Overview
The Freehills IP group is unique in the Australian market. A close-knit team of specialists within a large commercially focussed firm providing boutique-style service. By understanding your business, we are able to meet your exact needs and provide the level of support you are looking for in securing, enforcing and commercialising your IP.
The Freehills IP group is a unique proposition. Our vision is to be the leading IP group in Australia. To achieve this, we have embedded within Australia’s best commercial law firm, specialist IP teams across IP Commercial, IP Litigation, Trade Marks and Patents, working in partnership with each other. Our model is unmatched in the Australian market. The quality of our teamwork makes us special. This enables us to deliver to you exceptional service. You receive focus on your immediate needs, with the support of firm-wide expertise in a multitude of areas.
Freehills employs the best people. Why? Because the best people want to work here. Our culture is about excellence and commerciality in a team environment. Our culture is also about fulfilment - resulting in staff with a passion for their work.
Experience
Some of the significant intellectual property disputes and commercial deals we have represented clients in recently include:
- Continuing to act for Glaxo SmithKline and Biochem Pharma Inc in a series of cases in the Federal Court and the Patent Office concerning compounds used in the treatment of the AIDS virus.
- Successfully acting for Rosemount wines in a claim by Henschke wines claiming Rosemount's Hill of Gold range of wines infringed intellectual property rights relating to their Hill of Grace Wines. The case was won in first instance and on appeal.
- Advising Compumedics and conducting the due diligence on the company's intellectual property portfolio as well as the restructure and negotiation of agreements for the ownership of its intellectual property in order for the initial public offering of securities in the company. Compumedics manufactures technology for monitoring human state of alertness with technological applications such as the installation in cars to detect and alert the driver of fatigue.
- Acting for 3M in two separate patent infringements and validity proceedings concerning treatments in the healthcare field and an invention in the telecommunications industry.
- Providing Diageo with a complete intellectual property management service, including management of their trade mark portfolio, review of their advertising and marketing material, transfer of intellectual property, internal arrangements for protection of intellectual property and drafting and negotiating agreements relating to their intellectual property.
- Advising clients on the management of their patent portfolio. This involves filing patent applications, advising on infringement and validity opinions and conducting patent searches. Our clients include: Redfern Photonics, BHP Steel, Nortel, Johnson & Johnson, FH Faulding, The University of Melbourne and Visy.
- Acting for Warner Home Video in a case regarding copyright issues for DVDs.
- Advising Deutsche Bank on the licensing and intellectual property aspects of its significant investment in Redfern Photonics.
- Advising FH Faulding & Co Limited on the licensing and intellectual property aspects of cancer treatment products and the licensing of gene therapy technology from the CSIRO.
- Advising AMRAD on a large number of biotechnology licensing transactions.
- Acting for The Kettle Chip Company against Frito Lay (Pepsico) in landmark trade mark infringement litigation in the Federal Court.
- Acting for Landcare in copyright litigation relating to the Landcare logo.
Working with you
The Freehills intellectual property practice is comprised of a full service patent and trade mark practice in addition to specialist lawyers in IP commercialisation and IP litigation. The depth and breadth of the patent and trade mark practice is unlike that provided by any other commercial law firm in Australia.
Our dedicated team of attorneys, lawyers and support staff are highly trained, not only to excel in the delivery of legal services, but also to be passionate about understanding the application of the law to the real world commercial context of our clients’ businesses. Our team prides itself on its responsiveness, commerciality and thought leadership.
We are passionate about the work we do. Our objective is to deliver an outstanding result for our client that leads to an ongoing relationship.
Case study
A ground breaking win for Microsoft in Indonesia
The Intellectual Property team of Freehills' Indonesian correspondent office – Soemadipradja & Taher – acted for Microsoft to record five groundbreaking wins in a Jakarta intellectual property court.
The decisions were the first ever decisions in an Indonesian civil case for copyright infringement in computer software, as well as being the first significant award of damages in an intellectual property case in Jakarta. The case has been the subject of close attention by the international software community and, among others, the United States government.
The software giant launched a series of five test cases in Indonesia against computer hardware retailers who had engaged in hard disk loading. Hard disk loading is a practice whereby a hardware retailer loads unauthorised copies of software onto a hard disk and then includes that unlicensed software with the equipment sold to the purchaser.
Obtaining judgments in Indonesian intellectual property cases is notoriously difficult, resulting in very few cases and even fewer judgments. The problems include a lack of judges with intellectual property knowledge, an absence of any discovery process in civil litigation, and rules of procedure, which restrict a party from even seeing the evidence submitted by the other party. Despite these problems, the West Jakarta District Court ordered the defendants to pay Microsoft damages of just under US$10 million (approximately A$20 million) for copyright infringement.
Microsoft's team at Soemadipradja & Taher was headed by Shaun McVicar, an intellectual property partner from Freehills' Melbourne office.
The case also saw Microsoft successfully defend a cross-claim brought by the defendants against Microsoft seeking, among other things, an order that Microsoft must sell its software in the Indonesian market for only a few US dollars each. Microsoft also successfully fought off an unprecedented challenge whereby an association of computer hardware dealers sought to join the proceedings against Microsoft as co-claimants in the cross-claim.
