Patents and Designs
The majority of the DCC’s revenue is generated from services in relation to patents. The firm generates revenue acting for local clients, foreign corporates directly and clients referred by foreign associates. DCC’s patent practice consists of 25 principals and an additional 29 professional staff, supported by 38 highly trained administrative staff.
For clients seeking to register patents or designs in respect of their own IP, DCC provides services across all stages of the patent and design lifecycles, being pre-filing, filing, prosecution and renewal. The types of services provided include:
- drafting of new patent applications;
- prosecution of patent and design applications in Australia, New Zealand, Singapore and in other overseas jurisdictions in conjunction with foreign associates;
- formulation of patent and/or design procurement strategies and filing programs;
- patent oppositions;
- IP portfolio management and maintenance;
- assistance in the commercialisation and licensing of patents and/or designs;
- infringement advice; and
- assistance in patent and/or design litigation.
DCC’s patent practice has several industry specialist groups comprising:
- biotechnology; and
- materials science.
DCC operates a full service trade marks practice which represents clients with rights extending around the world. DCC practices directly before the Australian, New Zealand, Singaporean and many Pacific Island Trade Mark Offices. DCC has been the largest individual firm filer of trade mark applications in Australia since 1999. The trade marks practice consists of eight principals and an additional 11 professional staff practising exclusively in trade mark matters, supported by 22 highly trained administrative staff.
The types of services DCC provide include:
- searching, analysing and advising on availability of trade marks;
- filing and prosecuting trade mark applications directly before:
- the Australian Trade Marks Office (ATMO);
- Intellectual Property Office of New Zealand (IPONZ); and
- Intellectual Property Office of Singapore (IPOS).
- advising on the filing of trade mark applications internationally including through the ‘International Registration’ system (Madrid Protocol);
- registering and maintaining business, company and domain names; and
- renewing trade mark registrations.
A significant portion of DCC’s trade mark revenue is derived from IP matters not directly related to the trade mark application process and often takes the form of strategic advice.
DCC manages the trade mark portfolios of many large Australian corporations, including ASX listed companies. DCC handles the trade mark application and registration process for these entities in almost every country in the world. As a result, DCC has an extensive network of foreign associates with whom DCC has longstanding relationships.
Davies Collison Cave Law Pty Ltd (DCCL) operates an IP focused commercial law and litigation practice with seven principals and an additional 10 professionals, supported by five highly trained administrative staff. DCCL’s practice operates as a separate commercial law firm, with each professional being a qualified and registered Australian legal practitioner.
DCCL’s practice provides litigation services in relation to all forms of IP including patents, designs, trade marks and copyright. Litigation services represent the majority of the revenue generated by DCCL. It also provides advice in relation to the following aspects of IP related commercial law:
- structuring advice including shareholders agreements, joint venture agreements and technology acquisition and divestment agreements;
- advice on the drafting and negotiation of IP related agreements including supply and distribution agreements, licensing agreements, non-disclosure agreements and R&D agreements; and
- general IP related commercial law advice relating to trade secrets, privacy, e-commerce, labelling advice, due diligence, IP portfolio audits, website terms and conditions, anti-counterfeiting programs and trade practices compliance.
DCCL primarily provides services in relation to transactions and disputes within Australia to both local and international clients. On occasion, DCCL may also assist in foreign matters with the assistance of foreign associates, for instance, by taking evidence or depositions from local witnesses for use in foreign litigation.
DCCL has a close relationship with DCC, which is its largest source of referrals and revenue. However, a material portion of clients are sourced independently from DCC. Cooperation between DCCL and DCC enable the provision of a complete suite of IP services to clients. This capability entrenches the client relationship by reducing the opportunity for competing firms to provide services and form a relationship with those clients.