AJPark

Scott is an expert in the commercialisation of intellectual property rights.  He works with clients across a broad range of industries, including ICT, manufacturing, retail and distribution, biotechnology, entertainment, education and government.  He is a senior associate in the commercial team and is based in our Auckland office.

Scott's clients include some of New Zealand's largest and most innovative companies, and he also works with start-up ventures and small businesses. His clients include Air New Zealand, Comvita, Fisher & Paykel Appliances, the University of Otago, The Warehouse, Copyright Licensing Limited, and Aquaflow Bionomic Corporation.

Scott has expertise in all of the following areas:

• providing advice on the structuring of IP licensing deals;
• negotiating and drafting IP licensing agreements - including patent, copyright, trade mark, design and know-how licences;
• addressing IP ownership issues and advising on ownership strategies to protect IP portfolios;
• negotiating and drafting ICT agreements, including software licences, development agreements, ASP and hosting agreements, services agreements and support and maintenance agreements;
• negotiating and drafting manufacturing, distribution, agency and franchise agreements;
• structuring, negotiating and drafting research, development, evaluation and confidentiality arrangements;
• strategic alliance and joint venture arrangements.

Recent examples of Scott's work include:

• assisting a listed company with a major product design programme, and assisting the client with a range of intellectual property ownership and licensing issues in its dealings with suppliers and designers;
• helping another company with a high-profile licensing and supply arrangement with a US company. This involved complex international licensing and competition law issues, as well as corporate structuring work;
• assisting a major company on the drafting of a collaboration agreement with an international technology supplier;
• helping a company involved in biofuel research and exploitation with the terms of a collaboration agreement with an overseas organisation;
• helping a company to negotiate a major international licensing deal with one of the world's largest food companies;
• working with a company on a joint venture deal to exploit a piece of software that was developed by an employee, including preparing a shareholders agreement and constitution documentation;
• preparing and negotiating a shareholders agreement and constitution documentation for a joint venture being established between a company and a number of overseas parties to exploit a new wool technology;
• advising a company with corporate restructuring work, involving the transfer of IP assets to related overseas parties and the licensing of various IP assets within the group structure;
• helping a company with the terms and conditions of a design competition, including IP ownership provisions, where people submit designs or inventions based on an initial design brief;
• assisting a retail company with a number of software licences, support and maintenance agreements and development agreements relating to its retail operations;
• preparing website terms and conditions of use, privacy policy and other documentation relating to a new online business;
• working with a company to develop legal documentation, including licensing arrangements, around a new business model for the commercialisation of certain resources and materials;
• advising a prominent author on the terms of a licence granted by him to a publisher.

Scott acts for a number of clients involved in the area of clean technology, and is a member of A J Park's Clean Technology team.

Scott joined A J Park early in 2004.  Prior to working for A J Park, he practised as a commercial lawyer for another Auckland law firm.  Scott has also worked as in-house counsel for one of the United Kingdom's largest and most innovative retail organisations.
Scott is a member of the New Zealand Law Society, the Auckland District Law Society, and the Intellectual Property Society of New Zealand and Australia (IPSANZ). He is also a member of the Licensing Executives Society of Australia and New Zealand (LESANZ), and is a member of the New Zealand committee of LESANZ. He has presented seminars on licensing and other IP commercialisation issues to a number of organisations, and has written articles on IP commercialisation issues for a number of publications.

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