News and Insights

At Wisewould Mahony we offer a full suite of legal services covering business, commercial, financial services, IT, IP, property and related areas, with lawyers in Melbourne and Geelong working on a wide range of issues. The following is a brief outline of some of the issues that clients have recently asked for advice on that may affect your business:

EMPLOYMENT AGREEMENTS NEED REVIEW

General employment protections are much in the news, recent changes to the Fair Work Act mean that employment agreements should no longer include clauses aimed at making employees keep their remuneration and related conditions secret. Employers should urgently review their standard form contracts to ensure compliance.

We have just finished a trial in the Federal Circuit and Family Court of Australia, where we acted for an employee who alleged that their employment was terminated by the employer due to the complaints and or inquiries they made in relation to their employment – pursuant to provisions of the Fair Work Act 2009, an employer must not take any adverse action against an employee because that employee exercised their workplace right to make a complaint or inquiry.  (Read More)

CORPORATE STRUCTURE IS NOT SET AND FORGET

A client recently came to us while in the process of selling the business which they owned and operated through various entities within a corporate group. Potential buyers had expressed a preference that the target business be restructured prior to sale to better suit their ongoing needs (Restructure).

This Restructure was complex and time consuming with implementation requiring our client to engage with (and obtain the consent of) various third parties including regulatory authorities, financiers, landlords, customers and suppliers. Ultimately the Restructure led to an extended sale process and increased costs. Business owners should be conscious to review their ownership and operating structures regularly to ensure they are well positioned to execute any sale, purchase, merger, transfer, capital raising, joint venture, succession or other business transaction quickly and cost effectively.

RESCUING IP FROM A FAILED COLLABORATION

Our client was a registered charity formed by two medical research academics to conduct and support medical research.  The two directors had put their life’s IP into the charity.

A foreign venture capital firm proposed paying the charity a substantial sum to collaboratively develop medical treatments using the charity’s valuable IP and encouraged the charity to commence collaboration prior to contracts being negotiated or signed.  After accessing the charity’s IP and collaboratively making minor developments, the venture capital firm sought to terminate the arrangement without making any substantial payments and asserted ownership of all the charity’s IP.

The charity’s representatives were understandably confused and angry. We spent considerable time explaining applicable principles of IP and contract law, enabling our client to make informed decisions.  The cost and uncertainty of cross-border litigation, and the risk of losing future use of IP critical to future development in the space motivated both parties towards an agreed settlement, despite the complexity of the issues in dispute.

We were able to agree a settlement involving: retention of key IP by the charity, a novel combination of IP assignments and licenses from our client to the venture capital firm, an upfront payment and ongoing annual royalties to the charity, acknowledged rights for the charity to continue with its own research and development in the space, and reasonable obligations on the venture capital firm to commercialise the assigned and licensed IP on which the royalty is based.

If any of these matters raise issues you would like to discuss, please give us a call on (03) 9629 8333, or email any of our lawyers or enquiries@wisemah.com.au.