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Jacqueline Plunkett

Expertise

Jacqueline is a corporate and intellectual property lawyer with over ten years’ experience in commercial firms and five years in Australian Intellectual Property Office as a Senior Examiner, Assistant Director (Policy) and Australian trade negotiator (IP Chapters) in FTAs. 

Jacqueline has experience working in commercial and intellectual property firms, building a strong foundation in corporate advisory and tax, litigation and royal commissions, health and aged care, property and employment law before choosing to specialize in intellectual property. 

Jacqueline has worked with clients ranging from small domestic innovators to large multinational corporations and celebrities, government departments, universities and NGO’s. She has presented on IP at Blockchain events, an international trade conference in Mongolia and accompanied Victorian trade delegations to export events to assist them negotiate IP when expanding globally.  

Jacqueline regularly contributes to shaping intellectual property policy and legislative reform in Australia and is the current Chair of the Victorian Law Institute IP & IT Committee.

Experience

Jacqueline’s experience includes: 

  • intellectual property: IP Development and Commercialisation advice and contracts; confidentiality and non-disclosure agreements, client management policies and processes for confidential information, copyright licensing and permission contracts/deeds, joint venture agreements, licensing of trade marks, designs, patents and plant breeder’s rights, manufacturing, supply and distribution agreements, publishing agreements, research and development agreements and technology evaluation agreements. IP due diligence (searches, reports and gap analysis), identifying IP issues in mergers and acquisitions, sale and assignment of IP and transfer and novation of IP licenses
    • trade mark/designs attorney work: reviewing and reporting on searches, filing and prosecuting applications, revocations, non-use, oppositions and contentious proceedings and related consumer and common law advice to clients. Advised on infringement disputes, rectification (cancellation/amendment) proceedings, plant, wine, certification marks and comparative advertising
    • assisted negotiate, utilised a customs and police seizure strategy, settled and drafted the global coexistence agreement for two celebrities, managed the consolidation of international trade mark portfolio’s, advised on tax treatment and valuation of portfolio with accounting firm
    • devised an international strategic filing strategy for health products, infringement advice, minimum use requirements in several overseas jurisdictions and advised on parallel importing and online IP policies for eCommerce platforms
    • provided advice on geographical indications/certification marks, copyright, designs, confidential information and initial patent costing/criteria for start-ups following lectures and festivals. Drafted confidentiality deeds, licenses, assignment documents (PPSR searches) for domestic clients and provided information packs and obtained relevant deeds for clients seeking to export
    • assisted clients with novel products navigate related legal product launch issues such a liquor licensing (kombucha as an essence), Country-of-origin labelling, legalisation of hemp in food products, wine regulation following trade agreement changes, plain packaging/vapour laws and medicinal marijuana legalisation. 
  • technology: Specific work in IT, eCommerce and Software contracts such as corporate group IP licensing and assignments, advice on employees and IP, IP audits, advice on joint and co-ownership of IP, outsourcing and IP ownership issues, ownership structures, providing and reviewing privacy policies and trade secret policies, reviewing software licensing and support agreements, reviewing and amending website terms of use and terms of online trading
  • health and privacy: Advised on confidential information and privacy matters including FOI review/redaction of health board files prior to release. Reviewed brief and interviewed government narcotics specialist regarding a veterinary surgeon’s trafficking. Prepared advice, attended conference and disciplinary hearing. Managed pro bono privacy files, including breaches regarding disclosures of criminal records. Worked on coronial inquest matters, identified missing evidence, obtained transcripts, drafted chronologies, interviewed police officers and advised regarding potential criminal liability
  • commercial, corporate & litigation:
    • managed peers in discovery, drafted pleadings and contributed research in the Black Saturday Royal Commission and a contract breach class action regarding ten distributors. Managed multiple work cover/motor insurance matters
    • drafted discretionary trusts, directors meeting minutes, explanatory memoranda, client alert on ATO cases relating to the taxation of charitable trusts. Prepared due diligence on the sale of a Western Australian mineral bulk haulage company and research director status and responsibilities when companies transform and transfer of IP
    • performed complicated conveyancing and strata title resolution, executed and registered securities for property transfers, prepared research on several mortgage discharges and retirement villages pro rata fee accrual schemes. 
  • government intellectual property and policy work (ASIO Negative Vet 1): Assistant Director in the Trade and Policy Projects team supervising two APS 6 (Senior Policy) staff and graduates. Drafted IP Chapters and assisted negotiate Australia’s interests in RCEP and the Trans-Pacific Partnership Agreement, the WTO Trade Policy Review Mechanism and implementation of bilateral FTA IP provisions including geographical indications
  • Senior Specialist Trade Marks and Designs Examiner delivering +47 marks above targets and examined the cross-cutting marks including; plant breeders rights, GI’s contrary to law marks
  • IP expert for NGO’s, LESANZ, Trade Victoria, AACC and IP lecturer for VECCI, start-ups at Deakin (SPARK), Study Melbourne (G*STEP), ACASE and La Trobe Law students.


Upcoming Seminars