With innovation at the core of Davies Collison Cave’s work, optimal client outcomes necessitate creativity and agile thinking. SATLA’s 2021 event ‘When Worlds Collide: Exploring the Intersection of Science and IP Law’ examined the intersection of science and IP law, with a focus on tackling new development of advances in the science and technology fields. Now, we talk to panellists Aaron Yates (Principal Lawyer), Fiona Galbraith (Managing Associate Lawyer) and Andrew Sutherland (Senior Associate Lawyer) about the role of creativity in their work and what Davies Collison Cave can offer prospective clerks.

Andrew Sutherland is an IP and technology lawyer at Davies Collison Cave, who advises clients on all aspects of IP commercialisation and licensing, as well as IP and commercial disputes. He provided great insight into ways of thinking and practicing in these rapidly-changing fields during SATLA’s ‘When Worlds Collide’ event.

Q: How do legal issues in the IP field affect innovation and creative thinking in science and technology fields?

AS: IP can drive innovation as well as act as a barrier to innovation. On the one hand, the availability of IP protection acts as an incentive for investment to support innovation. IP assets can also attract licensing and collaboration opportunities, which may lead to the development of new and improved technologies. On the flipside, if a proposed project will infringe a third party’s IP, the project cannot proceed (without the risk of legal action) unless a licence is secured, or the relevant rights are otherwise acquired.

Q: How does working at the forefront of technology, with a focus on new innovations across all industries, contribute to firm culture at DCC?

AS: Acting for innovative clients constantly offers interesting and challenging opportunities. DCC’s broad and established practice spans all industries and technologies. There is significant variety on offer both in terms of the types of clients the firm represents, as well as the types of matters the firm works on. Working at DCC is engaging and satisfying, and this contributes to job satisfaction and firm culture.

Fiona Galbraith is a lawyer and a patent and trade marks attorney, primarily involved in resolving intellectual property disputes. With a chemical engineering background, Fiona has a particular interest in enforcing intellectual property rights that protect innovative technologies.

Q: What crossover do you have in your work as a patent attorney and that as an IP lawyer, particularly with respect to the rapidly-developing nature of these areas?

FG: The main area of cross-over between working as an IP lawyer and being a patent attorney for me is when I'm working on patent–related disputes and I need to understand what has happened during the life of the patent, from when it was drafted and filed as a patent application to becoming a granted patent (this is usually called the "prosecution" of the patent).  A patent attorney is principally responsible for drafting and prosecuting a patent to grant.  Having worked as a trainee patent attorney and patent attorney I can better understand what has happened during "prosecution" (any why) than if I hadn't had this hands on work experience, and that background knowledge can be very helpful when I am looking at the validity of a patent in a dispute-context.

Q: You also work as a volunteer lawyer for the Arts Law Centre. Is there much crossover in how you think about legal issues for arts or art-related businesses and some of the industries you engage with through DCC, including pharmaceuticals and medical devices?

FG: At the heart of most of the work I do are the questions of (1) what type of IP might protect a product (eg, copyright, trade mark, design, patent), (2) who owns the IP, and (3) whether the IP might be infringed by a third party's activities.  In that sense, there is significant cross-over between arts-related IP work and pharmaceutical and medical device related IP-work.

Aaron Yates is a Principal lawyer at DCC and practices in intellectual property litigation. Among other experiences, Aaron has been involved in a number of patent, design and trade mark proceedings in the Federal Court. In SATLA’s ‘When Worlds Collide’ event, he delved into a number of key cases in patent law, including Sequenom, and the complexities arising from the development of IP law in Australia.

Q: How do Governments deal with the tension between IP rights and competition law and policy?

AY: Governments around the world continue to grapple with the apparent tension between the monopoly rights conferred by IP on the one hand and competition law on the other. In the patent context, the prerequisites for a valid patent (e.g. that the invention is new, inventive and properly described) coupled with patent infringement exemptions (e.g. for acts performed for experimental purposes), seek to strike the appropriate balance; facilitate follow-on research; and encourage researchers to publish information regarding their inventions rather than keeping such information secret.

The “balance” may be informed by, for example, prevailing economic conditions (e.g. whether a country is a net importer or exporter of technology) and obligations under international agreements.

Q: In SATLA’s 2021 event with DCC ‘When Worlds Collide’ you discussed Sequenom. What impact could the decision have on patent law in Australia?

AY: The decision, which is currently on appeal, has the potential to impact on the patentability of new and inventive diagnostic methods and tests. The decision follows decisions from the High Court finding that methods of medical treatment may be patentable but isolated DNA per se may not.

Q: How can students interested in pursuing a career with DCC engage with the firm during their degree?

FG:

• DCCL has a formal clerkship program, and applications for the Melbourne 2021-22 program open in late June 2021. The three-week clerkships run between November 2021 and winter 2022. Typically about 5-6 clerks join the program, and typically only one clerk is with the firm at any time.

• DCCL publishes regular legal updates and holds regular webinars (or in-person seminars) for clients and contacts.  Our website www.dcc.com has details of our publications and events. Our LinkedIn page also promotes our publications and events.

To learn more about the intersection of science and IP law and how Davies Collison Cave is working to provide legal solutions to innovation by watching SATLA’s recording of ‘When Worlds Collide’. Davies Collison Cave will be sharing more about what it’s like to work at the firm in SATLA’s forthcoming Careers Guide – be the first to gain access by becoming a SATLA member at satla.net/join.