Paul McGinness

|Managing Partner Canberra

Paul has wide dealings in branding strategies, protection, enforcement and management for both corporate and public sector agencies. He assists clients with trademark registration and licensing, dispute management, and enforcement. This includes advising on the Trade Marks Act 1995 and anti-competitive conduct. His many branding clients include Les Mills Asia Pacific, Global Carbon Capture and Storage Institute Limited, HealthDirect Australia, and the Australian Securities and Investment Commission.

Paul is one of the leading lawyers in Australia for IP commercialisation. Paul is the author of Australia's leading publication concerning IP Commercialisation - Intellectual Property Commercialisation - A Business Manager's Companion (LexisNexis). He advises public sector and corporate clients specialising in commercialisation and research projects in the resources and energy, health and agriculture sectors.

Paul advises on protection, licensing and enforcement of copyright on software, artistic and literary works and reports. His expertise includes the application of open source regimes, such as creative commons, and the application of Government or Crown rights. Most of Paul's work in this area is focused on cross-border research and the development community as well as clients operating in the information technology, defence, and resources and energy industries.

Paul has advised on the establishment of numerous joint venture corporate entities focused on collaborative research and cross-jurisdictional policy implementation. His many projects include Global Carbon Capture and Storage Institute Limited, the Australian Solar Institute Limited, HealthDirect Australia, CO2CRC Limited and Cancer Therapeutics CRC Limited. Paul’s work includes advice on structuring options, corporate governance, preparation of constitutions, and shareholder and participants’ agreements.

Paul leads the firm's Government Industry Group. He has dealt widely in projects involving publicly-funded entities and cross-jurisdictional policy implementation, including many complex and sensitive projects. Such work requires an intimate understanding of Government processes and rules, the risk appetite of Government agencies, and the ability to interpret legislative and government procurement rules and transaction documents. Paul has worked as in-house counsel for governement agencies.

Paul has extensive experience in the health sector, specialising in e-health, health organisation governance, and health research and development. His clients include HealthDirect Australia, Federal Department of Health and Ageing and Department of Human Services. Paul also advises high growth enterprises seeking to commercialise the technology in the health sector.

Paul advises corporate and public sector clients on a range of technology-related issues including IT procurement, e-health issues, software development and licensing, and database development and management. He has wide sector involvement with clients operating in the health, government, resources, energy and agribusiness industries.

Paul advises corporate and public sector clients across a range of IP issues including patents, copyright, confidentiality and branding. He has a special focus on commercialisation and translation. Widely recognised as an expert in the sphere, Paul is the author of the leading Australian publication, ‘IP Commercialisation: A Business Manager's Companion’, and the lead author of ‘Optimising Collaborative Advantage’, a legal issues analysis of international research collaborations.

Paul advises on licensing and enforcement of patents concerning software, business processes and manufacture. Paul has broad public and private sector experience in licensing deals, particularly in the health, defence, and resources and energy industries.

Paul has been recognised for his expertise in IP licensing and translation through PLC Which Lawyers in the Life Science category for commercial and partnering expertise, in Intellectual Asset Magazine's 2010 250 World's Leading Patent and Licensing Lawyers. He provides strategic legal advice on negotiation and interpretation of cross border licensing arrangements.

Paul has advised on privacy implications for significant governement initatives, including the personally controlled electronic health record and the unique student identifier.

Paul advises on complex and sensitive procurement projects for Government and major suppliers. He is highly regarded for his delivery of strategic advice aligned with client objectives and preferred risk profiles. Paul is well-versed in ISO 31000 methodologies and the delivery of auditable legal risk management plans. In project transactions, Paul can lead legal negotiations and heads a team that drafts and interprets request documentation, procurement process documents, and contracts.