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  • Scott Bouvier

    Partner
    Sydney
    T: +61 2 9296 2472
    M: +61 407 894 528
 

 Professional Biography

 
  • Scott Bouvier advises on commercial dealings and disputes with intellectual property and technology.  Scott is recognised as one of the “World's Leading Patent and Technology Transfer Licensing Lawyers” and “World’s Leading Trade Mark Professionals” by Intellectual Asset Management magazine.  Clients describe Scott as always available, pragmatic and prepared to give his opinion.

     

    Scott's practice includes:

    1. IP, advertising and commercial advice to leading brand owners, FMCGs and agribusinesses, including trade mark prosecution/oppositions and advice on advertising campaigns, new product launches, food law and therapeutic goods.  Scott is head of the firm’s Consumer, Retail and Agribusiness team in Australia, the firm’s AFGC representative and the editor of Agrithinking, the firm’s seasonal publication on legal and regulatory issues in agribusiness.
    2. R&D and IP commercialisation transactions for a leading University, a National Research Institution and ANLEC R&D, including R&D funding, research collaborations, patent licensing and start up/VC companies. Recently, Scott's practice has primarily involved low emissions and renewable energy technologies and projects.  In this context, Scott is described as "always focused on getting the deal done. Well established at the vanguard of Australian patent and technology licensing, he assisted CSIRO on global licensing agreements for its Ultrabattery technology." (Intellectual Asset Management magazine 2011).
    3. IP aspects of M & A and venture capital transactions, franchising advice and sports and entertainment transactions and advice.

    Scott's litigation experience gives him an in-depth insight into what matters when you transact IP and technology and how to creatively deal with disputes.  Through his career Scott has acted on a range of leading cases (eg the Barefoot Radler, Kettle Chip and Duff Beer cases), and litigated disputes involving food production, solar technology, medical devices, passing off, copyright and trade mark infringement, distribution arrangements and IT system development. Scott recently acted in the first trade mark infringement case in the High Court under the 1995 Trade Marks Act, E&J Gallo v Lion Nathan, involving novel issues of trade mark use. Scott's trade mark expertise led to “NEW” being registered as a trade mark for beer and images of the Sydney Opera House being registered in recognition of its global iconic status.

     

    Scott recently spent 5 years as Partner in Charge of the Sydney Office. This has complemented his legal practice by giving him significant management and leadership experience. Scott is the Chair of the firm's Sydney Pro Bono Committee and a member of Mallesons in the Community Board.

 

 Experience

 
  • 1987: Bachelor of Commerce, University of Queensland
  • 1989: Bachelor of Laws (University medal), University of Queensland
  • 1991: Associate to the Honourable Justice Lockhart, Federal Court of Australia
  • 1990, 1992 - mid 1997, late 1998 - 1999: Mallesons Stephen Jaques, Sydney
  • 1996: Masters of Law, University of Sydney
  • Mid 1997 - mid 1998: Associate, White & Case, New York
  • 2000 - 2012: Partner, Mallesons Stephen Jaques, Sydney
  • 2012 - present: Partner, King & Wood Mallesons, Sydney
 

 Recent Matters

 
  • CSIRO on a range of R&D projects and IP commercialisation transactions over the last 6 years including on the National Geosequestation Laboratory, low emission coal research projects in China, multiple Solar R&D projects, the Ultrabattery licensing arrangements, CSIRO's standard patent licence and research agreements and start up company creations and exits (eg Smart Storage, T-Mag and ComEnergy). Scott's work for CSIRO spans food production, agriculture, low emissions coal, renewable energies, ICT, preventative health, mining and metals deals.
  • The University of Sydney/Sydnovate on IP commercialisation, research and trade mark matters over the last 6 years, including licence disputes, CRCs, clinical trial agreements, ARC Linkage agreements, numerous patent licences, research alliances, spin off company exits and the creation and updating of a suite of standard research, technology transfer and IP commercialisation agreements.
  • ANLEC R&D this client will provide $150M in funds for R&D in Low Emission Coal Technology over 2010 to 2016. Scott's work has included acting for ANLEC R&D in its funding agreement negotiations with the Commonwealth and ACA Low Emissions Technology, preparing a suite of pro forma documents to be used by ANLEC R&D in its future research projects and multiple project negotiations across a range of low emissions technologies.
  • Lion Nathan recently, on major sponsorship agreements across rugby union, rugby league, AFL, horse racing, motor racing and soccer (going back 17 years and including the Melbourne Cup); major product innovations and commercial sales and marketing agreements and advice across their beer and wine business. Scott has also advised on their major brands such as Tooheys, XXXX Gold, Boags and Hahn and advertising and food laws (over 15 years). Major matters include High Court litigation over the Barefoot trade mark; the creation of XXXX Gold Beach Cricket, Six Beers of Separation and The Lab formats; the acquisition or launches of XXXX Summer Bright lager, Hahn Super Dry, James Boag's Pure, McKenna and Inner Circle Rum.
  • Sydney Opera House on trade marks, IP and commercial matters including an active ongoing brand protection campaign involving the novel registration of images of the Opera House and over 50 opposition and non use actions in the last 6 years.
  • Colgate Palmolive on advertising, product claims, therapeutic goods and IP issues over the last 6 years, including a successful challenge which resulted in the TGA registering Colgate Sensitive Pro Relief as a medical device and other TGA CRP challenges.
  • Sports deals including World Sports Group on its sports and commercial rights services agreements for the Singapore Sports Hub, Cricket NSW on its Big Bash league franchises and Basketball Australia on its broadcasting and IPTV deals.
  • Michael Hill Jeweller on an IP valuation dispute with Australian Tax Office.
  • Chubb Mobile Services on the restructure of its mobile patrols network from a franchising system.
 

 Professional Memberships

 
  • Licensing Executives Society of Australia & New Zealand
  • Intellectual Property Society of Australia & New Zealand Inc