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Asia Guide

Intellectual Property — Australia


Allens - Intellectual Property Department

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Band 1

第一等

Chambers Commentary (based on the Chambers research)

What the team is known for Acclaimed practice with expertise across the full range of IP issues, including trade mark and patent infringements as well as transactional matters. Strong track record working with leading multinational corporations, particularly in the pharmaceutical and media sectors. Also offers significant ability in the areas of copyright, brand protection and anti-counterfeiting.

Strengths Clients describe the team as "very responsive, helpful, knowledgeable and able to explain to non-lawyers what we need to know and think about when dealing with different issues."

Another client highlights the firm's international capability: "They have a good relationship with Linklaters which is good for matters in the UK."

Work highlights Advised the Australian Olympic Committee in relation to intellectual property matters and acted in Federal Court proceedings against former sponsor Telstra regarding Telstra's advertising campaign in the lead-up to the Rio 2016 Olympic Games.

Acted for Universal Music, Alberts Music, Song Music, Warner Music and APRA AMCOS in proceedings in the Federal Court seeking orders to require major ISPs in Australia to block access to the infamous file-sharing website KickassTorrents.

Notable practitioners

Tim Golder is an established practitioner in the IP field, advising on copyright, designs, confidential information and trade mark matters. One client notes: "We have the highest regard for Tim's knowledge and expertise, he is the doyen of Australian trade mark law." He acted for Reece, an ASX-listed plumbing and bathroom supplies business, in trade mark litigation against Sports Direct regarding the use of the name Reece Australia in relation to apparel and sporting equipment.

Richard Hamer is identified as a "standout lawyer" by interviewees. His practice is focused on high-profile patent cases and breach of confidence litigation, advising on the commercialisation of research and development and the exploitation of technology. He acted for Pfizer in patent proceedings in the Federal Court to prevent the sale of a generic analgesic by Apotex. The validity of Pfizer's patent was successfully upheld.

Philip Kerr is a very highly respected and experienced practitioner who tackles patent litigation and is described as "a real leader in the industry." He acted for Seiko Epson in patent infringement proceedings against Calidad Australia, relating to Calidad's distribution of refilled or remanufactured and generic ink cartridges compatible with Seiko Epson printers.

Miriam Stiel leads the Allens IP practice group and has a diverse practice. One client reports: "She's very highly knowledgable in copyright and trade mark law and incredibly thorough." She acted for Redbubble, the operator of a major online marketplace for independent artists, defending copyright infringement proceedings commenced by Hells Angels and Pokémon.

About the Team (content provided by Allens)

Allens' Intellectual Property practice delivers an integrated and highly specialised service to manage, protect, commercialise, enforce and defend our clients’ IP. Our market leading team consists of the best commercial and litigation lawyers and patent and trade marks attorneys in Australia.

Our clients are our focus and we are committed to providing the highest quality of service, transparency and value that will support our clients' success, while helping them save time and money.

Whether it is guiding multinational and local corporations in securing the continued growth and integrity of their IP portfolio, or providing patent advice to emerging industries and startups, we provide sound, sustainable, commercial solutions. Our people combine technical excellence with commercial insight – we invest the time needed to understand our clients' business and what they are trying to achieve.

We have extensive experience handling the IP portfolios of some of Australia’s and the world’s most famous brands and innovative technologies, and a track record second to none in litigation. We are at the forefront of changes to Australia's intellectual property laws and help shape the IP policy agenda through our involvement in professional and industry bodies.

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Ashurst - Intellectual Property Department

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Band 1

第一等

Chambers Commentary (based on the Chambers research)

What the team is known for Highly accomplished practice that impresses on both contentious and non-contentious matters. Thoroughly experienced in handling high-profile patent litigation cases, anti-counterfeiting matters and brand protection for a raft of well-known clients. Also offers specialist expertise in food labelling, as well as the regulation of therapeutic goods and cosmetics.

Strengths The team is noted for its highly practical service, one client commenting: "They have been very responsive and pragmatic; they've got a good understanding of the industry we work in and they bring that to bear in the work they do."

Another client adds: "The advice I get is commercially savvy and the responsiveness is great. They make an effort to understand the business, which is really helpful."

Work highlights Acted for Goodyear in a trade mark opposition against Dunlop regarding the use of the trade mark 'Dunlop' in relation to aircraft tyres. Goodyear has been the registered proprietor of the trade mark in Australia since the early 1900s.

Represents Apotex in litigation in relation to various of its pharmaceuticals, including pregabalin. The team defended against applications for interlocutory injunctions from Warner-Lambert and Pfizer and was successful in arguing that an application to list products on the PBS is not an act of infringement. The matter subsequently went to appeal.

Notable practitioners

Mary Padbury is an outstanding figure in the market who has a wealth of experience in both contentious and non-contentious IP work. She is known for her patent litigation prowess and counts major multinationals and household-name clients among her clients. She is the global vice-chair of Ashurst as well as a member of the IP practice in Melbourne.

Peter Chalk is a prominent practitioner in the patent, trade mark and copyright spheres. He assisted Crown Melbourne and Crown Resorts on a number of matters, including filing and prosecuting trade mark applications, management of trade marks and domain name and copyright disputes. He is described by interviewees as "outstanding across all areas of IP" and "a leading light in the trade mark space."

Lisa Ritson is described by sources as a lawyer with "incredible tenacity and great intelligence." She operates across the spectrum of IP work with a focus on copyright and trade mark matters. She acted for Moroccanoil Israel in a hearing before the Federal Court against Aldi claiming trade mark infringement, breaches of consumer law and passing off.

Grant Fisher specialises in patent litigation, and sources describe him as "a really strong practitioner." His background in chemistry and his dual qualification as a lawyer and patent attorney make him very well placed to assist clients in the pharmaceutical industry.

Anita Cade has a broad IP practice with a focus on trade mark and copyright matters, both contentious and non-contentious, primarily in the media sector. "Anita is on top of her deals and has all the relevant details at her fingertips," one client comments. She acted for International Gaming Technology in patent infringement proceedings brought by Aristocrat Technologies Australia with regard to patents for electronic gaming machines.

Kellech Smith advises clients on an array of matters, including copyright, trade marks and patents. She led the team on the Goodyear trade mark opposition, and also acted for Henly Arch on copyright proceedings against Lucky Homes and the Mistry family in relation to the appropriation of home construction plans drawn up by Henly. One source describes her as "a solid lawyer" and another notes that "she has a strong grasp of litigation requirements and strategies."

About the Team (content provided by Ashurst)


Covering all aspects of IP across every major industry

We advise on, and develop legal strategies to maximise and protect, the commercial potential of brands, ideas and existing and new technologies. We give pragmatic and commercial advice to our clients and work closely with them to achieve their commercial objectives as we understand how important IP is to their business.

We are renowned for our broad IP services in both contentious and non-contentious matters. This includes dealing with IP issues in corporate and finance transactions, advising on patents, trade mark, copyright and designs, regulatory and marketing and advertising issues and acting for clients in significant (and often multinational) intellectual property, consumer protection and passing off disputes.

Experts in intellectual property

We have an excellent reputation for providing cutting-edge advice on strategic IP matters, acting for some of the world's leading companies. We work seamlessly and collaboratively across geographic boundaries to provide the best possible service to our clients.

Commercial and innovative solutions

We take a strategic approach to all IP matters. Not only do we advise on the legal aspects of IP issues facing our clients but we provide commercial, practical and innovative solutions to the challenges that these issues create. Our reputation as a leading law firm rests on the quality of our commercial advice and our service. We focus on the issues that matter to clients.


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Herbert Smith Freehills - Intellectual Property Department

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Band 1

第一等

Chambers Commentary (based on the Chambers research)

What the team is known for Pre-eminent group with an outstanding track record in patent litigation. Its expertise crosses the spectrum of IP services, with groups of commercial IP practitioners and litigators as well as a dedicated trade marks management and prosecution team. Regularly advises leading multinational clients on all aspects of IP protection, including the co-ordination of multi-jurisdictional cases.

Strengths Clients praise the department for its depth of capability, one saying: "They were very forthcoming and you get all the advantages of a large firm; you get quality partners on your side and teams of juniors."

Another source notes: "Without a doubt in my mind, particularly in contentious IP, they're always going to do a good job, they're excellent."

Work highlights Represented Becton Dickinson in relation to disputes with Braun concerning three Australian patents for IV catheters.

Acted for Ariosa Diagnostics in defending proceedings commenced by Sequenom alleging patent infringement in relation to non-invasive pre-natal testing.

Notable practitioners

Sue Gilchrist is a highly renowned IP litigator, known for her substantial experience in patent, trade mark and copyright matters. A client emphasises her high level of service, noting: "We're very happy with her client service; she does an excellent job of keeping us informed on the next steps in the litigation and the budget." She represented ACPA and Anchorage Capital Group in proceedings brought against them by Anchorage Capital Partners relating to the alleged trade mark infringement of the word 'Anchorage', and misleading and deceptive conduct and passing off.

Shaun McVicar is a well-established figure in the market, focusing on contentious IP matters. Sources describe him as "a very good lawyer who does a lot of life sciences work." He acted for Gilead in relation to patent litigation over Gilead's hepatitis C drug sofosbuvir, involving the revocation of an Australian patent held by Idenix following allegations that Gilead had infringed the patent.

Kristin Stammer focuses on transactional IP matters particularly in the technology and media sectors. She assisted BMG Music on the acquisition of J Albert & Son, whereby most of J Albert's publishing and recording catalogue was transferred to BMG but with the Albert family retaining its interests in certain catalogues. One of her clients notes: "She knows her stuff, she's an expert in Australian copyright law and music copyright law, and she's super dedicated."

Celia Davies specialises in trade mark law, being a trade mark attorney as well as an IP lawyer, and she leads the trade mark team. She advises clients on transactional and contentious trade mark matters and was part of the team that handled various matters for Reynolds Consumer Products including a non-use removal action against a registration for the mark Captain Reynolds, a matter that was appealed to the Federal Court.

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Baker McKenzie - Intellectual Property Department

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Band 2

第二等

Chambers Commentary (based on the Chambers research)

What the team is known for Enviable cross-border capability, frequently instructed by distinguished Australian brand owners and blue-chip multinationals. Well-regarded practice providing comprehensive coverage of all IP assets, with particular strength advising household-name corporates in respect of brand protection and anti-counterfeiting actions as well as copyright, patent and passing-off matters.

Strengths Clients are pleased with the quality of the department's work, noting: "They are high-quality lawyers providing a high-quality service."

Work highlights Acted for the Motion Picture Association of America and Village Roadshow in an action against various Australian ISPs to block access to a number of websites that infringe copyright.

Notable practitioners

Ross McLean is a senior counsel who takes on trade mark and copyright mandates. One of his clients reports: "My experience with him was fantastic; he really knew the business, he was practical and allowed us in many respects to make claims by getting around the issue in an effective way," adding: "He was always to the point and concise."

Robert Arnold is a well-established figure in the market, focusing on IP protection and enforcement strategies. A source comments of him: "He's thoughtful, responsive and always willing to engage in a full assessment of complex matters, giving very good legal and practical advice." His clients include some of the most famous brand owners in the world for whom he takes on anti-counterfeiting programmes and trade mark protection actions.

Richard Gough is the head of the department and specialises in IP litigation. He works on disputes relating to patents, trade marks and copyright infringement and has authored publications relating to trade secrets and copyright. Of late he has handled patent infringement, trade mark protection and copyright infringement mandates for well-known brand owners.

Elisabeth White's practice focuses on IP litigation with clients in the consumer goods and healthcare industries. She acted for Lion Dairy and Drinks in relation to allegations from A2 Milk that certain Lion product claims constituted deceptive conduct and passing off. One client comments: "She's excellent, commercial and responsive. She has a sound grasp of commercial imperatives and takes the time to understand how the work relates to the client's business."

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Clayton Utz - Intellectual Property Department

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Band 2

第二等

Chambers Commentary (based on the Chambers research)

What the team is known for Offers broad-based IP expertise including trade marks and copyright protection, with frequent involvement in cases involving an international element. Handles complex patent matters for a diverse clientele, most notably in the pharmaceutical, technology and telecoms sectors. Handles both contentious and non-contentious matters, though particularly strong on disputes.

Strengths The team wins praise from clients for its high level of service: "They're very good at responding almost immediately and nothing is ever a problem for them to deal with."

Another client adds: "They're very, very commercial and the people there are very relaxed and calming, which is certainly helpful."

Work highlights Acted for various companies in the SingTel Optus group in relation to proceedings commenced by movie and music industry companies and Foxtel seeking injunctions under the new copyright law requiring ISPs to block websites whose primary purpose is to infringe or facilitate the infringement of copyright.

Advised Maxam, an international manufacturer of explosives for use in mining and quarrying with regard to patent infringement proceedings against Sun Mining, a company formed by former Maxam employees.

Notable practitioners

Department head John Collins is acknowledged by sources as "a standout practitioner" who "does a lot of patent work, particularly in the pharmaceutical industry." He acted for Orion in relation to patent infringement litigation against Actavis, who sought to launch a generic version of Orion's drug Stalevo.

Mary Still is a consultant who has a vast amount of experience, especially in relation to contentious matters in the fields of patents, copyright, trade marks, designs and passing off. She advised Seven Network, which held the broadcast rights to a number of Olympic Games, in relation to a tax dispute that centred on the question of whether copyright subsisted in an International Television and Radio Signal, therefore making Seven liable to pay tax. It was found that copyright did not subsist in the ITRS.

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Corrs Chambers Westgarth - Intellectual Property Department

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Band 2

第二等

Chambers Commentary (based on the Chambers research)

What the team is known for Well-established practice adept at handling contentious and non-contentious matters for global and domestic clients, dealing with both domestic and cross-border cases. A strong focus on the protection of patents and trade marks, with extensive expertise in life sciences and pharmaceuticals as well as high technology, energy and natural resources and luxury goods sectors.

Strengths Clients highlight the team's level of dedication and service, one noting: "The firm has been responsive to our needs and quick to turn documents around when necessary."

Another client says: "They have excellent resources and make them available to clients to provide a very high level of service."

Work highlights Represented Precision Tracking, a custom GPS tracking company in Sydney, in disputes with Domino's Pizza and Navman relating to patent infringement and invalidity, copyright infringement and breach of confidential information.

Acts for a number of luxury goods brands including Cartier and Christian Dior Couture with which it has established relationships, on the protection of IP assets, including handling anti-counterfeiting programmes, and trade mark protection work.

Notable practitioners

Stephen Stern leads the IP department and has a very strong reputation in the market. He is entrusted with trade mark, copyright and patent matters and is described by sources as a "leader in the field" and "outstanding across all areas of IP." He was engaged by Woodside Energy to act in relation to two patent oppositions concerning subsea cooling devices.

Odette Gourley is acknowledged by peers and clients for her handling of trade mark, copyright and patent matters and is described by clients as "extremely impressive, responsive, personable and knowledgable." She acted for the Hospital for Special Surgery in New York in relation to a passing-off and trade mark infringement action against the Hospital for Specialist Surgery.

Kate Hay practises across all areas of contentious IP with a focus on patent litigation, particularly in the technology sector. A client notes: "Her ability to translate highly technical detail into plain language is commendable and I've found her guidance to be invaluable." She represented the New South Wales Police Force in the Federal Court on a patent dispute relating to mobile incident reporting technology.

Eugenia Kolivos is a trade mark and copyright specialist and is especially adept on the commercialisation of IP assets. She led the team advising Mirvac in relation to the protection and exploitation of its extensive IP portfolio. One of her clients comments: "Eugenia is able to identify and explain complex issues and her advice is well tailored so as to be provided in plain language."

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Gilbert + Tobin - Intellectual Property Department

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Band 2

第二等

Chambers Commentary (based on the Chambers research)

What the team is known for Notable for its breadth of skills, advising on transactional and contentious copyright, design, patent and trade mark issues. Serves an impressive range of both local and global corporates, and is especially known for its prominence in the technology and media sectors but also in areas as diverse as mining and healthcare. Offers comprehensive skills on IP transactions including issues of royalty and distribution fee disputes, and marketing laws.

Strengths Clients laud the strength of the team's contentious practice, one saying: "They're great, fiercely intelligent and aggressive, which is what you need."

Another client describes the team as "very professional, hard-working and with an excellent reputation."

Work highlights Acted for EnGeneIC in a critical patent dispute against Vaxiion Therapeutics relating to a significant piece of biotechnology.

Advised Energizer in relation to a contempt action against Procter & Gamble for breaches of an interlocutory injunction by broadcasting a television commercial 954 times.

Notable practitioners

Michael Williams heads the Gilbert + Tobin IP team and is widely seen as a leader in the copyright market, as well as a significant figure with regard to trade marks. A client comments: "He's commercially minded and produces work of a very high standard. You feel you're in good hands with him on your matter." He acted for Crescent Capital Partners in a dispute with Crescent Funds Management regarding the use of the name Crescent Wealth which was found to be misleading or deceptive conduct by Crescent Wealth.

Siabon Seet is an established practitioner in copyright, trade mark and related IP litigation and also handles matters concerning consumer protection, advertising, and media and entertainment law. She lately headed a team acting for Primary Health Care on a wide range of trade mark and brand protection matters and which helped to effect a satisfactory out-of-court resolution of a pending defamation and injurious falsehood case.

Kate Harrison's litigation practice spans general commercial and IP disputes, and she has considerable experience of handling cases in the New South Wales Supreme and Federal Courts. Her work has also included a Copyright Tribunal action on behalf of the PPCA.

John Lee is "known for patent litigation" by market commentators, one of whom is of the opinion "he's a good lawyer, and in a few years time he'll be industry-leading." He heads the patent litigation team and as a dual-qualified lawyer and patent attorney, he has a legal and scientific perspective. His varied work includes leading the team representing the BASF Group in relation to long-running litigation with SNF. The Australian leg of this complex, global dispute has involved several Federal Court cases and Patent Office oppositions.

Lisa Lennon's practice is centred on trade marks and brand protection, operating across a number of sectors including technology and telecommunications, music and entertainment and banking and finance. She is a registered trade mark attorney and one source notes: "We find her common-sense approach to be particularly commercial."

About the Team (content provided by Gilbert + Tobin)

Overview

A multi-award winning Australian intellectual property practice.

Winner: Intellectual Property Team of the Year at the Australian Law Awards 2017, 2015 

What we do

We are a full service IP practice with expertise across all major IP specialties including copyright, patents, brand protection and trade marks, false advertising, breach of confidence, database protection, commercial IP licensing, product liability, cyber security and anti-counterfeiting.

Our approach

We use a highly systematic approach to IP litigation and projects. We run IP litigation very efficiently using the most progressive strategies available in Australian courts, e.g shorter times to trial and on appeal, focused arguments, use of concurrent expert evidence (hot tubs), preliminary hearings (‘Markman’ hearings) and advanced analytical techniques for evidence analysis and document review.

We have a class leading success rate in trial and appellate litigation the Australian market across the IP disciplines. We also have a strong track record of solving and settling complex IP disputes without litigation or in parallel to litigation. No other practice has more experience in the Australian market using extraordinary litigation procedures (search orders, mareva orders and preliminary discovery).

Our commitment to client service is paramount and involves clearly articulated strategies, close management, transparent communication and cost predictability.




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King & Wood Mallesons - Intellectual Property Department

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Band 2

第二等

Chambers Commentary (based on the Chambers research)

What the team is known for Renowned litigation team with extensive experience in patent and trade mark disputes in both the domestic market and overseas through its global connections. Assists an enviable roster of well-known clients in a range of sectors, including pharmaceuticals and electronics. Assists with all aspects of the protection and enforcement of IP assets, and also handles the IP aspects of broader commercial transactions. Ideally placed for cross-border matters in Asia, particularly China.

Strengths Clients appreciate the depth offered by the department, one noting: "King & Wood Mallesons offers clients very effective lawyers, a network of knowledge and contacts, a strong positive culture and a results-oriented approach."

Another client describes the team as "a leading commercial firm in the Asia-Pacific region, highly professional and good to work with."

Work highlights Represented Procter & Gamble against Energizer defending contempt of court proceedings relating to the unintentional broadcasting 954 times of a television commercial that was subject to an injunction.

Acted for BlueScope on a patent infringement dispute with Dongkuk in relation to a corrosion-resistant alloy coating for steel sheet products.

Notable practitioners

Katrina Rathie is the highly regarded joint head of the group, with a well-established reputation for brand protection and enforcement together with advertising and consumer protection know-how. She has an enviable client roster and of late acted for Procter & Gamble on a dispute with Edgewell Personal Care relating to certain advertising claims made by Edgewell regarding its Schick Hydro brand.

Matthew Swinn has a very strong reputation in the market as a patent litigator, one interviewee describing him as "really high-quality, really thorough with great attention to detail." He advised Teva Pharmaceuticals on patent litigation relating to the intended launch of a dry powder inhalable formulation of tiotropium, a drug for the treatment of chronic obstructive pulmonary disease.

John Swinson practises across IP with a particular focus on trade mark disputes, domain name disputes and internet marketing. A client comments: "He's a creative thinker in his approach to problem solving and he gives us options." He acted for Tatts Group, the lottery operator, with regard to trade mark infringement proceedings against Lottoland relating to the use of the terms 'Powerball' and 'Quick Pick'.

Cate Nagy practises in trade mark and copyright disputes, and one source notes that "she's a very strong lawyer." She acted for China-based company 1Verge Information Technology, which operates the video streaming website youku.com and produces certain content only made available to users in China. Australian ISP Netcube is suspected of supplying services to allow the public to access this content and Nagy acted in the pre-litigation stage of this significant geo-blocking case.

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MinterEllison - Intellectual Property Department

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Band 2

第二等

Chambers Commentary (based on the Chambers research)

What the team is known for Advises across the full range of IP disputes including high-profile copyright and trade mark actions. Has a depth of expertise handling complex patent disputes, and a track record working with leading international clients from the pharmaceutical, telecommunications, media and technology sectors. Practice includes a full registration service from a team of patent and trade mark attorneys.

Strengths The team wins praise for its depth of knowledge, with one client noting that "their legal knowledge and strategic advice is excellent, they have very good scientific knowledge and they're very careful and responsive."

Another client comments: "I find the partners very hands-on and accessible."

Work highlights Represented Calidad in defending patent and trade mark infringement claims brought by Seiko Epson regarding the recycling and resale of ink jet cartridges in Australia.

Acted for Mylan in asserting three patents relating to fenofibrate, a drug used to treat diabetes-related conditions, against Ranbaxy Australia in the Federal Court. Ranbaxy is pursuing a cross-claim seeking to revoke all three patents.

Notable practitioners

Wayne McMaster is widely respected for his patent-focused practice, where he primarily operates in the pharmaceutical and broader life sciences sectors. One client notes: "His strengths include developing effective strategies in complex circumstances, understanding business practicalities and working with expert witnesses. He is one of the best lawyers I have worked with." In addition to handling high-profile patent infringement cases, he represented Hospira (now part of Pfizer) in Administrative Appeal Tribunal proceedings against the Minister for Health and Janssen-Cilag concerning the product information for Hospira's biosimilar infliximab product, Inflectra. Inflectra was the first biosimilar to be listed on the PBS as substitutable for a biologic product following changes to the Australian regulatory and reimbursement regime.

John Fairbairn is acknowledged for his copyright and trade marks skills. One source reports: "He's a very effective trial lawyer," while another adds: "He is a very thorough operator in patent space too." He acted for Foxtel in one of the first actions brought in the Federal Court to block the pirate websites The Pirate Bay, Torrentz, TorrentHound and IsoHunt under a new copyright law that allows orders to be made against ISPs to block sites that breach copyright.

Robert Cooper has a broad IP practice, especially in respect of patent disputes. He acted for Streetworx in patent infringement and revocation proceedings against the Artcraft Urban Group relating to two innovation patents for streetlights owned by Streetworx. The patents were upheld and Artcraft Urban was found to have infringed them. Clients appreciate his "solid understanding of the law and how to move froward to achieve the desired results."

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Banki Haddock Fiora - Intellectual Property Department

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Band 3

第三等

Chambers Commentary (based on the Chambers research)

What the team is known for Handles IP issues across an expanse of industries and sectors that include entertainment, pharmaceuticals and electronics including relevant regulatory regimes. Reputed for its skills in contentious trade mark and copyright matters together with managing trade mark portfolios for international clients. Additionally advises on areas such as the protection of confidential information. Also advises on patent matters, both transactional and contentious, in the pharmaceutical and technology industries.

Strengths An interviewee emphasises the team's strength in copyright and trade mark disputes, commenting: "Banki Haddock Fiora is well versed in the copyright and trade mark infringement space. The firm has a great reputation for contentious matters."

Notable practitioners

Peter Banki is head of department and a key contact for clients.

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Davies Collison Cave - Intellectual Property Department

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Band 3

第三等

Chambers Commentary (based on the Chambers research)

What the team is known for Specialist firm offering a blend of patent and trade mark expertise, as well as designs and copyright know-how. Provides patent and trade mark registration services and works in conjunction with its well-regarded litigation group for IP disputes.

Strengths A client emphasises the team's expertise in patents, saying: "They have always managed to communicate effectively with me and I've learned a great deal about patents and how to manage them."

Another source comments that "Davies Collison Cave provides fantastic service which is both professional and well considered."

Notable practitioners

Ian Pascarl has a well-established reputation in the market for his contentious and non-contentious patent practice, focusing primarily on the pharmaceutical and wider life sciences sectors. An interviewee describes him as "one of the most experienced patent litigators in the country," adding: "He can do very high-quality litigation with very small teams."

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DLA Piper Australia - Intellectual Property Department

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Band 3

第三等

Chambers Commentary (based on the Chambers research)

What the team is known for A comprehensive suite of IP services with a strong track record in brand protection. Noted for its expertise in litigation as well as transactional matters including licensing. Regularly assists leading international clients from the consumer goods, technology, media and life sciences sectors in cross-border matters via its global network. Launched its Global Patent Laws, a patent tool allowing clients to analyse different patent laws in key jurisdictions for patent litigation.

Strengths Clients are very happy with the level of service provided by the team, one noting: "They're extremely responsive, their breadth of knowledge in IP is outstanding and I have not had any issues of concern with them."

Another client highlights the firm's breadth of expertise: "When there is a large firm behind the person, they have more support and that allows us to address other issues which may be implicated without having to resort to engaging another law firm and explain the situation all over again."

Work highlights Advised Lotus Bakeries on a range of trade mark dispute issues including threats of trade mark infringement and cancellation of a registered trade mark by a third party.

Acted for ResMed on complex, multi-jurisdictional patent disputes with Fisher & Paykel Healthcare relating to a large number of patents covering new generation products. Actions are ongoing in the Federal Court.

Notable practitioners

Melinda Upton leads the IP group at DLA Piper and focuses her practice on trade marks and copyright, advertising and marketing and transactional IP. She advised Australia-based company Freedom Foods in relation to the management of its international trade mark portfolio, operating across Australia, the USA and South-East Asia.

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Griffith Hack - Intellectual Property Department

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Band 3

第三等

Chambers Commentary (based on the Chambers research)

What the team is known for Independent national firm with a strong track record handling major IP transactions and deep experience in IP litigation, with particular expertise in pharmaceutical patent disputes. Well versed in copyright and brand protection and plant breeders' rights.

Strengths Clients appreciate the specialist nature of the firm: "Having the firm specialise in IP is fantastic. They are commercial, cost-effective and trustworthy."

One appreciative client describes the team as "great listeners, bright people, enthusiastic and with pride in their experience and expertise," adding: "You feel like you’re in very safe hands. In general with the patent work I have really enjoyed working with them."

Work highlights Represented KeepCup in relation to Federal Court proceedings against Gloria Jeans regarding the infringement of KeepCup's reusable coffee cup registered design.

Advised Triumph Motorcycles on the organisation of its nationwide motorcycle franchise in Australia to ensure compliance with the Franchising Code of Conduct.

Notable practitioners

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Norton Rose Fulbright - Intellectual Property Department

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Band 3

第三等

Chambers Commentary (based on the Chambers research)

What the team is known for Recognised for its global, regional and domestic brand protection and IP portfolio management expertise as well as for its experienced litigation team. In demand for its abilities in connection with IP exploitation particularly in the biotechnology, pharmaceutical and consumer goods sectors. Offers an integrated global practice, giving clients a connected, cross-border service.

Strengths A client praises the team's practicality, saying: "They're very commercial, they don't waste time on things that don't need time, they're very supportive and in touch with our goals as a business."

Another client notes the department's dedication: "The firm is very professional and committed to supporting causes in the community."

Work highlights Advised Fairfax Media on an opposition against the trade mark application for 'realestate.com.au' filed in the name of REA Group.

Acted for Summit Partners on the acquisition of a controlling stake in the eyewear brand Quayeyeware and subsequently acted for Quayeyeware on the management of its global IP portfolio.

Notable practitioners

Jackie O'Brien is an established practitioner with a particular reputation for dealing with trade mark matters. She acted for several companies, including Pacific Brands Clothing, David Jones, Myer, Woolworths, Target, Harris Scarfe, Best & Less and Surfstitch, in relation to trade mark infringement proceedings brought against them in relation to the use of the word 'Hottie' on three different underwear product ranges. Sources confirm her as "an excellent practitioner in the trade mark space."

Department head Frances Drummond is known for her trade mark expertise which is applied to many areas, including the food and drink, media and entertainment and pharmaceutical sectors. A client comments: "We are impressed by Frances's ability to provide direct and commercial legal advice which is tailored to our business's risk profile." She advised Les Laboratoires Servier on the management of its trade mark portfolio in Australia.

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DibbsBarker - Intellectual Property Department

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Band 4

第四等

Chambers Commentary (based on the Chambers research)

What the team is known for Respected for its skilful handling of patent protection especially in the areas of generic pharmaceuticals and medical devices. Also offers an increasingly well-regarded trade marks practice and regularly deals with transactional, licensing and portfolio management matters. Serves an impressive array of clients, from start-ups to major corporates, and many team members have backgrounds in science, facilitating matters in the science and technology sectors.

Strengths The team is praised for its level of dedication, one client commenting that "they're always incredibly responsive, very generous with their time and demonstrated a real strength in weighing up legal and practical risks."

Work highlights Acted for technology company Ellume on collaborative development and IP licensing aspects of its long-term supply arrangement with Anteo Diagnostics.

Advised hospitality management group Solotel in relation to its brand portfolio, including restaurants ARIA, Chiswick and Goros.

Notable practitioners

Scott Sloan has a broad practice in IP, covering both patent litigation and trade mark enforcement, one client commenting that "he's thorough, responsive, commercial and has strong technical expertise in relation to trade mark disputes." He acted for Bauer Media on a dispute with Evergreen Television, appealing in the Federal Court against Evergreen's application for the Discover Downunder trade mark.

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Jones Day - Intellectual Property Department

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Band 4

第四等

Chambers Commentary (based on the Chambers research)

What the team is known for Australian branch of a global IP practice, establishing a strong reputation for the handling of contentious matters, especially patent litigation in the life sciences and technology arenas. Its impressive client list comprises many well-known, international pharmaceutical companies which it assists with the protection of patents covering key high-value drugs and treatments. Also advises clients on copyright, trade mark, breach of confidence and design matters.

Strengths Clients praise the service level, one saying: "They're an excellent team, they're consistently providing a high standard of service."

Work highlights Acted for Merck, the owner of Idenix, on a patent dispute with Gilead regarding the patent relating to compounds useful in the treatment of hepatitis C, among others. Gilead alleged that the patent was invalid and Merck counterclaimed that Gilead infringed the patent.

Represented Bradken defending claims by CQMS that Bradken had infringed two of its patents relating to certain ground engaging tools.

Notable practitioners

Anthony Muratore is a highly experienced and very well-regarded individual with a practice that focuses on patent litigation. Interviewees describe him as "a major player" and "an exceptional practitioner." He assisted Merial with its appeal from the Patent Office on its decision to dismiss its opposition to the grant of a patent to Argenta Manufacturing relating to an intraruminal device for dosing livestock with anthelmintics.

Lisa Taliadoros has considerable experience in patent litigation, particularly the enforcement of patents for innovator pharmaceutical companies. She acted for Biogen on the opposition by Alphapharm to its application for a patent relating to dimethyl fumarate products used to treat multiple sclerosis. In addition to her legal qualifications, she has prior experience as a research scientist in the fields of oncology, virology and molecular biology.

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K&L Gates - Intellectual Property Department

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Band 4

第四等

Chambers Commentary (based on the Chambers research)

What the team is known for Full-service IP practice with a strong emphasis on patent matters, operating in sectors such as life sciences technology, property and construction. Offers patent attorney service as part of the integrated team. Also advises clients on matters relating to trade marks, copyright and brands.

Strengths Clients appreciate the team's dedication and determination, one noting that "they're very thorough; they've got a very combative view of the world and will fight hard to support the case."

Another client adds: "They're loyal and understand the needs of clients and how they like to be dealt with; they're very personable and relationship-focused."

Work highlights Advising Specialized Therapeutics and Mundipharma on their strategy to enforce their patent rights in Australia. The work includes Federal Court litigation and Patent Office opposition proceedings.

Advised Novogen on patent drafting and prosecution, drafting and negotiating a worldwide licensing agreement with Genetech and an IP dispute with Noxopharm.

Notable practitioners

Tony Watson is the head of department and key contact for clients.

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Shelston IP - Intellectual Property Department

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Band 4

第四等

Chambers Commentary (based on the Chambers research)

What the team is known for A substantial, specialist IP firm with a comprehensive range of patent and trade mark services. Offers specialisms in the biotech, pharmaceutical, electronics and chemical arenas, in addition to trade mark protection and broader transactional matters. Handles both contentious and non-contentious matters, including protection, management and commercialisation of IP assets.

Strengths Sources express high praise for the team's skills and client focus: "Overall they are an excellent team of IP professionals in all areas which are fundamentally important from a client perspective; they excel in patent filing and prosecution, and instructions in all organisational matters only need to go out once. They are a highly efficient and detail-oriented team."

Work highlights Acted for Santen Pharmaceuticals and Asahi Glass in opposition proceedings with Alphapharm in respect of a patent application that concerned glaucoma treatments involving tafluprost.

Represetned Cargill on the opposition to a patent application by Dow AgroSciences which covered canola plants, seeds and oil having a beneficial lipid profile.

Notable practitioners

Sydney-based Chris Bevitt is a key contact at the firm.

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Simpsons Solicitors - Intellectual Property Department

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Band 4

第四等

Chambers Commentary (based on the Chambers research)

What the team is known for Widely reputed for its consummate understanding of the arts, publishing and media spheres. In demand by a range of high-profile clients, especially for its copyright expertise on both the advisory and contentious fronts. Also has a strong trade mark focus, acting for a number of high-profile clients.

Strengths Clients praise the team for the level of partner involvement: "We value getting direct access to senior practitioners who can provide deep subject matter expertise in a responsive and cost-effective way."

One client adds: "They're really easy to deal with, commercial, practical and approachable, they give us solutions and they operate in the real world."

Work highlights Advised Eight Miles Style and Martin Affiliated, the owners and managers of Eminem's music catalogue, on a dispute with the National Party of New Zealand over its 2014 election campaign which used a soundalike music track to Eminem's 'Lose Yourself'. This involved the issue of damages for copyright infringement where the previous licensing had been rare.

Represented Redlands Estate Distillery with regard to its defence and cross-claim in a trade mark dispute regarding the use of the name 'Redlands' against a major Australian wine company, Casella Wines.

Notable practitioners

Head of department Adam Simpson has extensive experience in copyright and trade mark matters, both contentious and non-contentious, in the media, entertainment and arts sectors. He was engaged by The Wiggles, operator of the well-known children's entertainment group of the same name, to advise in relation to the management, protection and enforcement of its trade mark portfolio, and also on issues relating to copyright and design protection. A client notes that "Adam is very experienced with copyright-related litigation and is a calm and expert hand in contentious matters."

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Spruson & Ferguson Lawyers - Intellectual Property Department

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Band 4

第四等

Chambers Commentary (based on the Chambers research)

What the team is known for Substantial group of specialists with skills across the full range of IP services, from the management of IP assets through to litigation. Experienced advising a broad variety of clients from large multinational corporations to public sector research organisations across the Asia-Pacific region. Covers all aspects of IP, across patents, trade marks and designs.

Notable practitioners

Tim Allen is a specialist in trade mark, copyright and design law, and advises clients on both contentious and non-contentious matters. One of his clients describes him as "very commercial and costs-focused, and he's very available," adding: "I think he's probably one of the sharper minds in Australia. He's got a wealth of experience and he covers everything well."

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