Consultant
Noel Kim
Noel has more than 18 years’ of extensive experience in IP practice, having successfully assisted a broad range of clients ranging from start-up businesses to large multinational corporations. Noel is highly experienced in assisting clients with all aspects of IP matters encompassing trade marks, patents and designs search and advice, filing, prosecution, due diligence, licensing, acquisitions and enforcement of IP rights, including oppositions and cancellation actions. He also works in close collaboration with an established network of foreign attorneys throughout the world. Noel represents a wide variety of clients across numbers of sectors including entertainment, pharmaceuticals, medical products, electronics, energy, tobacco, fashion, retail, food products and services, education and transportation. His engineering and legal background, extensive international experience and multilingual capabilities facilitate communications and thorough understanding of the requirements of IP owners. Noel is the legal advisor to the Korea Trade-Investment Promotion Agency in Sydney and Korean Agro-Fisheries and Food Trade Corporation. He was also appointed as an Australian advisor by CNIPA to the Chinese National Advisory Centre for Overseas Intellectual Property Dispute Settlement in 2019.
Experience
Advised and assisted Australian and foreign companies and individuals doing business in Australia and abroad seeking protection of IP rights as well as selling, acquiring or licensing thereof.
Represented clients before IP Australia, IPONZ and courts in various IP related proceedings including infringement, opposition, cancellation and revocation.
Managed client’s Australian and global IP portfolio.
Education
Master of Intellectual Property Law, University of Technology Sydney
Graduate Diploma of Legal Practice, College of Law
Diploma in Law, The University of Sydney LEC & LPAB
Master of Laws, Yonsei University, Korea
Bachelor of Mechanical Engineering, University of Seoul, Korea
Qualifications
Lawyer, Supreme Court of NSW
Lawyer, High Court of Australia
Australian Registered Trade Marks Attorney
Membership
Intellectual Property Society of Australia and New Zealand
The Law Society of NSW
Asian Australian Lawyers Association
Korean Australian Lawyers Association
The Chinese National Advisory Centre for Overseas Intellectual Property Dispute Settlement
Languages
English
/Korean
Related Insights
Firm News
11 November 2022
H & H Lawyers hosts meeting to discuss Australia-Korea IP cooperation
Director Eul-Soo Seo of the Convergence Technology Examination Bureau and Youn-Jeong Kyung and Mi-Jeong Park, senior officers of the Artificial Intelligence Big Data Examination Division of the Korean Intellectual Property Office (KIPO), paid a visit to H & H Lawyers Sydney office on 2 November 2022. H & H Lawyers partner, Noel Kim, led a conference at the meeting on the topic of Australian IP patent trends. This created opportunities for Noel and Eul-Soo Seo to share their insight perspectives regarding cooperation between Korean and Australian patent authorities.
Designs
30 March 2022
Recent Reforms to the Australian Designs Act
According to the recent reforms to the Australia Designs Act 2003 (Cth) (the Act), amended by enactment of the Designs Amendment (Advisory Council on Intellectual Property Response) Act 2021, Australian design laws became more flexible and its registration system more streamlined. The key amendments that came into effect as of 10 March 2022 are below. Introduction of a Grace Period The introduction of a grace period is the most noticeable change to the Act.
IP Strategy & Management
04 March 2022
Australian patent term extension in favour of patentees
Australian patent term extension in favour of patentees - Ono Pharmaceutical Co, Ltd v Commissioner of Patents [2021] FCA 643 Summary: · Ono Pharmaceutical Co, Ltd’s (Ono) Australian patent No. 2011203119 concerns two cancer drugs: third party’s KEYTRUDA and the patentee’s own OPDIVO. · Both KEYTRUDA and OPDIVO received regulatory approval in Australia, but the third party’s KEYTRUDA was approved earlier than the patentee’s own OPDIVO.
IP Strategy & Management
25 November 2021
Introduction of New Australian Domain Name
The auDA (.au Domain Administration Ltd) manages and oversees the development and administration of Australian domains such as .com.au, .net.au, and .org.au. Australian domain names must meet the auDA’s minimum registration criteria, and only an Australian company, a foreign company registered in Australia, or an applicant or a registrant of the Australian trade mark are eligible for registration. The domain name should also be in the applicant’s legal name, business name, Australian trade name, or brand name closely associated with its trading name.
Patents,IP Strategy & Management
17 September 2021
Is it possible for an AI (Artificial Intelligence) to be an inventor?
Is it possible for an AI (Artificial Intelligence) to be an inventor? - Thaler v Commissioner of Patents [2021] FCA 879 Summary: ● Dr Stephen Thaler (Thaler) filed an Australian patent application for an invention that was created autonomously by an AI system called ‘DABUS’. ● IP Australia rejected the patent application, determining that only a human can be named as an inventor for an Australian patent.
Trade Marks
29 October 2020
Australia Trade marks Law
Australia’s intellectual property office, IP Australia (www.ipaustralia.gov.au), and New Zealand’s intellectual property office, IPONZ (www.iponz.govt.nsw), are their respective countries’ intellectual property rights administrative agencies. IP Australia and IPONZ administer applications for trade marks and handle oppositions to intellectual property rights. They also process other administrative work such as renewal, transfer and cancellation of trade marks.