New Zealand

The notion of shareholder ownership of IP firms became a reality in New Zealand in 2017, when Australia’s IPH acquired leading New Zealand firm AJ Park. While IPH expressed its satisfaction with AJ Park’s performance in the New Zealand media, the deal brought profound changes to the country’s patent attorney market – leading some key individuals to leave the firm, either to set up new practices or to significantly strengthen existing offerings. Debate on the pros and cons of the publicly listed model continues to rage and shows no sign of stopping any time soon. On the legislative front, a December 2018 amendment to the Patents Act 2013 provided for a one-year grace period in which applicants may file applications for previously disclosed inventions, opening the door to some innovations that were previously ineligible to patent. This broadly coincided with New Zealand’s implementation of the Comprehensive and Progressive Agreement for Trans-Pacific Partnership, which aims to harmonise the country’s trade with 10 other economies on either side of the Pacific Ocean. Another important development was the failure of the Patents (Advancement Patents) Amendment Bill 2018 to pass through parliament’s first reading. This measure looked to establish a second-tier patent system, designed to stimulate innovation among small and medium-sized businesses in the country.

Firms: litigation

  • AJ Park
  • Baldwins
  • Ellis Terry
  • James & Wells

Firms: prosecution

  • AJ Park
  • Baldwins
  • Catalyst Intellectual Property
  • CreateIP
  • Dentons
  • Ellis Terry
  • Henry Hughes IP
  • James & Wells

AJ Park

AJ Park is a “pre-eminent firm with an illustrious history” that offers rights holders a staggering breadth of technical expertise. With its attorneys divided into two broad teams, covering the engineering, IT and life sciences areas, IPH-owned AJ Park is the largest IP firm and employer of patent attorneys in New Zealand. The firm’s size gives it the ability to easily and swiftly “organise ad hoc teams” to tackle any kind of patent conundrum. Lodestar Anton Blijlevens has plenty of experience of bespoke team building. Although most recognised for his work in the mechanical and manufacturing sectors, the patent attorney, barrister and solicitor is a veritable “expert on all things patent-related”. Working alongside Blijlevens in Auckland, Hadleigh Brown and Greg West-Walker are also esteemed advisers. Newly minted in the IAM Patent 1000, Brown is “extremely knowledgeable” in electrical engineering, electronics and software matters; his domestic clients particularly appreciate his “sharp client focus”. “He provides cost-effective solutions that can be complex in nature – yet made easily understandable – to meet clients’ commercial goals.” His colleague West-Walker is the darling of numerous New Zealand and multinational companies – as a member of the Australian Professional Standards Board for Patent Attorneys, he is also highly esteemed in government circles. Over in the Wellington office, Michael Brown and Matt Adams co-head the engineering and IT team. “A high degree of responsiveness, thoughtful advice and a sensitivity to clients’ needs” characterise Brown. His expertise spans the aerospace, maritime, medical device and electronics sectors, whereas Adams maintains a laser focus on the software and IT space. On the life sciences side, Anton Gibson is known as an extremely adroit portfolio manager and enforcer of patents. Kate McHaffie and Mark Hargreaves enhance the litigation and transactional prowess of the firm respectively. McHaffie has a gift for understanding the most complex pharmaceutical inventions; Hargreaves heads the commercial team and has negotiated every type of IP-driven deal imaginable.

Baldwins

“The highly knowledgeable and experienced team at Baldwins exudes unparalleled professionalism and dedication, causing it to stand out as an extraordinary firm in the crowded patent attorney services landscape.” The firm boasts patent professionals qualified in Australia, China, Europe, India, New Zealand and the United Kingdom, which gives it the ability to percipiently advise rights holders on global patent prosecution and protection. Regardless of geography, “the firm decides on the best IP strategies that minimise costs and protects clients’ competitive advantages”. Chair of the partnership Wes Jones is an electronics buff with special technical insight into wireless power transfer, power electronics, active noise cancellation and in-flight entertainment system technologies. His colleague Chris Way’s strong suits include medical device and telecoms briefs; since moving to Australasia from the United Kingdom in 2006, his practice has prospered. Fellow UK transplant Andy Locke often works in concert with Way – the pair are currently advising a major medical device company on both prosecution and contentious issues. Commercial practice helmsman Sean Brogan is another standout choice for clients. Having also spent time honing his skills in Australia and the United Kingdom, he knows all the tricks of the trade when resolving licensing and contractual conundrums. Litigants would do well to enlist the assistance of Paul Johns, Baldwins’ dispute resolution practice head, his substantial experience in IP and consumer law litigation has sharpened his skills in the art of persuasion.

Catalyst Intellectual Property

Wellington-based boutique Catalyst Intellectual Property is “a relatively young firm, but composed of experienced partners”. A new arrival at the firm and in the IAM Patent 1000 rankings, the “very smart” John Mansell “is steeped in the prosecution of life science patents. Mansell is a prime choice for hardcore biotech inventions”. Mansell holds a PhD in molecular biology and biochemistry, whereas his colleague Greg Lynch has a PhD in chemistry. Having conducted research at Oxford University and Callaghan Innovation – as well as working in-house for Nestlé – Lynch is undoubtedly a top-notch intellect.

CreateIP

“In merely a decade, CreateIP has now emerged as one of the key firms in the New Zealand IP field.” With outposts in Auckland and Christchurch, it is expanding at a healthy rate; last year, the team recorded a robust level of growth, both in portfolio transfers from other firms and in its overseas work. Over this period, CreateIP also made a foray into contentious mandates in both Europe and New Zealand, achieving some impressive results in the process. The firm’s success is ultimately built on the superb client service that its attorneys provide. As one satisfied patron espouses: “What sets the firm apart from the rest is its exceptional responsiveness – even when I reach out on weekends it answers my queries. Always providing to-the-point and concise solutions, the team raises any pertinent questions, often regarding issues that I have not anticipated. Its attorneys’ humble, friendly and upbeat working style also makes interacting with the firm very pleasant.” Founder, engineering buff and former technical manager Robert Snoep is described by those in the know as “extremely smart and practical”. Shayne Nam is another inspired choice, he holds a PhD in physical organic chemistry, which he leverages to great effect when drafting crystalline patent applications.

Dentons

Dentons has been busy making waves on both sides of the Tasman Sea this year. In Australia, the firm has taken on several new partners to kickstart its new IP practice there – while over in New Zealand, it breaks into the IAM Patent 1000 for the first time. Despite Dentons’ relatively recent presence in New Zealand, “it is definitely a firm of substance when it comes to patent work”. Auckland office director Andrew Baker is also a practitioner of substance. An expert in neuropharmacology, he commands a glowing reputation in the industry for his patent drafting and opposition work. Clients are following him to his new home in droves.

Ellis Terry

With extensive experience gathered at foreign firms, the Intellectual Property Office of New Zealand and in industry to draw on, the all-star patent team at Ellis Terry can draft specifications of the highest grade. As its outstanding IT-sector client base shows, the firm is a top choice for New Zealand-based innovators in future-facing areas, including drone technology and super-computing. Ellis Terry is also packed with contentious firepower, which is recognised for the first time in the IAM Patent 1000 litigation table. “Easy-to-work-with, sharp and efficient,” the patent team’s skipper John Terry epitomises the working style of the firm. The electronics and mechanical guru of 30 years’ vintage has a glittering track record of global patent prosecution on behalf of American multinational giants. Blayne Peacock operates in a similar technical field to Terry; as an accomplished drafter of patents, his advice is widely sought-after.

Henry Hughes IP

Henry Hughes IP draws on a profound pool of wisdom accumulated over its 130 years of history. As one source testifies: “It holds itself to superior service standards.” In the words of another satisfied client: “This is one of the best firms I’ve ever used – it is responsive, accommodating and works hard to secure patent rights for us in an extremely thorough manner.” Australian, European, New Zealand and UK-qualified patent attorney Frank Callus is the man to call on for life sciences prosecution of the highest order.

James & Wells

“Those in need of high-calibre counsel characterised by responsiveness and cost-effectiveness in the Antipodes would do well to seek out James & Wells. It is home to a deep bench of technical and legal expertise that is essential to achieving favourable results in complex prosecution and contentious matters.” Despite its status as one of the country’s pre-eminent patent and trademark firms, James & Wells has not lost its laser-sharp focus on the success of its clients. In the words of one: “The firm always considers the impact of their fees on my business – thus far I have yet to find another major Australasian firm that partners as closely with clients.” The practice is currently in fine fettle, having brought in a new senior associate with a mechanical engineering patent background, while its Asia group has grown to a team of eight. Jonathan Lucas heads up the teams in Auckland and Hamilton. His refined medical technology, software, telecoms and electronics drafting has rescued many ill-conceived first drafts. Gus Hazel is principally known for his “intimate knowledge of opposition proceedings in Australia and New Zealand”, but his ability to build patent portfolios in the Asia-Pacific region is also highly appreciated. Litigation team helmsman Ian Finch has been kept incredibly busy by a series of important patent oppositions relating to medical devices patents of late; his advocacy is truly exceptional.

Other recommended experts

Jon Ashen is a top-notch life sciences drafter, whose new boutique Blue Penguin IP – which he runs alongside longstanding colleague Jo Shaw – is being eagerly watched by the market. After spending 11 years at one of the country’s largest outfits, his client skills and experience speak for themselves. The dual-qualified Julie Ballance of In-Legal brings 20 years’ experience of creating, prosecuting and litigating complex pharmaceutical and chemical patents to every brief she touches. In the words of one peer: “Allan Bowie of Bowie Yorke knows licensing better than anyone else in New Zealand.” In-Legal’s Jane Calvert is a versatile practitioner, at home working with venture capitalists, investors and other rights holders of all sizes. Her PhD in organic chemistry demonstrates her technical capabilities. Trans-Tasman IP legend Jim Piper, of the eponymous Pipers, is a fount of almost half a century’s patent litigation wisdom. Blue Penguin IP’s Jo Shaw is “top notch at what she does”, particularly when it comes to chemical and biotech patent drafting, prosecution and strategy work. Chapman Tripp’s Matt Sumpter is a “switched-on, keen, capable and driven lawyer” whose litigation expertise sets him apart from the crowd. He is also the author of New Zealand’s leading antitrust textbook. Simpson Grierson’s Richard Watts is a key name to note in the New Zealand patent licensing and litigation scene; his fast-moving consumer goods, pharmaceutical, IT and sports sector advice is absolutely second-to-none.

Individuals: litigation

  • Ian Finch - James & Wells
  • Gus Hazel - James & Wells
  • Paul Johns - Baldwins
  • Kate McHaffie - AJ Park
  • Blayne Peacock - Ellis Terry
  • Matt Sumpter - Chapman Tripp
  • Richard Watts - Simpson Grierson

Individuals: prosecution

  • Matt Adams - AJ Park
  • Jon Ashen - Blue Penguin IP
  • Andrew Baker - Dentons
  • Julie Ballance - In-Legal Ltd
  • Anton Blijlevens - AJ Park
  • Hadleigh Brown - AJ Park
  • Michael Brown - AJ Park
  • Frank Callus - Henry Hughes IP
  • Jane Calvert - In-Legal Ltd
  • Anton Gibson - AJ Park
  • Wes Jones - Baldwins
  • Andy Locke - Baldwins
  • Jonathan Lucas - James & Wells
  • Greg Lynch - Catalyst Intellectual Property
  • John Mansell - Catalyst Intellectual Property
  • Shayne Nam - CreateIP
  • Blayne Peacock - Ellis Terry
  • Jim Piper - Pipers
  • Jo Shaw - Blue Penguin IP
  • Robert Snoep - CreateIP
  • John Terry - Ellis Terry
  • Chris Way - Baldwins
  • Greg West-Walker - AJ Park

Individuals: transactions

  • Allan Bowie - Bowie Yorke
  • Sean Brogan - Baldwins
  • Mark Hargreaves - AJ Park
  • Blayne Peacock - Ellis Terry
  • Richard Watts - Simpson Grierson