Written By Eileen Luo
What is intellectual property law?
Intellectual Property Law relates to Intellectual Property (IP). IP is a category of intangible property that includes intangible creations of the human mind that can be legally owned. An individual’s IP can be protected and enforced through rights or mechanisms such as copyrights, patents, trademarks, registered designs and geographical indications. IP law also includes plant breeder’s rights and circuit layouts.
Briefly speaking, copyright is a legal term used to describe the rights that creators have over their literary or artistic works. Works covered by copyright range from books, music, paintings, films and sculptures to computer programs, databases, advertisements, maps and technical drawings.
Patents are exclusive rights granted for an invention. A patent provides the patent owner with the right to decide how or whether the invention can be used by others.
Trademarks are signs that are capable of distinguishing the goods and services of one enterprise from another.
Geographical Indications are signs used on products that have a specific geographical origin and possess qualities or a reputation due to that origin.
Registered designs are simply industrial designs constituting the ornamental or aesthetic aspect of an article. A design may consist of three-dimensional features such as the shape or surface of an article or of two-dimensional features such as patterns, lines or colours.
Dr George Raitt
Consultant at Piper Alderman
Dr George Raitt first became a partner in a law firm (Blake Dawson Waldron, now Ashurst) in 1988, following the usual trajectory of several years as an associate then senior associate. He is now a Consultant with his current law firm Piper Alderman, as well as a sessional lecturer with Monash University Faculty of Law.
Interview
How did you get into the area of Intellectual Property, and what sort of work do you engage in?
Law was not my first degree, as I previously completed a commerce degree and qualified as a chartered accountant, practising in tax. It was tax law that induced me to go back to study law. In those days the High Court was very ‘pro-taxpayer’ and the approach of strict interpretation contributed to the success of what came to be known as ‘artificial and contrived’ schemes to legally avoid tax. This led to the ‘bottom of the harbour’ scandals that resulted in more complex tax laws to combat avoidance, but also legislative support for a more purposive approach to statutory interpretation.
My initial area of legal practice was tax law. I did not want to be confined to tax law, and developed experience across the field of corporate and commercial law, including competition law.
Over a period it happened that my client base included a broad range of clients for whom intellectual property was fundamental to their activities. This included start-up companies developing businesses based on novel technology protected by patents and trade secrets, large and small manufacturing corporations for which IP was key, and not-for-profit medical and scientific research organisations. In most cases, clients have patent attorneys to pursue patent protection.
What does an intellectual property lawyer do?
The commercial lawyer’s role is to ensure that ownership and licence rights are secured, and to negotiate commercial deals, from raising venture capital and related loan funding to development collaborations and license agreements, and to ensure tax concession for R&D are secured. So typically what you are doing is negotiating and drafting agreements to give effect to commercial transactions involving intellectual property, using your knowledge of intellectual property laws as a framework. You may also need to advise in detail on available forms of intellectual property protection, ownership issues, and strategies for commercialisation.
How do the Intellectual Property branches (Patents, Copyrights, Trademarks, Design) differ in practice and how should students interested in Intellectual Property decide which area to specialise in?
Most businesses rely on an intellectual property strategy that uses multiple kinds of IP rights and consequently require input from a range of professionals, from scientists, IT experts, design engineers, patent attorneys and lawyers. For example, medical research typically focusses on patent protection, because venture capital investors want to see a strong patent position to justify investing in development. However, commercial exploitation generally requires more extensive protection, e.g. trade secrets and trademarks. There is often an overlap between trademarks and copyright, as artwork involves copyright. Computer software would be protected by copyright and in some cases patent rights. Products such as the iPhone are protected by a raft of patents, design rights, trademarks and copyright. Lawyers tend to specialise to a degree within these areas, which all have well-known similarities and differences. Often students have some background interest in particular creative industries which will drive their interest in particular areas of IP law. I would say that thinking about the kind of clients and industry you want to work with could be just as important to developing a speciality as finding an area of law with which you have an affinity.
“There is often an overlap between trademarks and copyright, as artwork involves copyright. Computer software would be protected by copyright and in some cases patent rights. Products such as the iPhone are protected by a raft of patents, design rights, trademarks and copyright.”
What is the most challenging part of being an Intellectual Property lawyer?
While in theory, we want to use IP rights to give clients a commercial advantage, we find in practice that clients are bringing their technology to consumers in competitive markets where rivals are continually trying to develop products with equivalent or better functionality, and in doing so to work around or erode your client’s IP rights. So the challenges facing advisers across all areas of IP protection are not merely how to apply the law to protect a given technology or product, but how to do so in a crowded market that maximises the client’s chances of enduring effective protection, while minimising the risk of being sued for infringing the rights of others. In doing so you will be working at the cutting edge.
What are your top tips for law students who want to practise in intellectual property in the future?
I suggest students who are interested in intellectual property should get a good grounding in various areas of intellectual property law while at university.
For the reasons provided in the previous two questions, I tell students that familiarity with the principles and rules of the various forms of intellectual property protection is just a start. Applying this knowledge to innovative activities requires some creativity and experience, which you will get with any of the many law firms practising in the area. The economic and commercial realities of each of the creative industries are things we cannot typically teach in law school, as commercial practices tend to be industry-specific. However, from the cases, you study you will see every mistake that has been made and should be well placed to help clients navigate around the traps.
What’s the most fulfilling part of your job?
The application of legal principles generally, not just IP related, to clients working in R&D in a variety of scientific fields is challenging, as in any area of law. But beyond that, the nature of the scientific and technical work being undertaken is interesting and at times exciting to be part of, particularly in the case of not-for-profit medical research, where clients are driven by a desire to cure diseases and improve the quality of life of people around the world. Helping these clients succeed, overcoming many obstacles has been probably the most fulfilling part of my commercial legal practice.
“The nature of the scientific and technical work being undertaken is interesting and at times exciting to be part of, particularly in the case of not-for-profit medical research, where clients are driven by a desire to cure diseases and improve the quality of life of people around the world.”
How do you manage your work-life balance?
It was mainly through dealing with scientific researchers, and particularly addressing intellectual property ownership issues with Ph D students, over a long period that provoked me to undertake postgraduate research. A coursework masters in tax law was useful to re-introduce me to study, but at the time I was looking for an area of research outside legal practice, so completed an MA and PhD in art, literature and film. While cognizant of copyright law, the subject of my research was more to do with the creative process, so that research provides a kind of counterpoint to the work I do now teaching copyright law. Studying while practising law does not contribute directly to work-life balance, but you will find most lawyers have outside interests, though only a few perform in rock bands.
How do you think the intellectual property space will develop in the future and do you have any tips for students who want to ensure they can keep up with these developments?
Most lawyers and judges are not good at predicting the future. There would not be so much litigation if lawyers had better foresight. We have seen that scientific and technical knowledge progresses faster than the law can keep up. Because of the huge costs of R&D and commercialising new discoveries, there are major hurdles to be encountered protecting new innovations and bringing them to market. There are also major challenges ensuring equitable access to new products by all consumers whose quality of life can be improved. We see concern around the world at the power of digital platforms, which raise copyright, privacy and competition law issues.
While technology moves faster than the law, you will find too that the law moves so fast it is a challenge for lawyers to keep up. Do not be surprised if the law you studied at law school has changed by the time of your graduate year. This is one reason why the analytical skills you acquire can be equally if not more important than learning a few rules, which you can look up later in books anyway.
“While technology moves faster than the law, you will find too that the law moves so fast it is a challenge for lawyers to keep up.”
Suggested Electives/experience
Students interested in pursuing a career in Intellectual Property would benefit from engaging with the following Monash electives and opportunities:
Electives:
Introduction to Intellectual Property Law (LAW4703)
Copyright and designs (LAW4341)
Patents, trade marks and unfair competition law (LAW4342)
Experience:
Become a student volunteer at Arts Law Centre. Requirements:
At least 3rd year law student
Completion of Intellectual Property or Media Law (LAW4316) units
IN THE NEWS
Countries Are Adapting Intellectual Property Laws to Prioritise Health During COVID-19 (the wire, 2020)
Nirmalya Syam writes on the difficulty of manufacturing rapidly and at a mass-scale in the midst of the Covid-19 pandemic due to the existence of patents.
“Till date, the national measures that have been adopted by different countries largely focus on measures enabling ministries of health to grant compulsory licenses or government use authorisations with some countries also offering indemnity against IP infringement proceedings and use of competition law.
Canada enacted the COVID-19 Emergency Response Act, which allows the government to issue a compulsory license without first negotiating with the rights holder, or establishing its own ability to supply a product, and the patent holder is only entitled to receive an amount as remuneration instead of a compensation.”
US says Chinese hackers targeted coronavirus vaccines (ABCnews, 2020)
"There are literally hundreds of millions of dollars worth of trade secrets, intellectual property and other valuable information that has been stolen," said William Hyslop, the US attorney for the Eastern District of Washington state.”
learn more about intellectual property
Lessons from the Australian Intellectual Property Report 2020 (Allens, 2020)
Paul Mersiades and Jessica Ortne summarise the key takeaways and trends identified in the Intellectual Property Report 2020, published by the Office of the Chief Economist of IP Australia.