PAUL MALLON
Principal, Mallon & Co

Address
Level 4, 1 William Street, Perth WA 6000 Australia
Contact Numbers
Mobile:+61 409 767 345
Office:+618 9228 0705
E-Mail: pmallon@mallonco.com

Languages
English (native), Mandarin (basic)
Admissions
Admitted in England and Wales, and in Western Australia.
Nationality
United Kingdom & Australian.

EMPLOYMENT
1989: Associate to Justice Kennedy, Supreme Court of Western Australia
1990-1991: Minter Ellison, Perth, Western Australia
1991-1992: Clifford Chance, London
1993-1997: Phillips Fox, Perth, Western Australia
1997-2005: Senior Associate Clayton Utz, Perth, Western Australia

PROFESSIONAL EXPERIENCE
- General
Paul practises as a "general practitioner" in intellectual property and information technology law. He handles both contentious and non-contentious matters with a slight "bias" towards non-contentious matters.

Paul's practice includes business disputes concerning technology and intellectual
property rights as well as a range of commercial transactions relevant to the acquisition and commercialization of intellectual property. Paul also advises on organizational structures for technology related businesses. He
handles intellectual property matters before all Courts, the Australian Trade Mark Office and the Australian Patent Office. Paul's practice has been ranked Premier in Legal Profiles in Intellectual Property, Information Technology and E-Commerce (where it was ranked first).

- E-Commerce
Paul has advised on the legal framework for B2B portals and eBusiness,privacy advice, internet security, website development, maintenance and hosting agreements, domain name disputes, and online alliance or "partnering" agreements.

- Trade Marks
Paul is familiar with all trade mark proceedings before the Trade Marks Registrar. Paul also advises on domain name disputes.

- Patent Litigation
Paul is currently acting on a number of significant patent opposition, rectification and infringement matters before the Australian Patent Office and the Federal Court of Australia. Paul regularly advises Patent Attorneys with regard to potential litigation.

RECENT EXPERIENCE
- Technology Transfer / Patent Acquisitions
Paul acted for a listed Australian corporation on the acquisition of drilling technology developed in the United States. Paul acted on the acquisition of its world wide patent portfolio and in licensing the technology throughout the world Paul also drafted a number of joint venture, confidentiality and consultancy agreements relevant to the transaction.

- Copyright
Paul regularly prepares copyright agreements including:
* Software development and licensing agreements
* Database licensing agreements
* Sound recording production and distribution agreements
Paul has also advised on, negotiated and prepared numerous copyright production, publishing, and related contracts for worldwide copyrights.

- Designs
Paul has acted for foreign and local companies in relation to infringement proceedings in the Supreme Court of Western Australia.

- Trade Marks
Paul has acted for foreign corporations in Federal and Supreme Court proceedings for breach of confidence, passing off, misleading and deceptive conduct and breach of copyright, involving the company's brands in Australia and internationally. Recent matters involved complex issues of domain name registration, and trade mark infringement over the Internet

Paul has acted for a number of major Western Australian corporations in Supreme Court proceedings for passing off and trade mark infringement.

- Merchandising Rights & Sponsorship Rights
Paul has acted for Western Australia's two Australian Football League Clubs on merchandising and sponsorship rights.

- Trade Secrets
Paul has advised on a number of complicated transactions involving the protection of confidential information, cross border protection of trade secrets, protection of trade secrets in the defence industry. He has prepared appropriate non-disclosure agreements for pre-contractual disclosure, technology evaluation, and for consultants.

- Computing & E-Commerce
Paul has advised numerous e-commerce businesses on the protection of their intellectual property rights from inception to their initial public offering. Particular aspects of advice include e-branding, international trade mark protection, the patenting of e-commerce business systems, and cross-border intellectual property issues relevant to the use of the Internet.

- Hybrid Transactions
Paul has advised a major publicly listed diversified mining company on conflict issues associated with the use of nickel processing technology. The advice involved complex issues concerning patent, design and copyright protection.

- Technology Commercialisation
Paul has advised a major electrical power utility on capturing and exploiting its meter reading technology including appropriate R&D joint venturing agreements and appropriate ownership and royalty regimes.

- Technology Venture Capital Funding
Paul has advised small to medium sized corporations on intellectual property aspects relevant to listing on the Australian Stock Exchange (ASX). Paul has advised on all aspects of the intellectual property due diligence process including due diligence for e-commerce and internet based businesses. He has advised on "e-branding issues" and the development and protection of a corporate identity on the Internet.

- Universities
Paul acts for a range of universities on the exploitation and commercialization of public research and ownership issues between academics, members of staff, PhD students and students generally.

- Information Technology
Paul has acted for major government authorities in relation to the acquisition and maintenance of information technology systems. In some cases, the transactions represented the most significant IT acquisition for the authority.

Paul acts for Western Australian based software development companies in relation to their software development contracts, and hardware acquisition contracts.Paul also acts for software distributors in Australia in relation to their distribution and dealer networks.

Paul acts for a major supplier of software for the healthcare sector in relation to the licensing, and maintenance agreements for its primary health management application.

INTERNATIONAL EXPERIENCE
- UK & Europe
Clifford Chance 1991 - 1992
- USA
Patent and technology acquisitions; technology licensing; software agreements.
- South Africa
Patent and technology acquisitions; technology licensing; breach of confidence litigation.

PROFESSIONAL QUALIFICATIONS
- Barrister and Solicitor of the Supreme Court of Western Australia.
- Solicitor, England & Wales.

PROFESSIONAL ASSOCIATIONS
- Member of the Licensing Executives Society (Australia & New Zealand).
- Member of the Committee of the Intellectual Property Society of Australia and New Zealand Incorporated.
- Member of the Western Australian Chinese Chamber of Commerce

INTERESTS
- Hockey
Ex-first grade player (Australian combined Universities touring side, 1987); assistant first grade coach, Suburban Hockey Club, 2002