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An interview with DCC partner Ian Pascarl

14 minute read

Ian Pascarl has extensive experience in the area of intellectual property law disputes and transactions, lately with a strong emphasis on major litigation in the pharmaceutical and life science areas. Listed by The Australian Financial Review as one of “Australia’s top lawyers” in the area of intellectual property, Ian is the immediate past Chairman of the Intellectual Property Committee of the Law Council ofAustralia (IPC), and is a member of numerous international, national and state committees including the American Bar Association, the International Association for the Protection of Intellectual Property, the American Intellectual Property Law Association and the Law Institute of Victoria.

Davies Collison Cave partner Ian Pascarl, was recently interviewed by Sharon Givoni for a profile which appeared in the Intellectual Property Law Bulletin (Vol 24, No. 1, May 2011). It is reproduced here with permission.

Tell me about your practice today; I understand that you deal with quite a specific area of intellectual property.

I run an intellectual property practice that involves almost entirely contentious work, which in turn includes advice work, together with a little non-contentious work and mediation of intellectual property disputes. The litigation is mostly patent litigation, some major copyright matters and a little trade marks and related rights work. The patent litigation has, over the last few years, been largely related to pharmaceutical and life science technologies, although having said that, we have just successfully completed a major matter in the Federal Court related to smoke detection technology.

As a partner at DCC, do you find that you spend a lot less time on actual file work and more time on marketing and management activities?

The work I enjoy most is involvement in the actual intellectual property issues. I think intellectual property practitioners are very fortunate to work in an area of the law that always involves challenging and intellectually stimulating issues, which almost invariably cover more than one discipline. However, like other practitioners, I must undertake marketing and administration activities, keep up-to~date with developments in the various areas of the law in which I practise, and make a contribution to the Law Council of Australia Intellectual Property Committee and a few other such bodies.

Can you roughly estimate what percentage of your time is taken up by each of these activities?

I estimate that I spend approximately 70% of my time undertaking work on behalf of clients, 15% on marketing and administration, 5% on personal research and keeping up-to-date, and about 10% on making a contribution to the profession generally.

I understand that you have recently been working on a pro bono project involving indigenous youth in country Victoria. Has this involved intellectual property at all? Can you talk about any of the intellectual property pro bono work in which you have been involved?

I have commenced assisting a central Victorian country entity that runs a range of initiatives for the indigenous community, including sporting teams, leadership training, education, health, retention of Aboriginal and cultural identity, employment and social inclusion. The organisation has had considerable success in engaging indigenous youth in its programs, with a remarkable reduction in the crime rate and in achieving sustainable private sector employment and education outcomes. There is a little intellectual property involved centring on a spectacular logo and artwork created by a local indigenous artist. Properly securing the trade mark rights and copyright, and detailed advice as to safe and effective exploitation of this spectacular brand, will ensure its use as an integral and memorable part of all the activities mentioned above. I see the logo as potentially as effective in promoting and advancing the initiatives summarised above as the WWF panda mark has been in promoting the protection of wildlife.

What is the most interesting case you’ve been involved in recently?

I find all intellectual property disputes interesting, stimulating and challenging, but perhaps the most interesting case I have been involved in recently has been one involving a very early smoke detection apparatus.

What are the facts of the case and why is it significant?

On 30 September 2010, Besanko J gave judgment in favour of our client. The reasons for judgment provided a judicial pronouncement on many patent issues including entitlement, the onus to be discharged by the opponent in patent appeals, the onus for establishing the priority date, the fact that a witness viewing the patent document before giving evidence does not render the witness’s evidence inadmissible and that prior art for novelty purposes is assessed at the date of publication of the prior art.

Significantly, the case confirms that in an appeal from a patent opposition decision, the onus on the opponent is a high one, such that the court must be practically certain that the patent, if granted, would be invalid. However, this high onus does not extend to the establishment of the primary facts of the case (such as details of publication of relevant prior art), which need only meet the usual balance of probabilities test.

I think the judgment is especially helpful confirming that, showing a witness the patent document before the witness gives evidence will not be fatal to the admissibility of that witness’s evidence and will only go to weight. Nevertheless, I think the preferable and safest practice is not to show the witness the patent document until completion of the obviousness evidence.

Tell me a bit about your role as Chairman of the Intellectual Property Committee of the Law Council of Australia (IPC).

The IPC is undoubtedly one of the most talented, hard working and effective committees of the Law Council and certainly the most impressive one that I have been associated with. I was Chairman of the committee from 1 January 2004 until 31 December 2009.

The IPC is a committee of experts, and people cannot simply apply to join; rather they are invited following recommendations to the Law Council executive from existing members. Most members are based in Melbourne and Sydney, with a smaller group in Brisbane, and a sprinkling of interest in South Australia and Western Australia.

What do the members consist of and on What basis are they chosen?

The members are either partners in law firms, leading barristers, or leading academics. There are also one or two in-house lawyers. They are chosen for their expertise alone, and not for the firm or company of which they are a member.

This method of selection provides a reasonably good safeguard against problems that I have seen arise in relation to other committees, where committee selection has permitted candidates to become members for less than clearly established expertise and altruistic reasons.

Can you elaborate on this?

In my experience, practitioners seek membership of professional committees for one of three reasons. The first is a genuine desire to make a contribution to their profession and the general community. The second is as a means of disciplining themselves to keep up-to-date with the latest developments in their area of the law. The third might be to list the membership on their CV for promotional purposes. Thankfully, IPC members almost exclusively fall into category one, and I and other Chairs have worked hard to identify and eliminate any actual or perceived intrusion of camouflaged client interests into the committee’s deliberations.

How often does the committee meet and where (given that you have members in various states in Australia)?

The entire committee meets on the first Wednesday of each month (except January) as three separate groups in Melbourne, Sydney and Brisbane, with one meeting per year of the entire committee together by video conference. In addition, sub-committees covering patents, trade marks, designs, copyright, plant breeders rights, and court procedures, meet whenever necessary to deal with issues relevant to that discipline — with a convenor and deputy convenor for each discipline. As the practice has been for the Chair and Deputy Chair of the entire committee to be domiciled in either Sydney or Melbourne, we have adopted the same practice for the convenors and deputy convenors of the sub-committees. That is, if the convenor was based in Sydney, the deputy convenor would be based in Melbourne. This approach is designed to assist in involving members in both major states in the work and life of the IPC. With the rejuvenation of the Brisbane committee, it is hoped that the Brisbane Deputy Chair and members will also become much more involved.

Tell me how the submission process works in terms of the IPC’s involvement?

When the IPC receives a request to make submissions on a reference from bodies such as IP Australia, ACIP, the Attorney-General’s Department, ALRC (eg,on the Intellectual Property Laws Amendment Bill 2011 and the Human Genes and Biological Material Bill 2010), the IPC Chair places the item on the agenda for consideration by the full committee. After initial discussion at the monthly meeting of the IPC, it is referred to the relevant sub-committee for the preparation of a first draft of the submissions. The relevant sub-committee normally begins its work with a meeting (in person or by way of a telephone conference) of the sub-committee to consider the issues, form preliminary views, and allocate tasks. The relevant sub-committee members are required to attend one or more consultations with the referring body during the course of the reference, and if and when the reference moves to a legislative draft.

What happens with the advance draft once it has been completed?

It is then circulated to the full committee for comment, and after all comments have been debated and agreed to, it is referred to the Law Council executive for the final sign-off, followed by delivery to the body requesting the submission.

Do members of the IPC serve on any other committees?

Members of the IPC also serve on other Australian and international committees. Most IPC members serve on sub-committees of one or more of LES, AIPPI, AIPLA, INTA, and local committees such as the Patents Consultation Group, Trade Marks Consultation Group, Designs Consultation Group, and the IP Forum, all of which have been established by IP Australia. These local IP Australia committees meet regularly to discuss developments within each area of expertise (eg, filings, international treaty discussions, legislative concerns, and case law developments) and to receive comment. IPC representatives on these committees distribute the minutes and other action items from these committees to IPC members, both to keep them informed and to seek comment for referral back to these other committees.

Do you recall how many submissions the IPC submitted while you were Chair?

During my Chairmanship, the IPC prepared and submitted 51 submissions, since 31 December 2009, 8 submissions. This is an enormous intellectual output for a body composed of time-poor professionals who have very demanding “day jobs”.

I know! How did you do it?

As someone once said: “if you want a job done, give it to a busy person”. In this regard, like all committees, some members are more active than others and I found that there were some members who were more willing than others to volunteer to undertake this demanding work. Because of this willingness, as Chair, I can say that I have rarely experienced any major difficulty in finding volunteers to work on complex submissions, although, invariably, my first task will always be to apply for an extension of time from the referring institution. However, on the rare occasions when volunteers were not immediately forthcoming, or when I felt it unfair to refer the task to a particular member or group because they had recently contributed substantially on other references, I as Chair would undertake the task myself.

Still on the topic of submissions, what happens if some members of the IPC have different opinions on a certain topic?

Although not bound to do so, as a matter of policy, the IPC provides one unanimous opinion on submissions without revealing any minority view; ie, because the IPC feels the party requesting the submission or opinion will be better assisted by a unanimous strong recommendation one way or the other. As to decision making within the IPC, it essentially makes its decisions by consensus and usually without any deep division arising on the issue under consideration. The most contentious issue to arise during my Chairmanship was the initiative to introduce plain packaging for tobacco products.

Why do you think that this issue was so contentious?

There are clearly very important public health issues relating to tobacco smoking, and the underlying dilemma for the IPC was whether it was confining itself to considering and reporting on pure legal issues or straying into policy issues which are the exclusive preserve of government.

The legal subissues were whether the introduction of plain packaging would:

  • operate as a restriction on the trade mark owner’s rights;
  • be inconsistent with TRIPS or any of Australia’s other treaty obligations;
  • make it easier for counterfeit products to be produced and introduced into the Australian market; or
  • be unconstitutional as an improper acquisition of property contrary to the Australian Constitution.

How did you deal with the issues that arose?

Different views were expressed eloquently and forcefully by different IPC members on those issues over a number of meetings, and I received many emails and telephone calls from members Australia-wide wishing to express views additional to those expressed in the monthly meeting debates. A consensus was not reached and I reviewed the state of the deliberations with the Law Council executive who ultimately directed for the IPC to not express any opinion on these matters because of an earlier over-arching policy decision into which the subject matter fell.

Is the packaging debate still live?

Yes, it remains before the Federal Parliament and it is very interesting because, as recently as 8 February 2011, Senator Abetz directed a number of questions similar to those debated by the LPC to Senator Carr, the Minister for Innovation, Industry, Science and Research.

What other types of issues have you had to deal with that you have found challenging, particularly in terms of the political aspect?

It is interesting that you ask that question, as in my experience, issues that become political pose special problems for the IPC. For example, the Human Genes and Biological Materials Bill 2010 is an issue that has become so politically charged that there is a very real risk that public hysteria may impact adversely on the proper application of the legal principles in this field, with the further risk that it will undermine the application of good principles in allied areas.

Moving on from political challenges, I am also interested to know how long the membership term is when someone joins the IPC — is it indefinite?

No. The membership of each member is reconsidered annually and this provides the IPC with an opportunity to assess the worth of the member’s contribution and then decide if that member should be invited to serve for another year. During my chairmanship, I endeavoured to implement some generational change and introduce some new energy into the IPC. I also endeavoured to facilitate a greater involvement of the Brisbane sub-committee and with members in South Australia and Western Australia (with mixed success), as well as an annual meeting, or at least a dialogue, with members of the Intellectual Property Panel of the Federal Court of Australia and Federal Court Magistrates.

What sort of pressures did you experience in your role as Chair of the IPC, particularly arising out of the many developments in this rapidly changing area of law?

During my chairmanship, the pressures increased exponentially. In my view, this was largely because of:

  • developments in technology giving rise to new intellectual property issues and the issuing of references to the IPC inviting a large number of submissions on complex issues such as digital agenda copyright and gene patenting developments;
  • the desire of the government to legislate to deal with such developments;
  • treaty obligations created by relentless pressure from sovereign states to improve the trading conditions for their nationals or, in the case of Australia, to improve Australian international competitiveness and wealth creation by streamlining the intellectual property laws in an endeavour to facilitate improved innovation;
  • the initiative to harmonise, where possible, Australia’s intellectual property laws with those of Europe and the United States — I understand the ultimate objective is to facilitate acceptance of examination completed in one jurisdiction in other jurisdictions because the legal tests being applied during examination in each jurisdiction are essentially the same;
  • and a concept I refer to as the new “era of engagement and transparency”, whereby institutions such as IP Australia, government departments (eg, the AttorneyGeneral’s department), the Federal Court of Australia and others, invite and encourage consultation comments and a dialogue with the IPC on proposed developments, and feedback on their own peiformance in delivering services.