Australia Patent Attorney Firm of the Year: FB Rice

Q: Can you tell us about your team (eg, size, practice focuses and key individuals)?

A: FB Rice is one of the oldest and most respected IP firms in Australia. We have grown considerably over 70 years and are proud to now have one of the largest teams of registered IP attorneys in the country, as well as the largest searching team. We are equally proud of maintaining a local touch with global reach.

We offer the full suite of IP services for patents, trademarks, litigation support, registered designs, copyright, renewals, searching and research tax consulting. These services are offered across biotechnology, chemistry, engineering, medical technology, pharmaceuticals and information and communication technology. The breadth of our team and expertise means that we are well resourced to manage large global portfolios while maintaining the technical range to manage smaller portfolios with complex IP considerations.

Key individuals include Brett Lunn, managing partner (medical technology), Charles Berman, partner (engineering), Marcus Caulfield, partner (life sciences) and Michael Seifried, partner (trademarks).

Q: What were some of your highlights of 2019?

A: Continued growth in 2019 enabled attorney promotions for Andrew Gregory, Brittany Howard, David Herman, Dae Oh and Karl Solanthi. Our searching service offering, Athena IP, also continued to grow and we now have the largest in-house searching team in Australia.

Moreover, we were delighted to win the IP Specialist Firm award for the second year in a row at the Client Choice Awards 2019 – the only client-voted professional services awards in the world.

However, the key highlight for us has been the retention of deeply valued clients. Continuing to serve and contribute to our clients’ successes is our highest aim. In Australia, we have been pleased to maintain our close association with the Commonwealth Scientific and Industrial Research Organisation, the Bionics Institute, Garvan Institute of Medical Research, Benitec Biopharma and Mesoblast, to name but a few. Internationally, we continue to serve the likes of Laing O’Rourke, Xero and LG Electronics.

Q: What do you tell new recruits and potential clients about how your firm stands out from the crowd?

A: Our people are how we stand out from the crowd. We recruit the best people – responsive, thoughtful and reliable. Each of our attorneys has the relevant technical expertise and communication skills to ensure that our clients receive a superior service. That is a hallmark of our firm.

We believe that being actively engaged with the industry at grassroots level is key to industry excellence. Both locally and globally, our extensive networks are an integral part of our ability to offer a seamless service every step of the way.

We believe that retaining private ownership – against the trend of Australian IP firms becoming publicly listed – has enabled our firm to maintain its culture and identity. We have a strong focus on making FB Rice a great place to work and on fostering an inclusive environment that extends from our employees to our clients.

Q: How are client demands changing and what impact has that had on your practice?

A: Economies around the world have faced uncertain times in recent years. As a firm with a large proportion of international clients, this has had a major impact on the demands we have to meet and the ways in which we run our practice.

Clients are under pressure with deadlines and budgets; in response, we have had to become more flexible with our fee structures and service offerings. This means that holistic strategic advice from the outset is often crucial to achieving the right commercial outcomes.

Another way in which we have responded to changing client demands is by automating more processes with the aid of a new workflow system. This enables us to work more efficiently and has led to reductions in billable hours.

Left to right: Brett Lunn (managing partner), Madeleine Kelly (partner) and Steve Gledhill (partner)

Q: The Australian IP legal market has gone through some seismic changes in recent years – how do you ensure that you continue to be recognised as one of the leading firms?

A: The challenges have shifted gear in the Australian IP market with frequent changes in company ownership among our key competitors. Most recently, IPH’s acquisition of Xenith IP Group Ltd has brought many competitors under two large listed parent companies.

FB Rice has not changed its ownership and remains privately owned by its partners. While our large listed competitors are settling into their new company structures, at FB Rice we are conscious that we must innovate and work smarter than ever to ensure our continued growth. To this end, and to compete with economies of scale, our strength over the past year has been in adopting an agile mindset with creative approaches to our service delivery. This means that we can improve and deliver efficiencies for the benefit of our clients wherever possible.

Q: Are there any industries or sectors that are particularly active at the moment?

A: Despite global economic uncertainty, innovation continues to thrive and our local and foreign work remain busy. Among start-ups there has been particularly strong growth in the areas of robotics, AI, blockchain technology and agricultural and food technology.

Climate change is driving strong innovation in clean technologies and we expect to see continued rapid development in this area as more and more resources, both human and financial, are poured into these efforts.

Equally, life sciences has benefited from highly competitive research and development in recent years and the increasing crossover with engineering means that intellectual property is becoming multi-disciplinary in new and exciting ways.

Q: How has Australian case law around patent eligibility changed in recent years?

A: In the life sciences field, the patent office is grappling with the new Australian support and enablement provisions and our attorneys are engaging on these issues successfully. In contrast to many jurisdictions, diagnostic methods and methods of medical treatment remain patentable in Australia. The courts continue to assess patentable subject matter based on whether they consider the substance of the invention to be made by humans. As a result, isolated nucleic acids that have the same sequences as those occurring in nature are not considered patentable subject matter.

In the software field, recent court decisions have emphasised that inventions involving generic implementations of abstract ideas are not patentable. However, there has been no clear guidance on what constitutes a generic implementation or an abstract idea. In practice, inventions that provide a technical effect tend to be considered patentable, whereas business method-type inventions are increasingly being found to lack patentable subject matter.

Q: Beyond Australia, how do you target work from overseas markets, particularly in Asia?

A: Many of our partners are active and engaged members of the international IP community and bring on more junior employees in this tradition. In addition to nurturing our overseas relationships with regular international visits, we also serve on international committees and attend conferences regularly. Again, our attorney development is very important; therefore, investing in building out their expertise and global industry experience is a priority.

The IP systems in Southeast Asia can be difficult for our clients to navigate. As such, we act as a central point of contact to deliver a seamless service across the region. We tap into our close working relationships with carefully selected partner firms holding carriage for our clients as they secure IP rights in these jurisdictions.

Q: What are the major trends that you think will shape the Australian patent market in the next five years?

A: The key factors likely to shape the patent market in Australia over the next five years are:

• the continued relative strength of the Australian economy; and
• the continued integration of the Australian economy into Southeast Asia.

Provided that these two things continue, Australian and international patent applicants will continue to regard Australia as a sensible destination to seek and enhance their IP position with the aim of exploiting that intellectual property in Australia and its geographical region. We have shifted our approach in recent years to ensure that we can offer clients a seamless service in Australia and Southeast Asia and we believe that we are well positioned to assist clients in the region.

Q: What advice would you give to a young patent attorney at the start of their career?

A: Integrating yourself into the IP scene, both locally and internationally, is important for a young patent attorney. It is essential to make and maintain contacts and build out your network. This will not only help to grow your practice, but will also assist with keeping up with both technical and legal developments, as well as understanding the market.

Seek out every opportunity to maintain and extend your expertise. Never stand still, content with where you are; always strive to better yourself.

Finally, we advise young attorneys to enjoy the customer service aspect of the job. Recruiting the best people means recruiting not only technical experts but also those with excellent communication skills. Clients are at the heart of our business and, as champions of their innovation, delivering a superior service is paramount.