experienced in joint-development contracts, and his seniority and experience were highly valued.

OTHERS

In Perth Jackson McDonald had a reputation for being accessible and knowledgeable, and also easy to
work with. Stephanie Faulkner was recognised as a "copyright expert" with "extensive" experience in IP litigation. She was focused, provided commercially sound advice and had "excellent leadership skills". Darren Pratt was a skilled litigator, direct and a good communicator.

Also in Perth, Griffith Hack's Stuart Boyer was knowledgeable in biotechnology.

In Canberra, Minters left clients with a good experience, mainly due to the firm's ability to liaise with multiple parties and assist them with drafting and negotiation. Paul McGinness was pragmatic, business-orientated and technically strong in "legalese".

Clayton Utz was mentioned in both Canberra and Perth, where Scott Crabb and Paul Fitzpatrick were singled out for praise.

NEW ZEALAND

Simpson Grierson was most highly praised in New Zealand for providing a legal perspective from a practical business point of view, and understanding its clients and products. Some of the firm's key strengths were in copyright and its ability to service foreign clients who need a range of services in addition to IP. Earl Gray was professional, approachable, responsive and friendly, consistently able to keep in touch with clients and appreciated for numbering his paragraphs, which made them "easy to read". Clients could not fault Richard Watts who was a "solid IP generalist", and "always accessible".

Hudson Gavin Martin was "excellent" at defence and "noused itself" as a specialist IP firm that was considerably cheaper than large Kiwi firms. The firm offered an "impressive bunch" of associates, which one client considered rare due to the country's debt and market size that often led to overseas defections. Mark Gavin was commercial, client-focused and results-orientated, and an "absolute IP expert". Simon Martin was "highly experienced" and provided advice with few "overhead" costs that was often "quicker than some of the larger firms". Wayne Hudson was quick, and an expert in copyright and online commercial matters.

Chapman Tripp had managed to keep some longstanding clients due to the firm's responsive, hardworking, positive and proactive approach. Clients appreciated how the firm was easy to work with, kept clients informed and provided prompt, quality trademark submissions. Matt Sumpter was confident, and a clear communicator and delegator, with good business acumen and instincts. Robert Bycroft always took the time to visit clients and answer questions they had. He was appreciated for being cost-effective by allowing paralegals to carry out the work.

AJ Park was very knowledgeable in patents and provided trademark information that "larger firms wouldn't be privy to". Alan Potter and Mark Hargreaves were commercial, practical and offered academic solutions that were business-oriented. Ken Moon was knowledgable in copyright, understood his clients' businesses and good at finding international contacts. Kim McLeod had a good grasp of IP issues, Allan Bowie was commercial, smart and efficient. Bryan Thompson was knowledgeable, Greg Arthur was a technical expert and eloquent, Keith Thompson and Peter Luxford had a wealth of experience, while Logan O'Callahan was also mentioned.

Kensington Swan was favoured for its successful IP litigation and "refreshing" commercial perspective, particularly among in-house lawyers. The firm was timely, thorough and commercially savvy, and did not simply judge client instructions at "face value". Sheana Wheeldon was an "excellent operator", diligent, commercial, proactive and timely, able to "stick to fee estimates", "excellent" at advising on international trademark and protection strategies, and favoured for her "down-to-earth" - not "overly lawyerly" - approach.

Minter Ellison Rudd Watts provided "great service", anticipated client needs, identified solutions proactively and gave pragmatic advice that achieved the desired outcomes. Christopher Young was "exceptionally" commercial, built up a "great deal of trust" and was easy to communicate with. His understanding of the level of risk that clients were prepared to take proved "invaluable" on many occasions. John McCay offered "excellent advice" and the formal support required for trademark work.

Bell Gully was thorough and pragmatic, and did an "excellent job" of handling IP matters.Ellis verboeket Terry continued to receive praise. John Terry was considered to be an "acknowledged leader" in IP strategy, Peter Verboeket combined "excellent" patent attorney and IP litigation skills with a "solid practical commercial approach", while Jonty Ellis was recognised as a creative and lateral thinking brand strategist. Alan Ringwood was practical and had a "good choice of senior counsel". Kevin Glover was a pleasure to deal with

Henry Hughes was considered to be a good trademark firm. Barbara Sullivan was "lovely", willing to help and always on the lookout for 'look-alike' products that could classify as counterfeits or patent breaches.

Russell McVeigh's Garth Sinclair and Graeme Quigley were commercial, highly responsive and focused on achieving results.

Duncan Cotterill's Scott Moran, Chris Bradley and Richard Raymond were singled out for praise.

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