77905 Preparing for Intellectual Property Practice
Warning: The information on this page is indicative. The subject outline for a
particular semester, location and mode of offering is the authoritative source
of all information about the subject for that offering. Required texts, recommended texts and references in particular are likely to change. Students will be provided with a subject outline once they enrol in the subject.
Subject handbook information prior to 2015 is available in the Archives.
Credit points: 6 cp
Result type: Grade and marks
There are course requisites for this subject. See access conditions.
Anti-requisite(s): 77892 Professional Conduct (Intellectual Property) AND 77896 Legal Process and Intellectual Property Overview
Description
This subject provides students with an understanding of the:
- Australian legal system, courts and legislative processes
- protection of intellectual property rights by Australian and international legal systems
- principles involved in efficient and effective management, commercialisation and exploitation of intellectual property assets
- legal entities and processes used in licensing, franchising, assignment and securing intellectual property rights, and
- the rights, privileges and responsibilities of practising patent or trade marks attorneys towards their clients, the profession and the community.
When completed, this subject ensures that students satisfy the knowledge requirements prescribed by Regulation 20.8 and Parts 2 and 3 of Schedule 5 of the Patent Regulations 1991 (Cwlth).
Subject objectives
Upon successful completion of this subject students should be able to:
| 1. | Demonstrate basic skills in legal writing, legal referencing and legal problem solving. |
|---|---|
| 2. | Demonstrate an ability to read and analyse cases and statutes and apply the doctrine of precedent and techniques of legal reasoning. |
| 3. | Demonstrate an understanding of the legal restraints and professional responsibilities of patent and trade marks attorney's professional practice in Australia including the obligations imposed on patent and trade marks attorneys by legislation, contract, tort and fiduciary duty, codes of conduct and the discipline regime for patent and trade marks attorneys. |
| 4. | Demonstrate an understanding of the principles involved in efficient and effective management, commercialisation and exploitation of intellectual property assets including legal entities and processes used in licensing, franchising, assignment and securing intellectual property |
This subject also contributes specifically to the development of the following graduate attributes:
- Legal Knowledge
An advanced and integrated understanding of a complex body of legal knowledge including the Australian legal system, social justice, cultural and international contexts, the principles and values of ethical practice, and contemporary developments in law and its professional practice (1.0) - Ethics and Professional Responsibility
An advanced and integrated capacity to value and promote honesty, integrity, accountability, public service and ethical standards including an understanding of approaches to ethical decision making, the rules of professional responsibility, an ability to reflect upon and respond to ethical challenges in practice, and a developing ability to engage in the profession of law and to exercise professional judgment (2.0) - Critical Analysis and Evaluation
A capacity to think critically, strategically and creatively including an ability to identify and articulate complex legal issues, apply reasoning and research to generate appropriate theoretical and practical responses, and, demonstrate sophisticated cognitive and creative skills in approaching complex legal issues and generating appropriate responses (3.0) - Communication and Collaboration
Effective and appropriate professional communication skills including highly effective use of the English language, an ability to inform, analyse, report and persuade using an appropriate medium and message and an ability to respond appropriately (5.0)
Teaching and learning strategies
Strategy 1: This subject adopts a system of self-managed learning that offers students choices about how and when they study. This subject is delivered wholly as a web based online system of teaching and learning. Students and teachers interact by asynchronous electronic communications on a regular basis.
Strategy 2: Students interact with fellow students and course staff by extensive use of online discussion boards.
Strategy 3: Students complete 3 practice oriented problem based assessment items.
Content
Part 1 - How Legal Systems Protect Intellectual Property Rights
Topic 1: Legal Systems & Processes
Legal Writing & Citation.
The Constitution.
Overview of the Australian Federal System.
Legal Reasoning and precedent.
Common law & equity.
Topic 2: Legal Method/Statutory Interpretation
Courts & Tribunals.
Appeal & Review Procedures.
Administrative law & tribunals.
Remedies.
Statutory interpretation.
Legal problem solving.
Topic 3: IP Systems & Processes
International Intellectual Property Treaties.
World Intellectual Property Organisation (WIPO).
TRIPS & WIPO agreements.
Australia’s statutory instruments.
Part 2 (1) - Patent & Trade Marks Attorneys’ Professions
Topic 4: Overview of Professional Responsibility
Introduction & background of the professions.
IP Australia & admission requirements (including pre registration employment requirements).
Role of the Professional Standards Board for Patent and Trade Marks Attorneys (PSB).
PSB Code of Conduct for Patent and Trade Marks Attorneys.
Topic 5: Attorney-Client Relationships
Competence and care.
Retainers.
Liability in contract.
Liability in tort and negligence.
Fiduciary obligations to clients.
Maintenance of rights and obligations.
Topic 6: Professional Conduct
Conflict of interest.
Confidentiality.
Fiduciary obligations
Privilege.
Billing practice & systems.
Part 2 (2) - The Disciplinary Process
Topic 7: The Code of Conduct Revisited
PSB Code of Conduct for Patent and Trade Marks Attorneys.
Topic 8: Codes of Conduct & Discipline
Role of the PSB in the disciplinary process.
Role of the Patent and Trade Marks Disciplinary Tribunal.
Complaints procedures & practice
Disciplinary practice
Topic 9: Disciplinary Case Studies
Critical analysis of a series of disciplinary solicitors and attorneys cases; including all reported Australian cases involving registered patent and trade marks attorneys.
Part 3 - Commercialisation & IP Management
Topic 10: Laws Impacting on IP Practice
Law of Torts
Law of Contracts
Employment Laws
Trade Practices Act 1974 (Cth)
Restrictive Trade Practices (Part IV)
Consumer Protection (Part V)
Topic 11: Management Issues
Intellectual Property Management
Brand Management
Risk Management
Corporate Governance Issues
Equity Finance Issues
Topic 12: Preparing For & Managing Commercialisation
Negotiation
Legal Structures for Commercialisation
Licensing
Franchising
Technology Transfer Issues
Financial Issues (Valuation, Royalties, Taxation)
International Dealings
Assessment
Assessment task 1: Short Answer Examination
| Objective(s): | This task addresses the following subject learning objectives: 1 and 2 This task contributes specifically to the development of the following graduate attributes: 1.0 and 3.0 |
|---|---|
| Weight: | 25% |
| Length: | 1000 words |
Assessment task 2: Code of Conduct Problem
| Objective(s): | This task addresses the following subject learning objectives: 3 This task contributes specifically to the development of the following graduate attributes: 1.0, 2.0 and 3.0 |
|---|---|
| Weight: | 25% |
| Length: | 1500 words |
Assessment task 3: Essay
| Objective(s): | This task addresses the following subject learning objectives: 1, 2 and 4 This task contributes specifically to the development of the following graduate attributes: 1.0, 3.0 and 5.0 |
|---|---|
| Weight: | 50% |
| Length: | 2500 words |
Required texts
Paul McGinness, Intellectual Property Commericalisation, a business managers companion (Butterworths, 2003)
Elizabeth Ellis, Prinicples and Practice of Australian Law (Thomson Reuters, 3rd ed, 2013).
Note: McGinness will be replaced by a new text, Commercialisation of Intellectual Property when it is published by Lexis Nexis on 1 December, 2015. The authors are Natalie Stoianoff (UTS), Adam Liberman (UNSW) with Fred Chilton and Anne Monotti. Rather than purchase a new copy of McGinness it is recommended that you source a second hand copy of McGinness, borrowing one or use the e-readings for part 3 of this subject.
It is possible to complete part 1 of this subject without having a copy of Ellis provided you are prepared to rely on e-readings and your own research where these are not available.
Recommended texts
Ysaiah Ross, Ethics in Law: Responsibility and Accountability in Australia (Lexis Nexis 6th ed, 2013)
