Elisabeth Opie

What has been your proudest professional achievement from the last 12 months, and why does it stand out?

I have been involved in many aspects of innovation throughout my career. This has included setting up spin-off companies, drafting, structuring and negotiation of many types of IP transactions and R&D agreements for different sectors and around the world. The context has been from inception through to commercial negotiation through to litigation. To build upon my broad and deep experience and enhance my soft-skill toolbox, I became an accredited mediator. This role enables me to facilitate communication between parties and, within a neutral and confidential forum, afford them the opportunity to both see the world from a different perspective and identify a solution that can work for them moving forward.

What prompted you to establish a specialised tech IP firm, and what advice would you give others considering a similar move?

I have had the privilege of working with science and technology for my entire career, and meeting many, many brilliant and dedicated people from all over the world. In 2013, I completed a two-year Global Research Alliance (GRA) fellowship, which focused on international investment in science and technology. The GRA draws on collective and synergistic capability from nine leading applied-research organisations from around the world to address sustainable development goals in developing countries (eg, water, energy and food security, health and IT). The fellowship was an extremely rewarding and fulfilling experience, with one highlight being the bringing together of Wi-Fi technology scientists from Australia and antenna technology scientists from Germany to deliver Internet access to rural Sub-Saharan Africa. This outcome was made possible by combining great technology, and the project enabled the merging of personal commitment and talents of a multi-disciplinary international team, where individual strengths were optimised and the collective mindset was solution driven.

During the fellowship, I contemplated my next source of both personal and professional growth – and the stars aligned to form a law firm focused on international technology. The lead up included strategic planning, a prioritised business plan, identifying a differentiating feature and many discussions with a variety of people that inspired, guided, connected and recommended me. All of this – and more – has continued since our launch. This year feels like a momentous one to both reflect upon all that has passed and look ahead as we celebrate a decade of the firm.

As a legal expert operating across jurisdictions, what are your top tips for balancing multi-jurisdictional patent litigation with clients’ cross-border business needs?

Commencing litigation is not a light decision. The agreed strategic purpose of any multi-jurisdictional patent litigation should be well understood and reflected in any flow-on decisions. Progress should be regularly reviewed, as well as when critical events occur – for example, the handing down of a patent validity or infringement decision.

Numerous factors should be considered:

patent strength and risks in relevant markets;
against whom litigation will be commenced;
why litigation is preferred over other options, such as alternate dispute resolution;
jurisdictions selected to commence litigation, in what order and why;
litigation costs and exposure;
the core team’s composition and further resourcing;
exposure to discovery and/or depositions;
company board and executive management time; and
impact on business reputation.

Litigation does not need to be to the exclusion of negotiation or alternate dispute resolution, especially if it arises between parties that have long-term or multiple business arrangements in place. It is worthwhile thinking about how, to what extent and at what level communication or negotiation channels should remain open vis-à-vis the area of dispute. The commercial and litigation strategy should be coherent.

What steps could – or should – the industry be taking to increase awareness of trade secrets?

Companies should ensure awareness of what trade secrets are, their value to the business, protocols to ensure these are protected internally and when or how they might be disclosed to third parties. Before such disclosure, external engagement should reinforce how trade secrets are to be protected and what happens if protections fail.

What is the biggest threat currently facing your tech clients, and how are you helping them to overcome it?

Incoherent and protectionist innovation and industrial policies that undermine investment in innovation, particularly global innovation. In response to such proposals, there needs to be multi-faceted responses: education, option generation, responsiveness, openness to adapt and risk management and mitigation.

Founder
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Elisabeth Opie, featured in the IAM Strategy 300 Global Leaders and Patent 1000 since 2020, founded a boutique international technology law firm. With over 25 years’ experience, she advises on complex transactions across various sectors. Ms Opie’s practice areas include tech transfer, competition law and dispute resolution – particularly for standardised technology. She practises German, English and Australian law. Ms Opie is a mediator and has advised clients on mediation and arbitration under various rules.

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