General Enquiries:office@whlaw.com.au
Perth:+61 8 9481 2040
Geraldton:+61 8 9921 2344
Intellectual Property, Information Technology & Software
IP Contracts
Make an Enquiry
Our expertise in IP contracts includes:
- Advising on commercial transactions where the major assets are intellectual property
- Drafting, negotiating and advising on a wide range of agreements including:
- licence agreements/EULA's
- reseller and distribution agreements
- maintenance, support and service level agreements
- subscription and SaaS agreements
- hosting agreements
- cloud agreements
- website and app T&C's
- confidentiality agreements
- consulting agreements
- cloud agreements
- research and development agreements
- commercialisation agreements
- plant breeder’s rights agreements
- assignment agreements
- Advising on IP ownership structures and assignments of IP
- Advising on buy-sell agreements and M&A transactions
- Advising on termination of licence provisions
- Advising in relation licence compliance and software licence audits
- Advising on warranties (including exclusions and liability limitations)
Click to view
Our notable experience includes:
- Advising on the intellectual property aspects of licensing arrangements of a major Australian wine producer
- Acting in a wide range of matters for clients involved in consumer products, agribusiness, wine and processing relating to the commercialisation of intellectual property
- Prepared suite of software licencing, maintenance and support agreements for spatial software developer (Australia and USA)
- Prepared suite of software licencing, maintenance and support (including service level) contracts for Tier 1 mining and energy software vendor
- Reviewing standard form procurement contracts offered by BHP, Rio Tinto and FMG
- Advised large private industrial company in relation to Oracle software licence audit, including compliance with licensing terms and challenging licence fees demanded for virtual machines and multiple software instances
- Advising ASX listed property company in relation to terms of Microsoft Dynamics enterprise software licence
- Advising large agribusiness in relation to Telstra cloud contracts and licence terms
- Acting for numerous software and IT related start-ups, advising on all legal aspects of their businesses
- Prepared and reviewed software maintenance and support agreements and SaaS agreement for many clients
- Prepared numerous website and app T&C's
IP Portfolio Management, Strategies & Audits
Make an Enquiry
Our lawyers have experience in identifying, registering and enforcing IP rights in Australia and overseas for our clients. We work with emerging, medium and large organisations and businesses to help them identify, protect and enforce their intellectual property rights.
Our expertise covers the breadth of intellectual property law, including contentious and non-contentious assistance with digital assets, trade marks, branding, copyright, domain names and cybersquatting disputes, search engine optimisation, social media, confidentiality and classified information, registered designs, geographical indications for foods and wines, and plant breeder’s rights.
We assist clients in various industries to effectively manage their IP portfolios. This expertise includes:
- Strategic management of trade mark and IP portfolios
- Managing large and dynamic trade mark portfolios for various clients including clearance work for advertising and promotional campaigns and advising on branding strategies
- Conducting due diligence investigations and IP audits
Click to view
Our relevant and notable experience includes:
- Advising and conducting due diligence on the intellectual property portfolio of a client to support an IPO on the ASX, including the restructure and negotiation of agreements for the ownership of intellectual property
- Advising and conducting due diligence on the intellectual property portfolio of a client to prepare them for selling their business
- Conducting audits for various clients including reviewing processes in relation to the creation, exploitation and protection of intellectual property rights
- Conducting portfolio reviews for clients to ensure that trade mark portfolios are streamlined and that only relevant trade marks continue to be renewed in various jurisdictions
- Advising various companies on social media issues relating to misleading and deceptive conduct, privacy laws and unfair competition issues in search engine optimisation
Copyright
Make an Enquiry
Our lawyers have experience in protecting copyright in Australia and overseas for our clients. We work with designers, writers, musicians, artists and content creators, from individuals and sole traders to medium and large organisations.
Our expertise includes:
- Contract review and drafting, with a focus on protecting and licensing copyrighted items
- Strategic management of copyright in digital assets, musical works, literary works and artistic works
- Conducting due diligence investigations and IP audits
- Defending allegations of copyright infringement.
- Preparing letters of demand relating to copyright infringment
- Preparing deeds of assignment of copyright for use with employees, contractors and freelance developers
Click to view
Our relevant and notable experience includes:
- Representing various clients in defending allegations of infringement relating to musical works, literary works, artistic works including architectural drawings
- Advising a client on and preparing a strategy for tracking and recording the creation of copyright works during a hackathon
- Preparing letters of demand for a client where drawings and text were reproduced and used without authorisation
- Preparing numerous deeds of assignment of intellectual property for many clients for use with employees, contractors and freelance developers
Trade Mark & Branding Registration, Strategy & Enforcement
Make an Enquiry
Our lawyers advise Australian and international businesses on trade mark and branding strategies and protection, locally and internationally.
Our expertise includes:
- Brand clearance work for advertising and promotional campaigns and advising on branding strategies in both Australia and overseas
- Trade mark registration, filing and prosecution of trade marks in Australia and overseas
- Monitoring trade mark watching services in Australia and internationally
- Advising on trade mark infringement and passing off matters
- Trade mark portfolio management including streamlining trade mark registrations
- Trade mark renewals – in addition to renewing Australian registrations, we also have a well-established network of associates to assist with renewals in overseas jurisdictions
- Trade mark portfolio reviews – Annual reviews to ensure that our client's portfolios remain strategically relevant in light of anticipated business objectives
- Drafting evidence of use in support of trade mark applications where applications have been refused and in support of and defending opposition matters
- Preparing submissions in support of trade mark applications and oppositions
- Advising on and applying for certification trade marks in Australia
- Providing advice on actions to recover domain names
Click to view
Our relevant experience includes:
- Acting for a well-known Australian wine manufacturer regarding a strategy for protecting wine labels internationally where a competitor had registered a similar trade mark in certain countries
- Acting for a WA based producer of food products defending oppositions to its trade marks
- Representing client in an appeal to the Federal Court involving an opposition to its trade mark application
- Advising an applicant on process required to obtain approval of a Certification Mark for services relating to persons with hearing impairments
- Acting for a world famous street artist in relation to opposing misleading trade marks sought in Australia
Commercialisation Advice - IP & IT
Make an Enquiry
We have experience and expertise in the full range of commercialisation services. We advise clients on the commercialisation of their IP and IT, helping to ensure they are able to maximise the return and minimise the risks involved.
Our lawyers can advise if you are looking to licence your technology to an existing company or set up a new company to develop the technology.
Our expertise includes:
- Commercialisation strategies
- IP management and protection strategies, an essential part of the commercialisation process
- Assisting with grant applications
- Preparation and advising in relation to:
- shareholder agreements
- capital raising and subscription agreements
- IP assignment agreements
- employment and consulting agreements
- Advising on, reviewing and drafting privacy policies and website terms and conditions
Click to view
Our relevant and notable experience includes:
- Acting for Coogee Chemicals in relation to commercialisation with CSIRO of novel industrial technology
- Acting for numerous software and IT related start-ups, advising on all legal aspects of their businesses and commercialisation strategies
- Acted for First Physio in relation to commercialisation of the Halo medical device- shareholder agreements, subscription agreements, IP assignment agreements, sale agreements
- Acting for GSS and GMapps in relation to IP ownership arrangements with respect to novel minerals exploration technology- shareholder agreements, subscription agreements, IP assignment agreements, etc
- Acting in a wide range of matters for clients involved in consumer products, agribusiness, wine and processing relating to the commercialisation of intellectual property
- A Director of Williams + Hughes, Damian Quail, has served on the Board of Directors of several technology companies, including epiTactix, a CSIRO spinout developing novel gallium arsenide semiconductors, and IMapps, a developer of mobile phone apps