Sylvie Tso

Principal
Spruson & Ferguson Lawyers: Commercialisation, Trade Marks
Get in touch

Overview

Sylvie is a lawyer as well as a registered Australian Patent and Trade Mark Attorney and has over 20 years of experience in the IP field.

Sylvie advises clients on a broad range of IP issues, including issues relating to IP ownership, licensing, protection of IP, non-disclosure, material transfer, collaborative R&D and participation in CRCs; and conducts due diligence on IP transactions. Sylvie regularly delivers IP services to many sectors of the technology based community, including inventors, start-up and established companies, universities, CRCs and research institutions.

She also provides general commercial advice to local and foreign businesses on a range of matters including the Australian Consumer Law, trade practices, e-commerce, privacy, data protection, the Personal Property Securities Act (IP only) and establishment of business presence in Australia.

Sylvie was a principal author of the first edition of the IP Manual for Australian Government Agencies and has assisted major Government departments with their IP audits and advised on the establishment of appropriate IP management frameworks suited to their needs.

Sylvie has also authored three other IP Management Manuals tailored to the biotech, electronics and engineering industries, published in conjunction with the relevant industry bodies; and has delivered numerous presentations and workshops to the public and private sectors on this topic.

Sylvie’s expertise extends to US patent law. Sylvie worked for several US biotechnology companies, overseeing their IP portfolio. Sylvie was also a consultant for the technology transfer office of Massachusetts General Hospital, US. Immediately prior to joining Spruson Ferguson Lawyers, Sylvie was the general counsel of a listed Australian biotechnology company.

Sylvie is the key service provider or manager of the following projects:

  • Advising on the strategic protection and management of a multi-national large scale research project with respect to a genetically modified crop, with over 12 universities and institutions around the world, including reviewing and considering subject matter generated by the project and advising on available IP protection, preparing implementation strategy and recommendations.
  • Advising and preparing key intra-company documents for related entities around the world with respect to intellectual property and other resources for a multinational company, some with complex royalty provisions.
  • Preparing submission for expert determination for a major corporation in relation to commercialisation of a genetic modified crop, the submission encompassed issues such as freedom-to-operate, royalty rate determination and other licensing issues.
  • Performing large scale IP audit and review for several Government departments and agencies, including interviews with key content developers, management and the design and conduct of relevant surveys and preparing reports with key outcomes and recommendations.
  • Advising on and preparing documentation, including data protection agreements, data breach policy and response plan in relation to privacy and data protection for an Australian listed company.

Sylvie reads and writes Chinese, speaks Cantonese fluently and is conversant in Mandarin.

Sylvie is a member of the Licensing Executives Society and the Intellectual Property Society of Australia and New Zealand.

We mainly deal with Sylvie Tso who looks after our trade mark work, but also manages her team when we also need assistance with patent applications or infringement disputes. We have found Sylvie to always be very professional and attentive to our needs.

Legal 500 2021 Rankings

Easy to work with… keeps things simple so clients can spend their time effectively on other things.

World Trademark Review 1000, 2021

Utilises her in-house experience at US biotech companies to commercialise rights holders’ intellectual property.

World Trademark Review 1000, 2020

Sylvie Tso's Insights
Ten top tips for buying a business with intellectual property
Intellectual property (IP) often confers a competitive advantage to a business, such as by increasing the business’ operational efficiency or elevating the quality of its product and services offerings....
Intellectual property (IP) often confers a competitive advantage to a business, such as by increasing the business’ operational efficiency...
Read More
Spruson & Ferguson recognised in WTR 1000 2024
Spruson & Ferguson are pleased to once again be included in World Trademark Review's WTR 1000 2024, with four jurisdiction listings and nine recommended individuals featured. Spruson & Ferguson has...
Spruson & Ferguson are pleased to once again be included in World Trademark Review's WTR 1000 2024, with four...
Read More
The 2023 IP year in review, and predictions for 2024
In Australia, February signals a return from the beach, children back to school after a long summer break and of course the usual traffic woes! At Spruson & Ferguson Lawyers,...
In Australia, February signals a return from the beach, children back to school after a long summer break and...
Read More
Trade mark licences: lessons from the courts
In a previous article “Perpetual contracts: can they be terminated?”, the termination of contracts with no agreed end date or provisions governing termination was discussed. Term and termination are key...
In a previous article “Perpetual contracts: can they be terminated?”, the termination of contracts with no agreed end date...
Read More

Contact Sylvie Tso

Would you like to join the Spruson & Ferguson team?


Work For Us

Contact our Expert Team

Contact Us