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Partner
Charles Berman is a partner in our Sydney engineering team and the head of our Mining & Construction team.
Inspired by the journey an invention takes from an idea to a commercially viable product, Charles combined his engineering training with his interest in law and became a registered Australian and New Zealand Patent Attorney. Charles has been recognised as an IP Star for patent prosecution in Managing Intellectual Property in 2018, 2019 and 2020.
Industry:
Technical Group:
EngineeringCharles 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 35 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 our firm, 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 clients from their position as start-ups through to listing on the ASX.
Through working extensively with mining companies, Charles has been 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 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 US appeal briefs and related matters to overturn refusals by examiners to grant patents. He has a high success rate in obtaining patent protection for clients not only in the US 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 a member of honour of the International Federation of Intellectual Property Attorneys (FICPI) and a Past-President of the Contact Commission 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.
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