What led you to found your own firm and what advice do you have for anyone considering doing the same?
After 10 years leading the management committee of a large firm, I came to realise that it was not the right kind of organisation to provide high-level, sophisticated strategy advice for entrepreneurial clients. I founded Franke Hyland with my partner Adam Hyland so that we can provide focused expertise without the baggage of a large firm.
My advice for anyone contemplating the same is to try to develop a vision for what your new firm will be and work backwards from there. It is a big jump, but it was the best career decision that I have made.
Which of your cases or matters is the most memorable and why?
My practice is not about cases, so much as a holistic approach to helping clients. What I find rewarding is seeing my advice and guidance playing a part in the long-term success of clients, particularly when I have worked with them from an early stage through to becoming a successful company. When that early-stage company becomes listed on a stock exchange, or moves to a profitable business model, that is a real achievement.
What are some of the biggest challenges facing your clients – both in Australia and internationally – and how are you helping them deal with these?
One of the key challenges is to develop a base for long-term IP protection for early-stage clients, against a background of ongoing product development, commercial risk and modest budgets. This often requires choices to be made about types of intellectual property, territories, use of various international systems and, importantly, timing. The drive to try and file as early as possible, against the need to have adequate support and delay filing and the rollercoaster of deadlines, is a constant challenge, and I try to bring a clear-headed analytical approach to guide such decisions.
In your experience, what are the key components of a world-class IP strategy?
An IP strategy is a very bespoke exercise, if it is done well. It has to start as early as possible in the product development process, with an understanding of the commercial pathway. Deep and wide knowledge of IP systems, timing and costs then all interact to produce a strategy. Equally, the strategy will adapt over time to changes in products, modes of use and the issues that arise on the IP journey.
If you could change three things about the patent scene in Australia, what would they be and do you expect them to happen?
One of the biggest issues for Australian clients is the patchy international availability of novelty grace periods. Universities and early-stage companies commonly expose their technology before filing. While grace periods are available in an increasing number of jurisdictions, in some cases they are quite expensive and onerous to use and are not available in Europe and other regions. This creates an inequity, as, for example, a German company can benefit from grace periods for filings in Australia, but this is not the case for Australian companies filing into Europe.
The Comprehensive and Progressive Agreement for Trans-Pacific Partnership requires parties to implement a 12-month grace period, and recent applications to join from the United Kingdom and China (and Taiwan) offer some hope that progress to a more universal rule can be made.
A perennial issue is that Australia has a pre-grant opposition scheme, and only an ex parte re-examination system. The latter does not allow a party alleging invalidity to participate beyond initial submissions, and so is of limited effectiveness. The Federal Court is an option, but an expensive one. It would be good to see the opposition system morph more into a revocation procedure, with similar procedures to the pre-grant system.
The third thing that I would change is not in Australia, but in New Zealand where I also practice. New Zealand has a very restrictive divisional practice, which effectively eliminates the ability to use divisionals to revisit objections, or to pursue alternative claim sets, unless this is decided very quickly after Patent Cooperation Treaty entry. The effect is that it is more challenging to pursue a consistent strategy, in the light of examination and prior art from other jurisdictions.
Peter Franke is a principal of the firm and holds a BSc in physics and computer science and an LLB from the University of Melbourne. He practises as an IP attorney in Australia and New Zealand. Mr Franke’s practice covers filings, oppositions and other matters at IP Australia and IPONZ. However, his focus is on developing international IP protection strategies for technology developers, particularly in the deeptech, medtech and AI spaces.