Griffith Hack is proud to announce that Amanda Stark, Principal and Practice Group Leader of our ChemLife team, has received the Client Choice Award – IP Patent Agents and Attorneys, Australia at the 2021 Lexology Client Choice Awards.

Established in 2005, Client Choice recognises individuals around the world who stand apart for the excellent client care they provide and the quality of their service.

The criteria for this award focuses on the ability to add real value to clients’ business; above and beyond the other players in the market. Uniquely, nominees can be submitted only by corporate counsel, with this year’s winners chosen from a pool of more than 2,000 individual client assessments.

What clients said about Amanda

“Amanda is easy to get on with, picks up the issues & technology quickly and provides clear advice, good availability, good communication.”

“Amanda is an exceptional patent attorney with extensive expertise in managing biotech patent matters.”

“Amanda is always, responsive, patient, professional, extremely knowledgeable and works hard to achieve the best outcome for her clients.

“In all my interactions with Amanda, she has been an excellent communicator and consistently provided invaluable advice on patent strategy.“

“Amanda demonstrates a critical commercial perspective. Her outstanding advice has greatly increased our value.”

“Amanda has provided strategic guidance on options to minimise costs while maximising outcomes.”

About Amanda

Amanda is one of the leading practitioners in the Australian biotechnology space. She is a key member of Griffith Hack’s leadership team, heading up the ChemLife practice group and leading the International Business Development and Foreign Associate Relationship program.

Amanda has a reputation for grasping complex legal and technical issues and developing creative solutions to achieve targeted results. Known in the industry for her tenacity and lateral thinking, clients transfer their work to Amanda when issues arise that most attorneys cannot resolve. A key strength of Amanda’s is IP strategy formulation and she is often called upon to develop IP strategies for companies looking for investment.

Griffith Hack has maintained its status as a Tier 1 firm for patent prosecution in the IP STARS 2021 rankings, with principals Amanda Stark and Janelle Borham named as Patent Stars.

The results highlight Griffith Hack’s standing as a leader in patent work both within Australia and internationally.

Earlier in 2021, Griffith Hack was also named as a Tier 1 firm for trade mark prosecution by IP STARS, with Anne Makrigiorgos recognised as a Trade Mark Star.

Published by Managing IP, IP STARS recognises firms and senior practitioners who have been identified as leaders in their fields and is considered one the most comprehensive and widely respected guides in the IP profession.

Griffith Hack is pleased to congratulate Janelle Borham on being named president of the Institute of Patent and Trade Mark Attorneys of Australia (IPTA).

Janelle, a principal in Griffith Hack’s ChemLife group, has been a member of IPTA’s Council for 15 years and previously held the position of vice president.

As Australia’s peak professional body for patent and trade mark attorneys, IPTA aims to promote improvements in patent, trade mark, design and plant breeder’s rights laws and regulations; maintain by-laws and a code of ethics for patent and trade mark attorneys; and to encourage communication and knowledge sharing between members.

Janelle steps into the presidency with the aim of supporting and uniting the IP profession, and progressing IPTA’s core mission.

“An objective of my presidency is to restore harmony and balance to the profession, and help all individual members feel supported and proud of their profession,” said Janelle.

“I look forward to taking on an enhanced management role within the organisation, including responding to more sensitive member questions and concerns, working with IP Australia to improve IP laws and their administration, working with IPTA staff, and engaging with Council members and IP Australia.”

Janelle has introduced several progressive initiatives into IPTA’s framework, including an industry-leading program of continuing professional development webinars that are available to the organisation’s membership base of over 900 practitioners.

“IPTA members rely on our Institute for high-quality education and training, so ensuring they have access to frequent and wide-ranging professional development opportunities is an important objective for me.”

Janelle originally started at Griffith Hack in 1994. She provides strategic IP advice to large corporations locally and overseas with a particular focus on food sciences, pharmaceuticals, energy technology and polymers. She is recognised as a leading practitioner by World IP Review, World Trade Mark Review, IAM Patent 100 and IP Stars.

Griffith Hack managing director Aaron LePoidevin commented, “On behalf of everyone at Griffith Hack, we are delighted to see Janelle named president of IPTA. As our industry’s peak professional body, IPTA plays an exceptionally important role in enhancing collaboration, communication and knowledge sharing amongst IP professionals. Janelle’s elevation to president is recognition of her significant contribution to IPTA and the confidence her fellow council members have in her ability to unify and advance the profession.”


Further demonstrating Griffith Hack’s depth of expertise and excellence across patent, trademark and IP law, seven Griffith Hack principals have been individually recognised in this years’ World Intellectual Property Review (WIPR) Leaders Guide – an increase of five listings for the firm since the 2020 guide. We are thrilled not only for the listed IP professionals, but the example they set as high-performing senior female leaders.

Janelle Borham

Janelle is a member of Griffith Hack’s specialist Life Sciences team and Vice President of the Institute of Patent & Trade mark Attorneys of Australia (IPTA). Janelle has over 20 years’ experience providing clients strategic IP advice, with a particular interest in polymers, energy technology, food technology and pharmaceuticals. See Janelle’s full profile here.

Anne Makrigiorgos

Anne Makrigiorgos is the National Practice Group Leader for Griffith Hack’s Trade marks team and a former IPTA President. For over 30 years Anne has advised clients on trade marks, copyright, designs, consumer protection and IP agreements. See Anne’s full profile here.

Dr Kathryn Morris

Kathryn’s area of specialty is patents, including everything from drafting patent specifications to providing advice on patent term. Kathryn’s clients range from small companies and research institutions to large companies both locally and overseas, and span the full chemistry spectrum. See Kathryn’s full profile here.

Emma Mitchell

Emma’s expertise includes commercial contracts (including in relation to licence), supply, export, manufacturing, collaboration, research and development, branding and sponsorship. Emma has extensive experience in both contentious and non-contentious intellectual property matters in many sectors including consumer goods, fashion, design, and manufacturing. See Emma’s full profile here

Leanne Oitmaa

As part of Griffith Hack’s IP law team, Leanne has specific expertise in the areas of telecommunications, optical and photonic technologies, internet applications, e-commerce and mechanical devices. As both a lawyer and qualified patent & trade marks attorney, Leanne draws on her unique skillset to the benefit of the clients she advises. See Leanne’s full profile here.

Nicola Scheepers

Nicola provides strategic advice on a wide range of trade mark issues for banking, FMCG, food service, fashion, pharmaceutical and SME clients, with extensive experience in Australia and internationally. Nicola is renowned for her thorough, straightforward advice and in-depth trade mark issue understanding– particularly the varying requirements of different countries around the world. See Nicola’s full profile here.

Amanda Stark

Amanda started her career in the UK as an IP manager in a biotech start-up and in addition to her Australian credentials, is qualified as a UK patent agent and a European Patent Attorney. Amanda has particular experience in human and animal health and plant biotechnology, lecturing in Australia and overseas on issues around biologics and biosimilars as well as patent strategy. See Amanda’s full profile here.

What is WIPR leaders?

According to its publishers, the WIPR Leaders (the guide) is unique; not “ just another rankings project” and created due to industry demand for an impartial editorial-led guide as to the best of the best in today’s IP industry. Put simply, WIPR Leaders is a one-stop guide to the world’s leading IP practitioners. The directory lists over 1,700 IP professionals across patent, trademark, and copyright practices. Stemming from a four month nomination period which includes views from 12,000 IP professionals, the WIPR research team vetted every nominated professional for suitability.

Intellectual Property Rights are traditionally viewed as an economic tool designed to encourage and reward innovation. While ‘economic’ outcomes and innovation are often associated with profit driven organisations, not-for-profits and community organisations can also make important, innovative contributions to society. One of the pleasures of working in private practice, is the capacity to provide advice and assistance to some of these worthwhile causes. Griffith Hack is proud to offer Intellectual property services to several longstanding pro bono clients.

The Young People in Nursing Homes National Alliance (YPINHNA) is a community-based organisation creating systems change in the disability sector. The Alliance develops novel solutions to wicked problems facing young Australians living in aged care facilities (or at risk of being placed there) with a disability, who also have high and complex support needs.

Australia’s disability sector has in recent years become a highly competitive market due to the National Disability Insurance Scheme (NDIS). Systems, processes and solutions that used to be freely developed and shared between non-profit organisations now have significant commercial value.

Through its submissions to and appearances before the Royal Commission into Aged Care Quality and Safety, YPINHNA has promoted novel and innovative service models which will assist many young Australians have a better standard of care as a matter of right. These models were well received by the Commissioners. The Alliance is the registered proprietor of numerous trade marks including SYSTEMS WRANGLER and SERVICES WRANGLER. YPINHNA’s ownership of these trade marks gives the Alliance the right to stop use of these trade marks on service programs that do not meet the Alliance’s standards of care and compassion.

Dr Bronwyn Morkham, National Director of YPINHNA says that “In this market-driven and highly competitive sector, our reputation and our IP are more important than ever. Trademarks and IP protection have become a key part of our risk management strategy”.

“In the 21st century, a contemporary not for profit community organisation, needs a good head as well as a good heart and through its invaluable advice and assistance on all matters IP, Griffith Hack has provided strong guidance and practical assistance”.

Griffith Hack personnel are proud to have assisted YPINHNA for over 10 years and look forward to maintaining our contribution towards the Alliance’s continuing impact on the well- being of young Australians for many years to come.

Griffith Hack is proud to formally announce the elevation of two high-achievers to the position of Principal, effective as of 1 January 2021.

Patent Attorneys Dr Malcolm Lyons and Georgina Higinbotham have been key contributors to Griffith Hack since joining as trainee patent attorneys.

Managing Director Aaron LePoidevin said that the elevations recognise Malcolm and Georgina’s contribution to delivering great outcomes for Griffith Hack’s clients and developing many of the firm’s young attorneys. 

“It’s fantastic recognition of their client centric approach and the value delivered to clients in Australia and globally. It’s great to see the firm cultivate the IP industry’s future talent. I look forward to supporting Malcolm and Georgina’s continued success with the firm” 

Georgina Higinbotham – Patent Attorney (Sydney) 

A former US patent agent, Georgina has expertise in medical devices including implantable devices and materials and mechanical devices, processing and packaging systems, reactor technology, mechanical devices, energy storage, building products and building and mining equipment. With more than 15 years’ experience working on mechanical devices and a background in physical and analytical chemistry, Georgina has developed a strong capability in medical systems and devices, chemical engineering systems, and systems that require both pharmaceutical or chemical aspects alongside mechanical devices or assemblies.

 “I first qualified and worked as a patent agent in the United States, then moved home to Australia to continue my career. I’ve never regretted the decision to work in IP. It’s a rare job that teaches so much every day. Patent attorneys stand at the crossroads of law, science and business, and no two clients are the same.

For me, the highlight of my job is developing an understanding of not just innovative technologies but also the businesses and people that create them. From the beginning, I was impressed by the thoughtful leaders of Griffith Hack and I am proud that I can step up to lead our team with them.” – Georgina Higinbotham

Dr Malcolm Lyons – Patent Attorney (Melbourne) 

Malcolm trained in chemistry and biochemistry, and now specialises in biotechnology and genomics. He has post-doctoral and industry experience in medical research into various aspects of human health and disease during which he was awarded several prestigious fellowships and published his research regularly. His work extends across the IP lifecycle from analysis of invention disclosures and drafting through prosecution to post-grant enforcement strategy. Malcolm has expertise in patent term extensions for pharmaceutical patents, and discretionary extensions of time.

“After 13.5 years, I’ve now been in the patent profession for about twice as long as I was in research at the lab bench – I guess time flies when you’re having fun! It seems like there’s always something new to learn or a new way to look at something with patents and IP. Whenever I can, I look to our up and coming attorneys to prompt me to keep that fresh approach. I hope that never changes.

With that in mind, it makes sense that relationships are key to this profession. So as a principal, I look forward to a more significant mentoring role for our attorneys within Griffith Hack, and outside Griffith Hack, I aim to spread Griffith Hack’s reach to new clients and strengthen relationships with existing clients.” – Dr Malcolm Lyons

Griffith Hack is thrilled to celebrate the inclusion of several individuals in Managing Intellectual Property’s Rising Star Awards for the third consecutive year.

The Rising Stars list distinguishes some of the IP industry’s best up-and-coming IP practitioners below partner level, who have contributed to the success of their firms and clients. The research for the IP STARS rankings is conducted rigorously and impartially; no firm or individual can pay to be ranked, and there is no fee to participate. 

In the 2020 edition, senior associates Shannon Fati, Jennifer Wyndham-Wheeler and Jeremy Robinson have been recognised. This accolade is well deserved – noting the high standard each of these IP specialists bring in helping protect our clients’ valuable IP. 

Griffith Hack is proud to announce that practice group leader and principal David Hughes was recognised as the Intellectual Property Partner of the Year at the 2020 Lawyers Weekly Awards

The awards showcase outstanding performances by partners, or partner equivalent, across individual practice areas within the Australian legal industry — the only national awards program to do so.

The award tops off a fantastic year of recognition and dedication to the IP profession for both David and Griffith Hack. David joined Griffith Hack’s leadership team in July as a national practice group leader and was more recently recognised as a World Leading IP Strategist in IAM’s Strategy 300.

In a hotly contested category against 8 other IP specialists, David proudly accepted the award during the ceremony.

“An award like this is a reflection of both individual excellence and fantastic team support. Congratulations to David and his team for receiving this recognition. It was great to see our firm represented in such a competitive field,” said Managing Director Aaron LePoidevin who attended the evening gala.

IP Australia is set to implement changes to its schedule of fees, with most of the changes taking effect from 1 October 2020. This article considers changes specifically to trade mark fees; however changes also apply to patents, designs and plant breeder’s rights. A complete list of the fee changes can be accessed here.

Background

Following IP Australia’s public consultation in 2019 and a 2016 inquiry by the Productivity Commission into Australia’s intellectual property arrangements, IP Australia has made a number of amendments to the Intellectual Property Laws Amendment (Fee Amounts and Other Measures) Regulations 2020 (Cth)). 

The fee review is intended to: 

  • Support innovators by balancing fees with the cost of doing business;
  • Increase flexibility and efficiency for IP Australia and its stakeholders; and
  • Explore the impact fees have on the quality of IP applications and competition in the marketplace.

During further public consultation conducted in December 2019, proposed changes to cost awards for oppositions and hearings were identified as an area of concern. These changes have not been implemented and will undergo further consultation and consideration.

Trade Mark Fee Changes

The key trade mark official fees changes are: 

  • Official fees payable for a standard trade mark application filed online will increase from AUD 330 to AUD 400 per class;
  • Application fees for International Registrations Designating Australia (IRDAs) will increase from AUD 350 to AUD 400 per class. Changes to fees for IRDAs will take effect from 7 November 2020;
  • Filing costs for series trade marks will increase from AUD 480 to AUD 550 per class;
  • Fee increases of AUD 100 will apply to applications filed outside of IP Australia’s online service portal, while fees for using IP Australia’s online goods and services ‘pick list’ will remain unchanged. This reflects IP Australia’s intention to encourage greater use of its online service portal.

Other changes include:

  • Fees for requesting trade mark opposition hearings will be reduced from AUD 600 to AUD 400;
  • Fees for attending trade mark hearings will increase from AUD 200 to AUD 800 per day for in-person attendance and AUD 600 per day for attendance via telephone or video conference (less any amount paid for requesting a hearing);
  • New fees of AUD 400 will apply to requesting a hearing based on written submissions only, or for a written decision to be issued (less any amount paid for requesting a hearing);
  • A new expedited postage option is available for urgent document requests. Requests for expedited postage will attract an additional fee of AUD 20;
  • In rare cases where registration of a trade mark application has been delayed for a period of 10 years or more, renewal fees paid via IP Australia’s online service portal will decrease from AUD 450 to AUD 400.

We recommend trade mark owners interested in taking advantage of current lower fees act before these fee changes take effect. Please contact your relevant Griffith Hack Attorney or e-mail  to discuss this further.

We are delighted to announce that principal David Hughes has received recognition as one of the World’s Leading IP Strategists in this year’s IAM 300.

Over David’s 30 year Intellectual Property career, he has championed a strategic and holistic approach when considering client’s IP portfolios. Always going the extra distance to understand his clients’ businesses and key drivers, David ensures buy-in from key stakeholders in order to maximise the potential of their IP.

IAM Editors note: ‘Outstanding critical and commercial thinker David Hughes is an IP advisory heavyweight who is not afraid to push boundaries; highly innovative, he explores new IP strategy approaches alongside client service delivery models, working brilliantly with people at multiple levels within an organisation.

Griffith Hack congratulates David for this outstanding personal achievement, and his continued contribution to the broader IP profession.