The intellectual property law landscapes in Australia and New Zealand are considered by those in the industry to be among the most dynamic in the world. This is not only because of the fiercely competitive legal market and active IP office, but also due to the innovative, knowledgeable and technically adept corpus of lawyers and attorneys in each jurisdiction.

 

A cursory glance at the quantum of work flowing through the Australian and New Zealand IP offices indicates busy times ahead for full-service and specialist firms alike.

 

Intellectual Property Office of New Zealand (IPONZ) statistics indicate that the number of patent and trademark registrations (2,500 and 18,000 respectively) increased by 30% in 2007. The situation is largely analogous in Australia, with IP Australia having handled 31,915 patent and 50,123 trademark applications.

 

These numbers are expected to be bolstered by the extension of the work sharing program with the US. While there will continue to be plenty of ‘front-end’ work to keep firms busy in the coming years, the amount of ‘back-end’ work – enforcement, protection and litigation – is also expected to take off as companies continue to realise the commercial utility of protecting their IP rights.

 

While any growth in this regard will be mediated, as always, by judicial interpretation and legislative change, how it is distributed throughout the legal market is an entirely different question.

 

The current legal-scape in both countries would seem to suggest that the battle between full-service and boutique is running at 50:50, with perhaps the larger firms holding the upper hand because of what is perceived to be their superior litigation capabilities.

 

However, there are signs that the balance of power is starting to shift in favour of specialist and boutique practices – a phenomenon which is driven by both structural and personnel changes at the firm level, as well as a distinct shift in the behaviour of clients.

 

In a saturated legal market where larger firms will face difficulties in maintaining and growing their market share, these firms are already finding themselves having to employ novel modes of practice development – namely a more ‘focused’ approach to work in the area, involving, inter alia, the concentration of talent and resources in key areas.

 

“Baker & McKenzie always meets and exceed our expectations,” one client said of the international firm’s IP law services. Although the firm boasts expertise in all aspects of the protection and exploitation of IP rights – from trading names and design registration to trade secrets and marketing issues – clients felt that Bakers’ competitive advantage was its expert counsel on litigation-related issues. ALB leading lawyer Robert Arnold was praised by clients for his anti-piracy and anti-counterfeiting knowledge, with one client noting that he was one of “the best lawyers in the region in terms of enforcement”. Arnold’s colleagues Adrian Lawrence and Ross McLean were also notable mentions, with McLean singled out for being “extremely knowledgeable when it comes to technology licensing”.

 

National firm Corrs Chambers Westgarth was noted as having a “formidable IP team, especially on the contentious issues”. ALB leading lawyers, Melbourne-based Stephen Stern and ex-Minter Ellison IP head Odette Gourley, based in Sydney, were said to be “unbelievably good at successfully resolving the most complex of matters”. In relation to his work with Cadbury-Schweppes, Stern was mentioned as being “a credit; a really talented lawyer and a clear communicator”, while Gourley was described by clients and peers as “technically superb” and “very, very knowledgeable”.

 

Specialist IP firm Banki Haddock Fiora was roundly noted as “always delivering cost-effective and professional service”. The accessibility of its partners was noted as being particularly appealing to clients. Name partners Peter Banki and Richard Fiora were mentioned for their “detailed knowledge” of the TMT industry. The most glowing praise, however, was reserved for ALB leading lawyer Kate Haddock. Clients and peers alike singled Haddock out for her “attention to detail” and “intricate knowledge of the major issues in the market”.

 

Davies Collison Cave was also mentioned by clients for its “excellently qualified attorneys and lawyers”. Although the firm has extensive operations in Melbourne, Brisbane and the ACT, it was its Sydney practice that warranted the most client mentions. Sydney-based Marion Heathcote was mentioned as being “brilliant in regards to all TPA-related issues”. Heathcote’s colleague Trevor Stevens, senior partner of the firm’s trademarks group, was noted as being “brilliant in all types of trademark litigation”. Meanwhile, clients also held Melbourne-based Adam Sears in high regard for his “proficiency in passing off”. The recent addition of high profile Melbourne-based partner Ian Pascarl from top-tier firm Blake Dawson was considered by others in the market to be a “clear indication of things to come” from this firm.

 

As one of the first law firms in Australia to specialise exclusively in IP law, Spruson & Ferguson was noted by peers to be “among a handful [of firms] at the very top of the pile”. Clients were similarly enthused, noting that one of the firm’s strengths was its ability “to offer the whole gamut of IP services, from advice to defense”. Principal Simon Williams was noted as being “an extremely adept litigator”, while fellow principal Khajaque Kortian was mentioned by clients for being “up to speed with new technologies”. ALB leading lawyer John Afaras received kudos from clients for both his experience and wealth of industry knowledge. One client described Afaras as “a leader in the industry”. “He has a good track record and it’s a major reason why we use him in pretty much all of our IP matters,” said another.

 

Although Gilbert + Tobin is an international firm, clients noted that its Sydney-based IP team is leading the way. The recent addition of ALB leading lawyer and partner Anthony Muratore from Freehills was considered “very damaging to Freehills’ IP practice”, not only because the firm lost Muratore’s “worldly industry knowledge”, but also because a number of high profile clients followed him. Peers described young lawyer Siabon Seet as “one to watch”, with clients lauding her “outstanding litigation skills and attention to detail”.

 

Henry Davis York was praised for its IP work with both private and public sector clients. IP practice leader Bob Jordan was described as “capable and professional” in all areas of IT, while colleague Michael Greene was said to be “very good when IP matters turn very bad”. Clients valued Stephen Gorry’s counsel because it was “always sound”, and also because he is an “interesting character”.

 

TressCox’s lawyers rated highly with clients because they offer advice that is “backed by detailed industry knowledge and a practical awareness”. Those surveyed by ALB said the Sydney team’s core strength was its prowess in merchandise protection, where partners Mark Bamford and Peter Thompson are both “very good operators”.

 

Boutique firm Truman Hoyle was rated highly among clients for its “practical approach to IP law issues”. Heavily involved in enforcement and commercialisation of IP, Shawn Skyring and Mark Vincent were considered by a prominent Australia-based client to be “very hard to beat in Sydney”.

 

Addisons inherited much of its IP team – and a number of high profile clients – from the now-defunct international firm Coudert Brothers in 2005. Clients of Karen Hayne and Martin O’Connor explained that they had followed these two lawyers, among others, because of their “client handling skills”, their “ability to deliver results” and their “willingness to sit down and talk with you”.

 

 MELBOURNE

Specialist attorney patent practice FB Rice & Co was described by clients as “thorough”, “efficient” and “cost-effective”. Both peers and clients noted that the firm’s core strengths rested in its prosecution and enforcement work – areas in which it was considered to be “brilliant” and “without peer”. The firm’s credentials are reflected in its extensive portfolio of blue-chip clients, which include the likes of Qantas, Diage, Conde Nast publications and National ICT Australia.

 

Pan-Australian firm Griffith Hack received plaudits from clients who appreciated “the close eye they cast over matters” and the firm’s “high quality, commercially sound advice”. The addition of ALB leading lawyer Wayne Condon from Clayton Utz in 2007 was seen as a “coup” for the firm, with peers noting that it was important in cementing Griffith Hack’s position as a leader in the Melbourne IP law market. Clients spoke very highly of Condon’s patent litigation skills, suggesting that he was “the first choice for counsel” in this area. Melbourne-based duo Benny Browne and Russell Berry also gained praise from clients. Clients of Berry said they actively sought his advice because of his “broad market knowledge” and awareness of “the issues that affect business”.

 

The burgeoning IP practice at Middletons was singled out by clients for its “innovative and out-of-the-box approach”. Although the firm has lawyers spread across Melbourne and Sydney, clients felt that its Melbourne office was leading the way. Melbourne-based partners Tony Watson and Peter Howard were said to provide “timely advice in the passing off and unregistered rights areas”, with Howard valued for his “private sector business experience”.

 

Private and public sector clients alike sung the praises of Maddocks as a firm which always “delivers fantastic results”. Peers mentioned that while the firm has always been highly regarded, its IP practice has remained somewhat underrated. “Maddocks has a strong IP practice in Melbourne; its strengths are in the IP side of IT,” a source told ALB. Clients also held the domain protection services offered by the firm in very high regard. Craig Ng was singled out as being “brilliant and always on-the-ball”, while Michelle Dixon and Robert Gregory were both mentioned for being “excellently competent”.

 

Phillips Ormonde & Fitzpatrick and affiliated law firm Phillips Ormonde & Fitzpatrick Lawyers were mentioned by clients for being “supreme strategists”. One client noted that it was the firm’s strategy oriented advice that had allowed his business to grow and develop. Virginia Berniac-Brooks, Rod Saunders and Greg Chambers were said to form the nucleus of an “extremely diligent” litigation team, one which peers mentioned as being able to attract and keep an impressive corpus of clients, including Procter & Gamble, Coca- Cola and Nufarm.

 

Sydney and Melbourne-based firm Arnold Bloch Leibler’s technology & IP team was noted by clients for its “depth and breadth of experience”, with its Melbourne office handling most of the firm’s IP work. Head of the firm’s technology group, partner Michael Dodge, was considered “invaluable for his specialist knowledge of the IT landscape”. Jane Sheridan and Steven Klein were also highly praised by the firm’s corporate clients for their “knowledge of IP issues in large corporate transactions”.

 

Full-service firm Madgwicks was described by clients as having a “small but technically astute” IP team. Clients said the small size of the team resulted in “very quick turnaround and cost-effectiveness”. Partner Rick Goldberg received a special mention from clients for his “outstanding technical knowledge” in the area.

 

Technology specialist, Fortitude Valley-based Redchip, was commended by clients for its intimate understanding of the IP needs of “growing businesses and companies on the rise”. Clients held the counsel of managing partner Gavin Barnes in high regard, and noted that his advice was always “focused and comprehensible”. Consultant Steve Menotti also received praise for his “outstanding knowledge of IP licensing”.

 

Cooper Grace Ward once again polled very highly in ALB’s client survey. The full-service, Brisbane-based firm was lauded by both national and international clients for being able to “advise excellently on the intersection between commercial and IP law”. Head of the firm’s corporate and commercial work group, David Grace, was praised for his “extremely good” work in the area. Clients also spoke favourably of the firm’s ability to offer a “one-stop commercial shop”.

 

Adelaide member of the Australia-wide Kennedy Strang Legal Group, Lynch Meyer, was considered by clients to be leading the way in the South-Australian IP law market for offering an integrated IT and IP practice, with expertise in passing off and infringement litigation. Partner Michael Hutton was said to be “an eloquent and talented litigator”, while the advice offered by fellow partner Joe Subic in non-litigious commercial matters was rated very highly by clients and peers alike.

 

If Lynch Meyer was thought to be leading the way in IP law in Adelaide, then its counterpart Kelly & Co was considered to be right up there with it. Offering the whole gamut of IP law services, from trademarks and telecommunications to copyright and plant breeders’ rights, the firm was described as being “completely professional” and “completely thorough” by both Australian and international clients. Partners Rob Kennett and Peter Campbell were cited as being “very competent”, with Campbell singled out by media clients for being a “savvy and entrepreneurial operator”.

 

ALB Fast 10 law firm Jackson McDonald won the praise of clients for its “high quality of service”. The firm boasts a loyal corpus of IP clients who value the firm’s “sound and pragmatic advice”. Partners Stephanie Faulkner and Adam Levin were considered to be leading the way in a small but growing Western Australian IP market, with Faulkner in particular sought out by clients for being “close to the best” in the practice area.

 

Allens Arthur Robinson once again came out on top in ALB’s client survey, for what clients said was “all-round excellence in all matters IP”. While industry knowledge and attention to detail were also mentioned as reasons for the firm’s leading position in the marketplace, clients said it was lawyers’ “knowledge of where the legislative landscape was heading” that gave Allens the “x-factor”. “Having counsel that almost have an ‘insider’ knowledge of the law is vital in the industry – it gives businesses a leg-up on the competition,” one client explained. Clients believed that another of the firm’s strengths lay in the depth and “cross-discipline” experience of its IP team. The firm was considered by clients to be the “undisputed market leader in IP law”. ALB leading lawyers Tim Golder and Jim Dwyer were praised by domestic and international companies alike. Sydney-based Dwyer was referred to as an “excellent litigator with a very impressive track record”, while his Melbourne-based colleague Golder was valued for his “really thorough knowledge of the TPA” and “all-round quality of advice”. Melbourne-based Allens duo Richard Hamer and Michael Pattison were also mentioned by clients, with Pattison referred to as the “bible of IT law”.

 

Clients also noted that the IP law services offered by Blake Dawson “were always of the highest calibre”. ALB leading lawyer, Melbourne-based Mary Padbury, was mentioned for her “great people skills” and the ability to “bring people together in ugly matters”. Sydney-based ALB leading lawyer Lisa Ritson was praised for both the quality and type of advice she offered clients. “Ritson is one of the best at offering legal service infused with a real business savvy that’s hard to find elsewhere,” one client noted. Grant Fisher and Ben Miller were said to round off “an excellent IP team”, which boasts the likes of Reebok, Nestle GM and IBM as clients.

 

Freehills was considered by clients to have a “technically and legally astute team”. Peers described the firm as “striking the right balance between lawyers and attorneys”. One client stated that the firm always made a conscious effort “to try and win back our work for the next matter”. ALB leading lawyers Sue Gilchrist and Kristin Stammer were described by clients as “seriously good operators” who know the IP landscape “very thoroughly”. ALB respondents sung Gilchrist’s praises because she “practises in almost all areas of IP” and is a “pretty handy litigator”. Her peers concurred, with a fellow top-tier litigator noting that it was probably best “to work with her and not against her”. Stammer also received glowing references, not only for the “crystal clear” way she conveys advice, but also because she is “fully aware of the commercial realities” of IP law.

 

Mallesons Stephen Jaques was another firm praised for its work in the IP field. Clients said it was the “depth of talent” which set this firm’s IP team apart. Renowned as much for its IP/IT team as for its comprehensive knowledge of “pharmaceutical-related issues”, Mallesons was described as “the firm of choice on all matters, not just IP” by one client. ALB leading lawyer Maurice Gonsalves was mentioned as being “operationally brilliant” by one multinational client and “very talented” by another. Clients placed high value on Gonsalves’ “intimate knowledge of all matters, even those which he isn’t directly involved in”. Wayne McMaster was also mentioned by clients, who described him as being “very, very good” in the field.

 

Clayton Utz’s IP and IT teams polled highly among clients because they offered “timely and real advice”. Clients described the firm’s lawyers as “technically sound”, “very intelligent” and “strong litigators”. ALB leading lawyer John Collins was considered by clients to be “among the very best in the field”. Clients said Collins’ counsel was sought out because he “manages people and cases really well”. Lateral-hire Brian Elkington was also mentioned by clients, who said he possesses “very good skills” in the practice area.

 

Minter Ellison rated highly among its clients because of its team’s “focused approach”. Recent departures may have affected the size of its IP team, but, according to clients and peers, the firm remains a player in the IP law market because it has “excellent people on board”. One such partner is Paul Zawa, who won kudos from clients for his “solid work” in the IT sector.  

 

New Zealand intellectual property practices are feeling optimistic about the revenue prospects for the months ahead. IP protection is always a priority for clients, regardless of the economic outlook, and this field is expected to provide a solid base of work.

 

Opinion is divided as to how more conservative economic times may affect IP firms. On the one hand, some observers speculate that clients may rein in their research and development budgets, with a resulting decline in patents work.

 

However, there is also a suggestion that as M&A work slows down, there will be a renewed emphasis on organic growth, and therefore more innovation and associated work delegated to law firms. Only time will tell as to which of these hypotheses proves correct.

 

Nonetheless, IP firms – like all firms in New Zealand – have had a good run in recent times and have strong expectations for the rest of the year.

 

AJ Park, by the admission of its clients and peers, is still “head and shoulders above the rest” in the New Zealand IP law market. As the largest IP practice in New Zealand, the firm consists of two partnerships: AJ Park Patent Attorneys and AJ Park Law. The structure, according to clients, puts the firm in a “good position to offer the whole raft of services from start to finish”. As much as clients said they appreciated the firm’s “specialist approach in the area”, they also noted that they sought counsel from the firm because of its track record. As one client noted: “If we don’t know someone well, like was the case when we started business in New Zealand, then we look at what they’ve done. When we looked at AJ Park we saw a firm which had easily the best track record of any other.” Indeed, the firm’s track record includes some 200 of the companies listed on the Fortune 500. ALB leading lawyer and AJ Park managing partner Greg Arthur was mentioned by clients for being a “true professional in all areas of practice, but a star performer in enforcement of IP rights”. Arthur’s colleagues John Hackett, Bryan Thomson and David Jones were all mentioned for forming part of a “formidable IP team”.

 

Wellington and Palmerston North-based Ellis Verboeket Terry elicited high praise from clients for its “client-centred approach” and “all-round excellence in IP matters”. Clients felt that the strong credentials of the firm’s partners were a distinct asset in a “fiercely competitive but relatively small market”. ALB leading lawyer John Terry was said to be an “unbelievably good lawyer” with “very sound skills” in key and emerging areas of IP law. Fellow name partners Peter Verboeket and patent attorney Jonty Ellis were considered by clients to form a “formidable team”.

 

The IP team at Bell Gully was praised by clients “for its strong, cross-disciplined experience” and for having the “ability to get the job done, sometimes, against all odds”. While clients maintained that the firm’s IP practice was strong in all areas, it was its litigation strengths that were considered “the best in the market”. “We haven’t been able to go past Bell Gully in most IP law litigation matters,” one client told ALB. “The firm has such depth of talent from partners and attorneys to junior lawyers, you always know you’re going to get good quality service,” said another. Partners Ian Gault, Alan Ringwood and Dean Oppenhuis all polled extremely strongly. International clients in particular said that the international legal and corporate experience of the trio was “extremely attractive”.

 

Auckland and Wellington-based firm Chapman Tripp was mentioned for its “very high standard of IP work”. International and domestic clients alike suggested that litigation and enforcement were the “core strengths” of the firm’s IP team. However, they also said they considered the firm to be “right at the top” when it comes to IP issues in emerging industries such as IT. Bruce McClintock was believed to be the reason behind this achievement, due to his “supreme industry knowledge” and “erudite understanding” of the area. Fellow partner Matt Sumpter was noted as the counsel of choice by clients and peers “when high-level international experience is required”.

 

Although Hudson Gavin Martin is a relatively young firm, only having been established in mid-2007, clients said that the experience and track records of its partners were “outstanding”. This was noted as the reason why a number of high profile clients followed name partners

 

Wayne Hudson, Mark Gavin and Tony Martin from their respective firms. The “charismatic” Hudson rated glowing mentions because of his “spot-on advice”, while peers predicted that his colleagues Gavin and Martin would become “very serious players” in the New Zealand IP market in the short term.

 

Specialist IP firm Baldwins has been ravaged of late by a number of staff movements which have seen key partners leave the firm to join other firms or start their own practices. However, despite this, clients and peers that ALB spoke to noted that the firm still “offers very tight and professional IP law services”. Partners Philip Thoreau and Colin Hadley were valued for their “succinct and pragmatic advice”, while Penny Cately was said to “always focus on delivering cost-effective service”. The standout in ALB’s client survey, however, was Wellington-based ALB leading lawyer Julie Ballance. Considered an expert in new and emerging areas of IP law by her peers, clients maintained that Ballance was “a simply brilliant lawyer”. They also said she was particularly valued for her “knowledge of what the government is thinking”.

 

Buddle Findlay was lauded by clients for its “very strong IP outfit”. Partners Graeme Hill and Christchurch-based Willie Palmer were said to possess “strong credentials in all IP matters”. Partner John Glengarry’s talents in “strategy, risk and planning” were particularly valued by the firm’s international clients, while domestic clients said they were especially impressed by his “client care”.

 

Kensington Swan impressed clients with its “novel approach” to all IP law matters. Clients noted that although the firm has a rather small IP presence in the New Zealand market, it is a “heads-down, bottoms-up-type firm in everything they do”. Partners Sheana Wheeldon and Ross Johnston were described by clients as “technically adept” and knowledgeable. One client pointed out that Wheeldon, who is also a registered patent attorney, always tries to make his clients feel comfortable.

 

Simpson Grierson was also praised for its client care, in addition to being commended for the “reality” of its advice. As one client noted: “In the past when we’ve seen lawyers, they’ve said ‘do x’ without really considering whether ‘x’ is commercially viable. Simpson Grierson has never done this, they also find solutions which are realistic.” Earl Gray regularly “surprised” clients with the “depth and breadth of his knowledge”. John Shackleton and Tracey Walker were also praised by clients for their “skilful knowledge of all aspects of litigious and contentious matters”.

 

 

 

With more and more companies recognising that their IP is a valuable asset that needs protecting, the demand for advice in the area is increasing. As ALB’s survey suggests, clients are now showing an increased disposition to look beyond large, full-service, top-tier firms to commercially savvy, specialist IP firms. This is underscored by what appears to be a changing client psyche. Hence, whereas in the past clients nearly always (budget permitting) engaged firms and lawyers on the basis of their track-record, those ALB spoke to were of the opinion that industry knowledge and technical know-how were as important in this sector. As one client noted, “When we look to a lawyer for advice in this area we look to his or her results, but also how much they know about the landscape, our product and where we’re coming from. Experience and industry knowledge are the key.”

 

“What we’re seeing now in the industry is really a new breed of client, one who’s more discerning, more savvy and crucially, more selective,” says Sheana Wheeldon, a partner at Kensington Swan. These sentiments were echoed by numerous clients, who noted that there was now a feeling in the industry of an increased need to “expert shop”.

 

The structural and personnel changes at the firm level throughout 2007 and the early part of 2008 are indicators of specialist firms responding to this call. There were a number of high profile, lateral movements of key partners from top-tier to specialist practices, for example Wayne Condon and Ian Pascarl in Australia, and Wayne Hudson, Mark Gavin and Tony Martin in New Zealand.

 

For boutique firms, lateral hires of this kind present a viable means through which they can not only grow and remain competitive, but also redress some of the longer-held assumptions in the industry about their litigation capacities. However, the case for larger firms is markedly different. Full-service and top-tier firms are recognising the need to invest their resources in novel ways. Larger firms are displaying more of a willingness to focus on organic growth. ALB’s research suggests that IP practices in large firms are responsible for the highest number of internal promotions of any other corporate practice area.

 

But, remaining relevant is another story. “Competing with specialist firms will always define the nature of the IP law market,” said a senior partner at a prominent Australian national firm. “The key is a focused approach.” This ‘focused’ approach is what had defined the existence of large firms in the IP law sphere over the last few years, a major part of which has been the rationalisation of patent prosecution services and the concomitant concentration on other areas.

 

One such area where full-service Australia and New Zealand firms have pursued this approach has been in the area of contentious work. Already considered the “exclusive domain” of the bigger firms, many are finding that there is a lot of traction to be made by selling their credentials in the area. “International clients are particularly impressed with big firms’ ability to handle contentious work. I wouldn’t say that big firms have an absolute monopoly in the area, but it’s pretty close to it. All of big competitors sell this very vigorously,” a source told ALB.

 

Ramping up expertise in this area may even manifest, in the mid to long term, as a means by which larger firms are able to claw back market share in other areas from boutique practices. While opinion is divided on this issue, striking a chord between the legal realities of IP law and the commercial realities facing businesses in this area is generally considered a viable avenue for the larger firms to compete with boutique firms.

 

As one client noted, “I think larger firms are ahead of smaller firms in the sense that they’re a little more aware that IP law is a concern for companies, but not the biggest consideration. It’s part of a broader corporate plan. The level of commercially oriented advice is the key to deciding where we go for advice – and bigger firms’ track records here speak for themselves.”