Patent & Trade Mark
Attorneys
Charles Berman
Charles Berman
Partner


Level 23, 44 Market St
Sydney NSW 2000 AUSTRALIA
Tel +61 2 8231 1045
Fax +61 2 8231 1099
Recent Publications
16 Feb 2015
To get a better understanding of exactly what the risks, opportunities and best practices for technology and IP protection are, Austmine caught up with Charles Berman, patent attorney and a partner of intellectual property firm FB Rice. Charles has been in practice for over 25 years and has experience in a diverse range of technology fields including mining equipment and machinery, mechanical and electro-mechanical devices, construction systems and equipment, and business methods.

23 Jan 2015
In a 7-2 decision, the Supreme Court has held that an “appellate court [Court of Appeals for the Federal Circuit] must apply a 'clear error,' not de novo, standard of review” to the factual aspects of evidentiary underpinnings of a District Court's claim construction determination. The Court grounded its decision in Federal Rule of Civil Procedure 52(a)(6), which provides that in matters tried to District Court, the court's “[f]indings of fact . . . must not be set aside unless clearly erroneous.”

08 Jul 2014
The Advisory Council on Intellectual Property (ACIP) has published its final report on its review of the Innovation Patent System. The following article discusses the key points highlighted by ACIP in their review.

Inspired by the journey an invention takes from inspiration to commercially viable product, Charles combined his engineering training with his interest in law and became a registered Australian and New Zealand Patent Attorney. As a Partner of FB Rice, Charles is the head of our Mining & Construction team and a member of our Medical Technology, CleanTech, Oil & Gas, and Registered Designs teams.

Charles joined FB Rice in 1999, having practised as a patent lawyer in South Africa for a number of years. He registered as an Australian and New Zealand Patent Attorney in 2001 and became a Partner of the firm in 2002.

Charles has been in practice for over 30 years and has experience in a diverse range of technology fields including mining equipment, packaging, mechanical and electro-mechanical devices, printers, medical devices and business methods. Clients rely on him as a trusted advisor to protect their interests thanks to his ability to gain a rapid, but deep, understanding of their invention and to place it in a business context to achieve a meaningful commercial outcome.

Since joining FB Rice, Charles’s clients have included a large number of Australian medical device companies covering a wide range of medical technologies including numerous start-ups. Charles has assisted his clients from their position as start-ups through to listing on the ASX. He has been referred to in an Australian law publication for his work with start-ups particularly medical manufacturers.

Working extensively with companies in the mining industry, Charles is involved in protecting cutting-edge technologies in this industry. He has earned a reputation for gaining an understanding of how an invention fits into a company’s business strategy and his clients say they enjoy working with him because of the real interest he demonstrates in their business as a whole rather than just the task at hand.

Charles is recognised for his ability to effectively manage highly complex, multi-jurisdictional patent portfolios to and achieve commercially solid outcomes for his clients.

Over the years, Charles has a gained significant experience in the preparation, filing and prosecution of US applications. He has been involved in interviewing US patent examiners on behalf of clients, preparing appeal briefs and related matters to overturn refusals by examiners to grant patents in this important jurisdiction. He has a high success rate in obtaining patent protection for clients not only in the USA but also in other jurisdictions such as Europe and various Asian countries.

Charles enjoys giving back to the profession and is actively involved in many intellectual property industry associations. He is currently the President of the Contact Commission of the International Federation of Intellectual Property Attorneys (FICPI), as well as a Committee Member of the Australian chapter of FICPI. Charles is also an elected member of the IP Practice in Asia-Pacific Committee of the American Intellectual Property Law Association (AIPLA) and is a member of the Licensing Executives Society (LES).

Charles is sought by media for expert commentary including Austmine, Australia’s peak industry body for the mining equipment, technology and services (METS) sector.

Charles is located in our Sydney office, but also spends a significant amount of time working from our Perth office.

Education
  • Bachelor of Science (Electrical Engineering) from the University of Witwatersrand
  • South African law degree from the University of South Africa

Key Areas of Expertise

  • All aspects of mining equipment, machinery and processes
  • Detection of hydrocarbons
  • Drilling equipment
  • Packaging and stationery products including moulded articles and packaging machinery
  • Mechanical and electro-mechanical products
  • Medical devices including cardiac catheters, spinal implants and endovascular devices
  • Construction systems and equipment
  • Supply chain logistics
  • Road tankers and trailers

Industry Focus

Professional Affiliations

  • Fellow of the Institute of Patent and Trade Mark Attorneys
  • President of the Contact Commission of FICPI
  • Committee Member of the Australian chapter of FICPI
  • A foreign affiliate member of the American Intellectual Property Law Association (AIPLA)
  • Elected member of the IP Practice in Asia-Pacific Committee of AIPLA
  • Member of the Licensing Executive Society of Australia and New Zealand