image of Sam FiddianSam Fiddian

Clayton Utz Special Counsel , Perth T +61 8 9426 8093 https://www.claytonutz.com

A specialist in a broad spectrum of intellectual property (IP), information technology (IT) and privacy matters, Sam provides strategic advice to clients operating in range of industries including public sector, health, mining, energy and resources, and fintech and regtech.

Sam offers clients deep expertise across both litigious and non-litigious IP matters including: infringement of IP rights or the misappropriation of IP rights or confidential information; the structuring of agreements dealing with IP rights including complex licensing and assignment arrangements relating to IP assets; and the negotiation and drafting of high value IT agreements.

Sam also advises on privacy related matters, from the preparation of general policies and practices with respect to privacy and data breach notification laws to specific advice on matters of high compliance risk.

As an experienced litigator, Sam regularly conducts and defends commercial proceedings, including representing organisations involved in contractual disputes regarding contractual interpretation, the enforcement of contractual terms, breaches and equitable duties, and termination of contracts.

In 2020 and 2021, Sam was recognised by Doyle's Guide as an Intellectual Property & TMT Rising Star in Australia, the only practitioner from Perth to receive that recognition. In 2022, Sam was elevated by Doyle's Guide to the list of Leading Intellectual Property & TMT Lawyers in Western Australia, a list typically occupied by partners. He also sits on the IP/IT Committee of the Law Society of Western Australia and he is the WA branch committee member for the Intellectual Property Society of Australia & New Zealand.

In addition to his legal qualifications, Sam has a Bachelor of Science, majoring in Physiology and Pharmacology, from the University of Western Australia.

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Expertise

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Intellectual Property

IP commercialisation and licensing: Advised numerous organisations (including large mining and resources companies and State bodies) on the licensing (both as licensor and licensee) of proprietary technology in Australia and around the world.

Joint Venture IP arrangements: Advised on the IP aspects of numerous joint venture arrangements, including the provision of advice with respect to joint ownership, licensing and assignment of IP.

Brand protection: Advised numerous organisations on matters of brand protection and trade mark registration, including responding to objections from IP Australia, and opposition proceedings brought by third parties.

M&A transaction: Provided advice to organisations involved in M&A transactions (both sellers and buyers) as to the IP, IT and privacy aspects of the transaction, including undertaking due diligence with respect to IP and IT assets, providing advice as to associated warranty/indemnity matters, and providing post-transaction support.

IP disputes: Represented both claimants and defendants in relation to their prosecution or defence of IP infringement proceedings in the Federal Court of Australia, including with respect to patents, copyright and trade marks.

Disputes with employees/contractors: Acted for organisations in disputes involving misuse of IP rights and confidential information by former employees and contractors.

Website development: Advised upon and drafted website development agreements.

Bespoke technology contracts: Prepared numerous high value technology contracts including in the areas of software development, licensing, hosting, support, maintenance and SaaS.

Confidentiality: Advised and represented various parties (claimants and defendants) in relation to the misuse of confidential information including cases involving former directors and employees and competing businesses.

Pro forma IT contracts: Prepared pro forma hardware and software licensing and procurement agreements (both for suppliers and customers), together with assisting in the negotiation of amendments or departures from the standard form to meet the needs of particular customers or suppliers.

Emerging technologies: Provided advice to businesses developing software platforms which utilise emerging technologies, such as block chain.

Software licensing: Drafted software licences for organisations (licensees and licensors), both comprehensive and 'click wrap'.

IT disputes: Advised large organisations on disputes with data centre service providers and software licensors.

See Intellectual Property

Privacy

Privacy: Advised numerous organisations on the impact of regulatory changes in Australian privacy law, including in respect of the Notifiable Data Breach Scheme, the introduction of the Australian Government Agencies Privacy Code, and the likely impact of privacy law reform. 

Privacy audits: Conducted an audit of large organisations for compliance with the Privacy Act 1988 (Cth), proposing improvement opportunities across the business and providing policies to assist in compliance.

Privacy policies: Prepared Australian privacy policies (or Australian sections of international policies) for use by clients and conducted annual/periodic reviews of such policies to ensure continued compliance, including in respect of the recent General Data Protection Regulation in the EU.

Mandatory data breach reporting: Prepared data breach response plans for organisations so as to ensure their response to incidents are dealt with in accordance with the requirements of the Notifiable Data Breach Scheme.

Data breach incidents: Provided urgent advice and support to organisations impacted by data breach and cyber-attacks including in respect of how to respond to the breach itself, together with more comprehensive advice on weak privacy practices exposed by the breach.

Privacy and emerging technology: Provided advice to vehicle manufacturers and fleet managers as to privacy and surveillance law implications of the use of emerging technology in vehicles including dam cameras, tracking devices and automated accident/incident reporting.

See Privacy

Cyber Security

Cyber security: Working as part of Clayton Utz’s growing cyber practice, which combines the firm’s broader capabilities including legal and regulatory compliance, forensic investigation, forensic accounting, data analytics and forensic technology to provide clients with a “one-stop-shop” for their cyber security needs.

See Cyber Security

Litigation and Dispute Resolution

Contractual disputes: Represented numerous organisations (both claimants and defendants) in contractual disputes in a wide range of areas including joint ventures, shareholder disputes, service agreements, and IT contracts.

Equity: Represented companies and individuals (both claimants and defendants) in respect of claims of breaches of fiduciary duties, obligations of confidence, and related claims.

Financial services regulation: Advised financial services licensees on their obligations under the Corporations Act and relevant market operating rules, and in relation to investigations being conducted by regulators (such as ASIC).

See Litigation and Dispute Resolution

Knowledge

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