November Edition | From our President - Sue Muggleston
As the year nears completion and we start to enter the festive season, I’m pleased to share the exciting developments and achievements from the last month or so and what we have to look forward to next year.
Fireside Chat Webinar: Tech Transfer Triumphs
Our recent "Fireside Chat on Tech Transfer Triumphs" was a resounding success. It provided invaluable insights into the labyrinth of spin-outs, licensing, and capital raising. The expertise shared by Duncan Ferguson highlighted a way for many of our members navigating these paths.
Spring Sundowner with Innovation Aplenty
We embraced the spring spirit with the LESANZ WA community at our spring sundowner with just under 40 attending this first in-person event. A highlight was the engaging presentation with John Gibbs from Spinifex Brewing Co on their journey navigating innovation and IP to create their award winning brews using native Australian botanicals. Their innovative spirit and latest brews added a unique flavour to the evening – quite literally!
Webinar on Generative AI: Navigating New Legal Landscapes
Not once but twice, we hosted an enlightening webinar on IP issues in the realm of Generative AI, on Australia and also Asia Pacific. This event cast a spotlight on the burgeoning intersection of AI and IP law, discussing the regulatory ripples and legal risks that AI brings to the fore. It’s clear that we are stepping into an era where understanding AI's implications is crucial.
Don't forget that these recordings are made available via our online community.
Marking Half a Century: The 50th Anniversary Event | Sydney 6-8th March
Lastly, a drumroll for our upcoming milestone - the 50th Anniversary Event! Early Bird registration is now open, and I encourage everyone to be a part of this monumental celebration. It's not just an event; it's a testament to our journey, resilience, and community spirit.
Membership Renewal for 2024
As we look forward to another year of growth and innovation, please keep an eye out for your membership renewal notices for 2024. In appreciation of your continued support, we're pleased to announce that the membership fees have been held at the 2023 rates. We believe this will make it easier for all our members to continue being a part of our vibrant community.
Thank you for being an integral part of our vibrant LESANZ community. Your participation and support fuel our journey towards innovation and excellence. Here’s to more months filled with learning, growth, and, of course, a bit of fun!
EARLY BIRD REGISTRATION NOW OPEN - book and save!
6-8th March 2024 | Sydney @ Fishburners | Connect People and IP - Past Present and Future
Next year marks the 50th Anniversary of LESANZ and we are planning a very special conference to celebrate this momentous occasion.
Intro to the Board/Trustees Series | Catherine Boxhall - Vice President
Hi, I’m Catherine Boxhall and I have the joy and privilege of helping people do licensing deals and getting paid to do so! It all began way back in high school, when I enjoyed chemistry and maths as much as English and history. That of course led to studying law and science. This was at Flinders University – I was in the first year when that combination was offered and only one other person besides myself took it up. Possibly because the law school and biology buildings were on opposite sides of the rather hilly campus – dashing between classes kept me fit.
After some in-house paralegal work at FH Faulding & Co (for anyone old enough to remember that company) I landed a graduate role at a large Adelaide law firm, which has since gone national. For a few years I worked on some really interesting matters - mergers and acquisitions, IPOs, as well as clinical trials, general commercial and a little bit of intellectual property. I missed using my science though, and as there weren’t a lot of opportunities when it came to IP commercialisation jobs in Adelaide in the early 2000s it was time to head east.
I had an interview with a mid-tier firm in Melbourne one Monday morning, then jumped on a plane to Sydney for another that afternoon with a small law firm associated with a large patent and trade mark attorney firm looking to grow its commercialisation practice. Both firms offered me a job (at the exact same salary!) but I took the Sydney one as the partner I’d be working with clearly had a commercially minded, client focussed, approach to practising law that aligned with me. Rob McInnes handed me his copy of Noel Byrne’s ‘Licensing Technology’, but before I had chance to read too many chapters I was soon living the licensing dream, drafting and negotiating all sorts of interesting contracts with some cutting-edge technologies and learning from Rob. (Incidentally not that long after I took a subject taught by Noel as part of a Graduate Diploma in IP Law at Melbourne Uni. Post grad study on top of full time work wasn’t easy, but definitely worth it for the greater in-depth knowledge it gave me on the specialised field of IP.)
Fast forward 20 years, during which there have been several private practice roles, secondments at research organisation and large companies, and more recently establishing Integra Law, a boutique IP commercialisation practice which punches above its weight! I still get great satisfaction being part of a team with the diverse skillsets needed to translate clever ideas into products and impact. Whether it’s an academic founder of a university spinoff negotiating with an experienced commercialisation team, or an ex-pharma executive now CEO of a biotech who has done countless deals of a similar nature, every transaction is different and the technology always astounding. The words used in a foundational licence agreement can make or break a start-up company – it’s a great responsibility to work on such transactions with founders and investors so the learning and improvement continues.
Rob has been involved with LES for as long as I’ve known him, and is the one responsible for encouraging me to join the NSW regional committee and undertaking the Certified Licensing Professional process some years ago now. Since then I’ve served as NSW Regional Chair, then as Treasurer and now Vice-President of LESANZ. In addition to the people that I’ve met, I’ve valued the education I’ve received (and still receive) from LES, and the opportunity to pass some of what I’ve learnt on to newer members of the profession. If that’s you, can I encourage you to invest time in reading, observing how others do things, and giving things a go yourself – these are all important ways of learning. But more importantly, congratulation on making such a wise career choice – I’m sure you will find it every bit as satisfying as I have.
Adelaide still feels as much like home as Sydney does for me (given most of my family live there), and I have more excuses to visit Melbourne now Integra Law has a presence there. Thankfully due to technology we have moved from those early years of my career, when working from the office was the only option. Seeing our clients’ inventiveness gives me hope for what’s to come in the not too distant future!
Help required – Are subject matter laws affecting commercialisation strategies in AU
Do you have any views on how Australian laws on patenting of software and computer implemented inventions are affecting commercialisation and investment?
IP Australia has approached LESANZ seeking our input on impact of current patentable subject matter laws for “computer implemented inventions” on Australian industries.
Specifically IP Australia would like to know any effects of the current law in relation to the patenting of computer implemented inventions is having on businesses. This could cover:
~ any challenges current laws have for Australian industries;
~ case studies where the law in Australia or overseas has changed the investments or IP strategies regarding computer implemented inventions;
~ examples of where the patentability of specific inventions has differed between Australia and other jurisdictions; and/or
~ any views on changing or retaining current Australian law.
LESANZ will be preparing a submission, coordinated by LESANZ Secretary Chris Wilkinson and so if you have any input please contact Chris by email.
So what are computer implemented inventions?
Computer implemented inventions is the broad name for software inventions, and covers any systems involving the use of computers. This ranges from AI, machine learning, and internet/Web related inventions, to systems in which a computer is used to collect data or control a device such as boom gate, electronic gaming machines, or diagnostic equipment
Patentable Subject Matter
In order to be granted a patent, an invention must fall within the field of allowable patent subject matter. Subject matter tests are directed at what class of inventions should be allowed to be patented, and what should be excluded. This a separate requirement to the novelty and inventive step requirements, and is supposed to be independent but in practice there is some merging of the assessment with the these requirements.
The current issue
In recent years, there has been considerable uncertainty about the correct test to apply and where the limits lie in relation to computer implemented invention.
In late 2022 the Aristocrat case made it to the High Court. This was a case around whether an electronic gaming machine (a computer implemented invention) was patentable. IP Australia had refused the application, a Judge in the Federal Court found it was patentable, the Full Federal Court found it was not patentable, and so the High Court took on the case. Unfortunately on the day of the hearing one Judge was absent due to illness, and the Court returned a 3:3 split. The three judges who found the invention was directed to patentable subject were quite critical of IP Australia’s approach.
IP Australia have recognised this has created uncertainty and is now seeking input on the effects of current laws in Australia. As part of this they have invited LESANZ to make a submission on behalf of our member base
LESANZ will be preparing a submission on behalf of our members which Chris will be coordinating.
We would thus like to seek input from our members on how our current patentable subject matters in this area is affecting commercialisation and commercialising strategy. If you have any opinions or wish to contribute to the preparation of the submission, please reach out to Chris by email
The Request from IP Australia
IP Australia is seeking feedback from key stakeholders on the patenting of computer implemented inventions in Australia and we would like to know LESANZ’s views.
We have heard from some stakeholders that recent court decisions have not provided certainty on what is patentable subject matter in Australia for computer implemented inventions. The concern is that this uncertainty is affecting the IP strategies and commercial activities of innovative businesses.
To better understand these concerns, IP Australia is undertaking targeted consultation with intellectual property professionals and other stakeholders with a commercial interest in this issue. We invite you to make a submission to IP Australia on any effects of the current law on businesses. This could cover:
~ any challenges current laws have for Australian industries
~ case studies where the law in Australia or overseas has changed the investments or IP strategies regarding computer implemented inventions
~ examples of where the patentability of specific inventions has differed between Australia and other jurisdictions
~ any views on changing or retaining current Australian law.
IP Australia will be commissioning research into the outcomes for computer-implemented inventions in other jurisdictions to see how Australian law and practice compares, and will make those findings available. This research, together with stakeholder submissions, will help us to understand the extent of the issue and whether we need to consider it further.
Our Feedback to IP Australia is due by 29 Feb 2024
Essential Member Benefits | Are YOU making the most of them
We highlight 3 benefits this month that you may not be aware of or utilising - want to know more? - contact Beth at the Secretariat
- Member Community Pages of Past events - access to recordings for CPD or if you missed them - link to member community of the website (you must be logged in to access)
- Royalty Rates - articles and survey results - access via your LES International login - via www.lesi.org.au (full members only)
- Lexology/LESANZ Daily Newsblast - keep up to date on global IP articles and reports on case law and other related matters. Opt in via the Secretariat
Past Presidents Series | John Walker
John Walker joined LES in 1982. This was largely due to the encouragement of his BHP colleague, John Stonier, who was the first LES International President from LESANZ. At BHP John Stonier stressed the importance of the four foundations of licensing and technology transfer – knowledge of technology, business, legal and IP. It was these foundations that John Walker was always reminded of in his career, and these very much underpin the unique nature and success of LES. John joined the LESANZ Trustees in 1989 under the Presidency of Pamela Morey-Nase, LESANZ’s first female President.
John was elected President for the term 1992-93 and then served another term in 1993-94. During that period LESANZ appointed Graymore Williams as a part-time secretariat and conference organiser. Prior to that the organisation relied on the voluntary support of members and their staff. This appointment ultimately led into the role Beth Benson performs for LESANZ today.
In 2011 John was appointed to the LESI Board as International Secretary, a role he performed for 3 years. Prior to that John had been an active member on several LESI Committees, but particularly Asia Pacific and Education. He combined these interests by conducting several LESI workshops and courses in the Asian region, and for many years was a Judge in the Asia Pacific Business Plan Competition. Over an extensive period he presented papers at LESI and Asia Pacific Conferences on a range of topics including IP Valuation, Licensing Issues and IP Management.
When asked what aspects of involvement in LES he found the most rewarding, John strongly believes it has been education and networking. Through his participation in LES John has made many friends, both locally and internationally.
Whilst John still contributes the occasional professional article, his retirement interests include undertaking family history research, and watching the Geelong Cats acquire more premierships. John and his wife Jenny have six grandchildren ranging from five months to eight years old, a role that brings them great pleasure.
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LESANZ Membership Renewals - 2024
Please note that Beth will soon be in touch with details about membership renewals for the 2024 calendar year, and we're pleased to announce that the membership fees will be maintained at the 2023 rates.