Lawyer Monthly Magazine - May 2019 Edition

MAY 2019 43 Expert Insight www. lawyer-monthly .com can significantly improve prospects in litigation later. When acting for a rightsholder in relation to a contentious issue that has already developed, we generally recommend that we evaluate the strength of the IP right before commencing proceedings, since validity will always be an issue up for grabs in Australia, and a revocation challenge will be heard together with an infringement action. This may range from a full search and validity assessment of a patent to a more limited analysis. In some cases, the validity analysis may identify issues that should be addressed before issuing of proceedings. Filing an amendment to a patent is generally much simpler in the Patents Office than in litigation in Australia and so it may be advisable to amend the patent before litigation kicks off. Given the level of potential discovery in Australia, the client should also ideally conduct an audit of relevant correspondence and documentation. How does the resolution of IP disputes compare with resolution of other commercial disputes? In Australia, there is no specific IP Court, however, particular practices are generally followed in IP litigation, which may differ from the practice in other commercial cases. It is important to be aware of these practices and plan the litigation accordingly. As our firm deals only with IP cases, we are very familiar with these peculiarities. It is a particular feature of IP litigation, and patent litigation especially, that there will usually be a counterclaim for invalidity. As a result, both parties are in the position of advancing their own case and simultaneously defending the other party’s case. Further, there is a substantial interplay between each side of the case – an argument for infringement can potentially have an impact on the invalidity case, and vice versa. To successfully navigate these ‘squeezes’, familiarity with all aspects of patent law is key. How does IP law keep pace with technological change, and how does your firm keep up with developments in both technology and the law in the IP space? At Shelston Lawyers our entire focus is IP. Our lawyers join our team because they want to practice in IP and so it is not surprising that they have a natural inclination towards innovation and technology. We also have the advantage of drawing on the depth of expertise of our associated attorney practice to support any particular litigation case, whether it be related to immunology or mining engineering. While technology is constantly changing, the law is sometimes slow to catch up. In many instances, the law operates in a technology neutral way but there are certainly some aspects of the law that have struggled to adequately deal with technological reality. This can be seen, for example, in the copyright sphere, where the Internet has infinitely changed the way material can be copied. In Australia, there have been attempts to modernise legislation where necessary, although in some cases this has only come after changes in other countries. An example is the amendment of the copyright legislation in 2015 to introduce website blocking injunctions for overseas websites, requiring an ISP to disable access to a website, given that an Australian injunction may be ineffective against an offshore online infringer. The proper extent of safe harbour provisions in copyright law is another area of ongoing debate in Australia in efforts to balance the rights of rightsholders and users in an everchanging technological context. LM Katrina Crooks Katrina Crooks is a Principal of Shelston Lawyers, one of Australia’s leading special- ist IP law firms, based in Syd- ney. She co-heads the firm’s litigation team, which acts for a variety of clients includ- ing large multinationals and leading Australian corporates in a range of IP disputes. Dual qualified as a lawyer and patent attorney, Katrina has a wealth of international IP litigation experience. Firm Profile Shelston Lawyers works close- ly with its associated patent and trademark attorney firm, Shelston IP, leveraging the outstanding technical exper- tise of its attorneys. Contact Katrina Crooks Principal, Shelston Lawyers Level 9, 60 Margaret Street, Sydney NSW 2000 Australia P: +61 2 9777 2450 E: KatrinaCrooks@ShelstonIP. com | www.ShelstonIP.com