The main recent development in New Zealand was the entry into force of a new single patent attorney regulatory regime in February 2017 – a reform that comes off the back of the Single Economic Market agenda agreed by the Australian and New Zealand prime ministers in 2009. To register as a patent attorney in either country, individuals will need detailed knowledge of IP law and practice in both Australia and New Zealand. On the one hand, this may play into the hands of Australian firms, which are typically larger than their New Zealand counterparts and therefore have greater technical depth; on the other hand, cost differentials between firms in the two jurisdictions could work in favour of those in New Zealand. In other important news, IPH, one of Australia’s three IP holding companies, acquired New Zealand’s biggest patent attorney firm, AJ Park, in October 2017 – a deal enabled by legislation enacted in February 2017 which removed restrictions on patent attorney firm ownership structures. The public listing of IP firms has caused considerable controversy in Australia of late, with concerns being raised over a diminishment of choice for clients and, more particularly, conflicts of interest between shareholders and clients. What effect AJ Park’s acquisition will have on the New Zealand market is something that commentators are watching with great interest.
Firms: litigation and transactions
- AJ Park
- Ellis Terry
- James & Wells
- Simpson Grierson
- Highly recommended
- AJ Park
- Catalyst Intellectual Property
- Ellis Terry
- Henry Hughes IP
- In-Legal Ltd
- James & Wells
Australasian IP sensation AJ Park hosts New Zealand’s largest patent team, which “works efficiently and to a high standard whatever the instruction”. Split into specialised technical squads, the prosecution practice “carefully aligns its attentive service with clients’ overall patent strategies”. Forming the basis of the engineering/IT group are partners Michael Brown, Matt Adams and Anton Blijlevens. “Brown’s sound advice on patentability, clear explanation of complex IP issues and harmonious partnership with clients allows them to focus on the most profitable areas of their business.” Adams is a guardian for several large computer corporations, a dab hand at negotiating complex licensing agreements and also co-chairs the division alongside Brown. “With a keen eye for detail, Blijlevens drafts top-notch applications”, as one major client enthuses: “he’s always available to answer queries and comments, but potential hurdles are far less likely to arise when Anton’s drafted the patent.” Manning the China desk, he travels frequently to advise Australian and New Zealand outfits with a stake in the Chinese market. For manufacturing companies, tenacious IP strategist Greg West-Walker is a guiding light. He acts as manager for Fisher & Paykel Healthcare’s instructions. Anton Gibson provides life sciences outfits with commercially minded portfolio management and takes a hard line in enforcement matters, too. The side’s “sterling” litigation practice is anchored by Kim McLeod and Kate McHaffie. McLeod takes the lead in enforcement efforts and is au fait with multi-jurisdictional litigations, having spent time in Hong Kong as an IP solicitor. A patent attorney qualified to practise law in New Zealand and New South Wales, McHaffie brings complex Trans-Tasman disputes to efficient conclusions. She boasts substantial experience litigating for global healthcare, manufacturing and telecoms operations.
The second most prolific patent filer in the country, Baldwins enjoys the loyalty of an “excellent domestic and international client base”. Its seven-partner team boasts sweeping technical coverage, a former European Patent Office (EPO) examiner and abundant expertise in the UK and European markets. Sitting in the captain’s seat, Wes Jones is a skilled prosecutor of electrical and software patents. Sharing Jones’s interest in computer-related inventions, Chris Way is an authority on mechanical and electronics matters – the UK and trans-Tasman patent attorney manages the portfolios of major New Zealand companies and represents their interests in infringement cases. Lawyer Paul Johns is crucial in contentious encounters as well as a go-to for insightful strategic advice.
Catalyst Intellectual Property
Catalyst Intellectual Property delivers an A-to-Z patent service and has built “arguably New Zealand’s biggest chemistry practice”. Doing a roaring trade in patent work, the “technically gifted” set has gone from strength to strength and recently welcomed a new addition to its already eminently qualified line-up. Clients appreciate the combination of scientific know-how and commercially focused advice on offer, which helps them to realise greater value from their key products. When tensions arise, the Catalyst crew is equipped to handle anything thrown at it. Among the partners Greg Lynch stands out. With a doctorate in chemistry from Oxford University, the former Nestlé in-house counsel is highly sought-after for his “superb biochemistry expertise”.
“One of the few IP outfits thriving in Christchurch and a far cry from your run-of-the-mill patent attorney firm, CreateIP is an outlier on New Zealand’s patent scene. Others have tried to establish a presence on the South Island but few have been as successful in acquiring quality personnel or major clients.” Chemistry maestro Shayne Nam and mechanical aficionado Robert Snoep both operate seamlessly across the contentious/non-contentious divide for a host of primarily Australasian devotees. Making his debut in the IAM Patent 1000 for 2018, Nam has been instrumental in developing the commercially tailored IP strategy and robust advice that are the hallmarks of the troupe’s service. As one client effervesces: “He’s committed to ushering us in the right direction and his knack for identifying our most patentable products puts us in a prime position to take advantage of commercialisation opportunities.” A former petrochemical engineer, founding partner Snoep combines his practical expertise with over 15 years of experience working in intellectual property.
Ellis Terry knows what it is that clients want and how best to get it. A strong commercial focus and an efficient practice management system are major magnets for its computing, electronic and electrical engineering devotees, but the set continues to strengthen its offering. Four new patent advisers have recently joined the Auckland and Wellington offices, while the partners continually assess their patent search capabilities, always looking for the best way to one-up the competition. “Intelligent, efficient and a delight to work with”, Wellington-based patent boss John Terry “definitely knows his stuff and does a great job”. In addition to patent prosecution, the 27-year IP veteran oversees a booming litigation and licensing practice. In Auckland, “commercially astute” Blayne Peacock “is a great legal mind with a practical approach”. Having spent a decade in Singapore’s Marks & Clerk, the “responsive, prompt and cost-effective” electrical engineer is a crucial ally in all patent issues that have regional repercussions.
Henry Hughes IP
Henry Hughes draws on over 130 years of collective wisdom to deliver a direct, no-nonsense patent service. With an impressive multinational following, the line-up is supremely capable across life sciences and mechanical engineering briefs and has recorded excellent growth in its software practice too. Frank Callus directs the patent department; he has chalked up more than three decades of experience in the IP world. Callus takes a distinctive hands-on approach and is directly involved in the majority of the team’s endeavours; he showcases his individual talents in infringement, opposition and transactional instructions for major clients.
Wellington boutique In-Legal packs a potent punch. Its eminently qualified fee earners come highly recommended for their life sciences and chemistry offering, although they also execute mechanical instructions with verve. A former in-house counsel for a US-based pharmaceutical company, Jane Calvert exhibits considerable knowledge of patent processes at the US Patent and Trademark Office, which she exploits for her clients regularly. Eminently qualified, she undertakes instructions across the biotechnology, food and pharmaceutical spheres. Sharing Calvert’s focus and talent for prosecuting drug patents, former president of the New Zealand Institute of Patent Attorneys Julie Ballance is also a frequent actor in opposition proceedings before the Intellectual Property Office of New Zealand (IPONZ) as well as IP Australia.
James & Wells
“Always strong in contentious work, James & Wells has been in great form recently, putting in superb litigation performances and gaining a greater share of the market. Whether in court or before the IPONZ, the firm has countless tricks up its sleeves.” The lauded litigation side is commanded by Hamilton-based lawyer and patent attorney Ian Finch. “An excellent strategist who stays fully in control of every situation”, Finch is currently battling on behalf of a global leader in the medical device industry. Respected in New Zealand and further afield, the “highly intelligent practitioner” recently co-authored a new version of one of the country’s leading IP textbooks. Based out of the Auckland office, partner Gus Hazel heads the local contentious set; he is a veritable fountain of wisdom on commercialisation and regulatory issues.
Home to an unusually large IP department for a full-service law firm in New Zealand, Simpson Grierson ensures that intellectual property remains a central plank of its business. Revered for its trademarks and designs capabilities, the group also delivers a well-rounded and respected patent service, of which one of the biggest patrons is major national enterprise a2 Milk Company; valuing the set’s extensive commercial and IP expertise, the dairy giant takes advantage of the full suite of IP prosecution, enforcement and commercialisation options on offer. The team – led by partners Richard Watts and Earl Gray – demonstrates a particular life sciences focus while maintaining a resolute showing in the telecoms and manufacturing sectors. Both Watts and Gray are internationally renowned as “a source of robust commercial IP advice”. Watts provides “prompt and valuable expertise” to several of the world’s leading pharmaceutical and consumer goods names, while Gray is an “iconic figure” on New Zealand’s patent market, best known for his performance in infringement settings.
Other recommended expertsA new addition to the IAM Patent 1000 in 2018, Jim Piper has seen it all there is to see during the four decades he has spent at the IP coalface; based out of his eponymous outfit Pipers, he channels this experience for the benefit of his Antipodean fan-base.
- Ian Finch - James & Wells
- Earl Gray - Simpson Grierson
- Gus Hazel - James & Wells
- Paul Johns - Baldwins
- Kate McHaffie - AJ Park
- Kim McLeod - AJ Park
- Richard Watts - Simpson Grierson
- Matt Adams - AJ Park
- Julie Ballance - In-Legal Ltd
- Anton Blijlevens - AJ Park
- Michael Brown - AJ Park
- Frank Callus - Henry Hughes IP
- Jane Calvert - In-Legal Ltd
- Anton Gibson - AJ Park
- Wes Jones - Baldwins
- Greg Lynch - Catalyst Intellectual Property
- Shayne Nam - CreateIP
- Blayne Peacock - Ellis Terry
- Jim Piper - Pipers
- Robert Snoep - CreateIP
- John Terry - Ellis Terry
- Chris Way - Baldwins
- Greg West-Walker - AJ Park