The 25% growth in patent applications in Australia since 2009 has been largely driven by foreign-based filers, with domestic firm filing numbers remaining broadly stable over that period. There have also been recent market moves involving some of the jurisdiction’s largest strategic players. IP giants IPH, Xenith and QANTM collectively control a huge chunk of Australia’s patent market and lately the trio have been engaged in a heavyweight tussle for dominance. Xenith and QANTM’s shareholders were due to vote on a proposed merger this spring, which was announced in November 2018 – an especially interesting development considering that IPH revealed that it had also previously been courting QANTM with a view to a market-cornering merger. Only time will tell how these manoeuvrings affect the Australian IP scene. Meanwhile, the contentious space continues to be dominated by life sciences litigation as generic manufacturers become ever-more aggressive in terms of market entry. Another interesting courtroom development this year came from the Australian Federal Court, which has waded into the ongoing debate over the patentability of computer-implemented inventions by ruling in Rokt Pte Ltd v Commissioner of Patents that they are indeed eligible for patent protection. Software innovators across the country will be breathing a deep sigh of relief.
- Allens Patent & Trade Mark Attorneys
- Ashurst Australia
- Herbert Smith Freehills
- King & Wood Mallesons
- Corrs Chambers Westgarth
- Davies Collison Cave
- Bird & Bird LLP
- Clayton Utz
- DLA Piper
- Gilbert + Tobin
- Griffith Hack
- Jones Day
- Mills Oakley
- Phillips Ormonde Fitzpatrick
- Shelston IP Pty Ltd
- Spruson & Ferguson
- Highly recommended
- Davies Collison Cave
- FB Rice
- FPA Patent Attorneys
- Griffith Hack
- Phillips Ormonde Fitzpatrick
- Shelston IP Pty Ltd
- Spruson & Ferguson
- Allens Patent & Trade Mark Attorneys
- Cotters Patent & Trade Mark Attorneys
Allens Patent & Trade Mark Attorneys
“Allens Patent & Trade Mark Attorneys offers the full spectrum of patent services: from prosecution through to litigation and transactional support. With a passion for intellectual property, its patent attorneys and lawyers are of the highest calibre and are very much invested in the success of their clients.” The firm’s technical forte lies in the pharmaceuticals sector and industry leaders know that they are “in good hands” when they enlist the Allens Patent & Trade Mark Attorneys practitioners. The team has carved out a valuable niche for itself in pharmaceutical patent term extension work, an area of practice in which the accumulated expertise of trans-Tasman patent attorney Linda Govenlock is a hot commodity. Known as “the guru of Australian patent term extensions”, she combines deep technical expertise with years of industry experience, which makes her irresistible for a host of global pharmaceutical players. In addition to her patent prosecution activities, she frequently teams up with “outstanding patent litigator and one of the best in the sector” Philip Kerr, to tackle contentious briefs. Recently, the pair have succeeded in defending Purdue Pharma’s Norspan drug in a post-grant re-examination proceeding before the Australian Patent Office. Another bona fide legend of the Australian patent sphere, fellow litigator Richard Hamer has also had his hands full lately, scoring a win for Pfizer in a Federal Court case over the sale of the drug Lyrica, as well as settling two disputes on behalf of Vaxiion Therapeutics and UCB. Melbourne-based partner Sarah Matheson continues to impress clients with her top-drawer strategic guidance. One happy customer comments that “she creates long-run best practice frameworks for R&D projects, which is very conducive to a flexible research and commercialisation culture”. Last but not least, Andrew Wiseman is a versatile lawyer with experience across the food and beverage, entertainment, healthcare and pharmaceutical industries. Last year, he enjoyed a major result when he successfully obtained Australian patent protection for the widely used drug Copaxone on behalf of Teva Pharmaceutical Industries.
Ashurst Australia maintains a fully fledged patent litigation and transactional offering, which is supplemented by its specialised practices dealing with food labelling, therapeutic goods and cosmetics. The firm has recently seen some changes in personnel, with top practitioners Stuart D’Aloisio and Nina Fitzgerald stepping up to fill the boots of Grant Fisher and Mary Padbury. “Tireless in his efforts for clients, highly intelligent and able to assimilate key technology concepts extremely quickly,” partner D’Aloisio is always busy running big-ticket pharmaceutical litigations and opposition procedures. New arrival Fitzgerald, formerly of Herbert Smith Freehills, reached Ashurst’s Sydney office via a stint at renowned Hong Kong patent law firm Deacons, where she played a part in many of the city’s recent major contentious patent matters. Kellech Smith has been boosting her reputation by representing Apotex in Commonwealth of Australia v Sanofi, a high-profile case over damages eligibility under the Pharmaceutical Benefits Scheme. Meanwhile, transactional sage Anita Cade is adept at negotiating and drafting research collaboration deals, supply agreements and IP assignments. She is a leading expert on the regulation of therapeutic goods in Australia.
Bird & Bird LLP
As a central part of Bird & Bird’s sprawling network of top-ranked Asian and European offices, the firm’s Sydney bureau is quickly gaining prominence among Australian patrons. The outfit’s contentious practice has been buzzing of late, as a result of an uptick in pharmaceutical and telecoms dispute resolution work, a surge of interest in its patent opposition proceedings expertise and plenty of freedom-to-operate and regulatory clearance matters on behalf of myriad generic pharmaceutical companies. Jane Owen heads up the IP practice. The contentious ace is highly sought after by generic pharmaceutical players, having most recently successfully represented Generic Health in a dispute with Bayer AG over a contraceptive drug. “Excellent practitioner” Lynne Lewis is also a force to be reckoned with, in both soft and hard IP mandates.
“A responsive team with superb legal knowledge and commercial awareness, its no-nonsense working style is a major advantage of engaging Clayton Utz.” Building on its well-established reputation in the telecoms space, the firm has also developed a “strong presence in pharmaceutical patent litigation” of late, while also expanding its reach into the mining industry. John Collins is widely recognised by peers as a litigation superstar and is described as being an “experienced and pragmatic attorney with an outstanding reputation for winning”. He is currently leading a case for Novartis Pharma concerning its blockbuster multiple sclerosis drug Gilenya, which is the first Australian matter in which the pharmaceutical company is attempting to enforce its innovation patents – rather than its standard patents – against generic manufacturers. “A very skilful patent practitioner,” partner Richard Hoad inspires tremendous trust from patrons – as evidenced by his 16-year working relationship with Monsanto.
Corrs Chambers Westgarth
Corrs Chambers Westgarth is “a dependable source of responsive and client-focused solutions” to contentious and transactional patent conundrums of all hues. The firm recently brought in Grant Fisher and two senior associates to beef up its practice; Fisher himself has 25 years of experience in the field and is familiar with courtrooms up and down the country. Corrs Chambers Westgarth is a commanding force in the life sciences litigation sphere, the outfit is adept at representing both innovators and generic companies alike. Leading figures in this field include Stephen Stern, Kate Hay and David Fixler, all of whom have had their plates full of late with high-profile contentious mandates. An absolute star across the complete spectrum of patent matters, Stern chairs the IP practice with flair. Although most renowned for his illustrious trademark record, the high-flying lawyer is a familiar face in high-stakes patent oppositions and litigation. Practice group leader Hay shares Stern’s versatility – she is “an extremely adaptable practitioner” who resolves pharmaceutical and technology disputes with finesse. Meanwhile, as one peer espouses, Fixler produces “very impressive patent work, by virtue of his razor-sharp mind”. Working outside of his usual domain, which is expert pharmaceutical dispute resolution, he has recently been tasked with representing computer accessory company Targus International, in a patent dispute with its Australian subsidiary. Another well-established litigator is Odette Gourley, whose “extremely knowledgeable, pragmatic and agreeable” style is popular with clients of the calibre of Merck Sharp & Dohme. “She runs large-scale litigations remarkably well.” Eddie Scuderi and Frances Wheelahan are the firm’s transactional whizzes; Scuderi is known for his “top-quality contracting work”, while Wheelahan’s prolonged exposure to multiple industries and sectors makes her an indispensable ally in tough negotiations of all types.
Cotters Patent & Trade Mark Attorneys
Having been practising for a decade now, “premium boutique patent attorney firm” Cotters makes its debut in the IAM Patent 1000 this year. Specialising in the electrical and mechanical engineering arenas, the four-strong patent partnership is famed for the “meticulous advice” it efficiently dispenses to the likes of Alibaba and Rio Tinto – although its base covers a comprehensive array of clients, including individual inventors, start-ups and renowned multinational companies. Australian and Japanese-qualified patent attorney Hideko Yamamoto should be the first port of call.
Sitting at the top of the food chain as the apex predator of the Australian IP scene, Davies Collison Cave’s patent practice is distinguished by excellence on either side of the contentious/non-contentious divide. Robust working relationships with an extensive list of foreign associates is another defining characteristic and the illustrious set – composed of a patent attorney firm, a law firm and a rapidly expanding Singaporean patent practice – maintains a laser focus on maximising client satisfaction. Building on its “first-rate patent expertise”, the Asia-Pacific powerhouse recently established an auxiliary commercial, corporate and tax law practice to further its transactional depth and meet client needs. Melbourne-based Bill Pickering leads the firm’s “impressive biotech practice”. His core expertise lies in immunology and gene silencing. Ian Pascarl is “held in high esteem for his stellar performances in pharmaceutical and life science litigations”, while consultant Richard Jarvis is “another old hand in the field”. Michael Caine “stands out for his buzzing chemical and pharmaceutical litigation practice, which he handles masterfully”. A veritable prosecution pro, Caine also often appears as an expert witness and commands immense industry respect as a result of his involvement with a range of representative bodies, including the International Patents Committee of the Institute of Patent and Trademark Attorneys of Australia (IPTA). Paul Dewar heads the Sydney patent litigation team; he is known as a “switched-on and intelligent lawyer”. Richard Brown and David Webber are yet more notable practitioners. The “well-respected” Brown boasts superb technical versatility within the chemical engineering, electronics, IT and physics fields. Meanwhile, Webber is au fait with patents spanning the IT, AI and image processing arenas. Finally, Rodney De Boos is the firm’s foremost commercial guru. He has spent close to 50 years honing his craft and as a result knows IP commercialisation and antitrust law like the back of his hand.
DLA Piper is doing excellent business in the pharmaceutical and medical devices fields. The firm represents Pfizer and ResMed in a large share of their patent litigations and is also trusted to handle disputes by some other Australian hard hitters in various technical fields. The outfit’s blend of technical and legal expertise combines with its US patent litigation experience to result in a truly enticing package. Robynne Sanders and Nicholas Tyacke constitute an indispensable part of the firm’s 130-strong global pool of litigators. Sanders is a fearsome sharpshooter when it comes to technology, energy and life sciences briefs. Having spent seven years at a prolific US patent litigation firm, Tyacke’s experience in the US courts is a real advantage for multinational rights holders.
“As a large independent firm, FB Rice has leveraged itself exceptionally well at a time when some competitors are down-sizing.” The firm’s long list of achievements over the past year include the highest-ever revenue recorded in its 60-year history, the opening of a new Brisbane office, a 10-fold uptick in national filings into Southeast Asian jurisdictions and several internal promotions – as one peer expounds, “all the best attorneys who desire to work in a big-firm environment are queuing at FB Rice’s doors”. In addition, the set is one of the largest undertakers of Australian patent opposition proceedings and home to a sizable research and tax consulting arm. The side is the recipient of emphatic client feedback, for example one enthuses: “FB Rice attorneys are knowledgeable, accessible and go out of their way to understand clients’ businesses and attitudes towards intellectual property. The firm provides a superior level of service at attractive price points and, very importantly, its independence is conducive to meeting long-term visions and goals for clients.” On the biotech and chemistry fronts, Ian Rourke impresses with his “smarts, pragmatism, responsiveness and frank and direct style of communication – his committed yet equable temperament is vital in the face of pressure”. Rachel Hooke helms the medical technology and Chinese business teams, while the “extremely well-regarded” Jenny Petering continues to make waves with her advocacy, despite having stepped down from the partnership to become an of counsel. Petering and colleague John Landells recently triumphed in a string of patent opposition proceedings on behalf of Boehringer Ingelheim Animal Health. Landells also manages Boeing’s patent portfolio together with Connie Merlino, who is lauded as an “IT maestro” and enjoys an impeccable reputation among colleagues. UK, European and Australian patent attorney Jeremy Dobbin supervises the registered designs team with verve, and managing partner Brett Lunn is, in the words of one source: “A dab hand at identifying innovative designs and protecting them with suitable patent applications.”
FPA Patent Attorneys
FPA Patent Attorneys practice is currently in fine fettle, having drafted and filed an extremely high number of Patent Cooperation Treaty applications and recorded a dramatic increase in total patent application numbers this year. “Providing a highly personalised and top-notch service on technically complex matters,” one distinct selling point of the Melbourne, Sydney and Singapore-based firm is its expertise in computer-related inventions, which is evidenced by its awe-inspiring success rate for patent applications in the field. An additional strategic partnership with Herbert Smith Freehills has translated into further access to market-leading litigators and commercial lawyers for its illustrious client base. Managing partner and principal James Cherry’s expertise spans numerous life sciences-related fields and his leadership continues to drive the group forward. A former EPO examiner, Chris Bird embodies the firm’s values. “His advice is always consistent, a fact which inspires a great deal of trust in his clients when faced with knotty patenting decisions. He has an excellent track record for obtaining patents in a variety of jurisdictions in a timely manner.” Computer science and engineering are his technical specialities. John Dower, Carl Harrap and Daneta Crump are diligent portfolio managers for one of the world’s most prolific technology companies. A registered patent attorney in Australia, New Zealand and South Africa, Dower is a tenacious operator when it comes to electrical, electronic and mechanical engineering briefs. Dower is a familiar face in opposition proceedings, which is a specialism also shared by Harrap. A dab hand at dispensing infringement and validity advice, Harrap is also an expert on computer-implemented inventions. Crump has garnered a large following of Australian and international businesses who relish her deeply strategic approach; she handles patent applications in Australia and New Zealand for high-calibre clients, including Johnson & Johnson. Biotech patrons would do well to seek out Tom Gumley, Adam Denley and Karen Bentley. Life sciences concerns flock to Gumley, not just for his prosecution nous but also for his aptitude for commercialisation. Denley boasts striking technical capabilities, developed during his time conducting research at the Scripps Research Institute’s Department of Molecular and Experimental Medicine. He has 14 peer-reviewed journal articles to his name. Meanwhile, Bentley is the trusted adviser to a large US-based pharmaceutical company, with responsibility for their patent operations in Australia and New Zealand.
Gilbert + Tobin
Specialising in contentious and transactional patent work, Gilbert + Tobin is “an outstanding IP practice embedded in a full-service law firm”. Hosting “a particularly strong technology group”, it has enjoyed superb levels of growth this year. Head of patents John Lee is known as an “eminent practitioner with an exceptional track record, especially in the mining sector”. He has recently been tasked with representing the BASF Group, in a series of parallel litigations against SNF Group that have taken place around the globe. Partner Chris Williams recently acted for Clinical Laboratories in a patent infringement matter with Sequenom over a non-invasive foetal DNA test patent; his regulatory experience is also hugely appreciated by his diverse stable of clients. Lastly, trade secrets maven Michael Williams brings substantial patent litigation experience to the mix, having been active in courtrooms up and down the land.
“Australia’s pre-eminent patent prosecution firm, Griffith Hack always delivers a first-rate service.” The outfit distinguishes itself through its “commercial approach” to IP asset management. “The partnership provides strategic advice to maximise its clients’ competitive position on the market, always approaching drafting and prosecution instructions with a view towards future enforcement and providing pragmatic advice in dispute proceedings. It also cultivates healthy relationships with its patrons that can withstand the test of time.” A constant source of “mature leadership” and growth opportunities for his team, Nick Mountford has stepped into his role as the national practice group leader for the electrical, IT and physics division with vigour. “He is highly regarded by his peers for his impressive work in the electronics sector.” His recent success on behalf of Bio-Rad Laboratories, whereby he achieved the grant of a computer-implemented invention patent after a successful oral submission at the Australian Patent Office, stands testament to his quality. Armed with a PhD in physics from the University of Cambridge, Derek Baigent recently demonstrated his technical flair while acting for Navico in a patent infringement dispute – which ultimately set his client up for a favourable global settlement with Garmin Australia. Former firm chairman David Hughes receives effusive client feedback: “You can rely on David to draft patents, craft strategies and provide guidance that will maximise your commercial value and protect your assets. He has a deft approach to navigating prior art searches and a number of his meticulously drafted patents have been successfully litigated, both in Australia and in the United States.” Janelle Borham and Rosie Stramandinoli are the names to note in the life sciences technical area. A specialist in organic chemistry, Borham’s broad range of expertise encompasses food chemistry, pharmaceuticals and polymers. Stramandinoli is a savvy choice for patent term extension work; her eminent standing in the community is demonstrated by her council membership at the Royal Society of Victoria.
Herbert Smith Freehills
“The team at Herbert Smith Freehills continues to impress. Its practitioners have a unique ability to analyse scientific issues and pick out elements that are key to the success of the case – all while maintaining the utmost professionalism. Tremendous value is added, whereby the firm acts as a hub for coordinating litigation in the Asia-Pacific region, providing clients with a single point of contact.” The full-service firm’s Australian IP contentious division has a resolute leader in the “outstanding” Sue Gilchrist. She is best placed to work with pharmaceutical, consumer goods and electronics patents and is perpetually busy with briefs of the highest importance. Recently, she struck gold for medical devices technologist Becton Dickinson, whom she defended from B Braun Melsungen’s allegations of infringement over three patents relating to IV catheters. She also continues battling on behalf of Motorola Solutions, in its wide-ranging battle against Hytera. The “highly experienced” Shaun McVicar is a steadfast ally in big-ticket cross-border disputes. He recently prevailed on behalf of Gilead Sciences, in a global dispute regarding its defence against Idenix’s patent infringement allegations over hepatitis C drug Sofosbuvir – a feat which enabled his client to launch the blockbuster drug in Australia. Rebekah Gay is a never-say-die litigator with a degree in biochemistry. Her shrewd counsel is underpinned by her elite understanding of the technical subject matter. Patrick Sands leverages his experience gained working in-house at General Electric superbly, deftly handling matters across the technology, media and telecoms sector. He recently secured an optimum commercial outcome for Corning Optical Communications, following an intense courtroom battle with NetComm Wireless Ltd over fibre optic technology. Herbert Smith Freehills is also a top address for transactional matters. Few know IP commercialisation quite like Kristin Stammer; the highly respected lawyer is “always seen working on the most commercially important agreements around”. Working alongside her, Amalia Stone “is incredible – her extreme intelligence has allowed her to make a name for herself in the transactional sphere”.
Based in the heart of Australia’s leading coworking space and innovation incubator, River City Labs, IAM Patent 1000 debutant Innofy is a breath of fresh air for original thinkers in the high-tech, biotech and medical devices arenas. “It is innovative, extremely flexible and aligned with the start-up culture. Innofy is a go-to for inventors seeking great prosecution work, even helping to prepare innovators for negotiations with potential investors!” Dynamic duo Katherine Rock and Andrew Clarke lead the operation. Armed with a PhD in biomedical engineering, Rock specialises in medical image processing and heads up the engineering division. “She clearly explains the steps necessary to patent protection, and is readily able to distil the complex technical subject matter into a language that is easy to understand. Her attention to the technical details allows her to tease out the vital information that makes an application stronger – the specifications that Katherine drafts are of exceptional quality.” Holder of a PhD in immunology and biochemistry, Clarke oversees the biotech unit. “Andrew is one of the best patent attorneys in Brisbane – he is really knowledgeable, and his drafting is technically sound. His approach is flexible and client-oriented; he focuses on solving problems and providing value rather than charging fees on an hourly basis.”
Jones Day’s Australian patent practice maintains its laser focus on contentious and transactional patent matters. The outfit is very much on the up, having recently opened a new office in Melbourne to complement its existing Sydney outlet and hired an influx of top talent of late – exemplified by the arrival of Andrew Rankine from Ashurst. As head of the IP division, Lisa Taliadoros sets the tone. She utilises her experience as a scientist at the Commonwealth Scientific and Industrial Research Organisation and Centenary Institute of Cell Biology and Cancer Medicine to deliver technically sound arguments before the court, every time. As a result, a veritable army of life sciences flock to instruct her: notable names include AbbVie, Myriad, Sanofi and Toolgen Inc. After more than 35 years of gold-plated service to the firm, of counsel Anthony Muratore recently retired from the partnership. However, he continues to advise clients superbly on new patent matters in the pharmaceuticals, biotech and healthcare fields.
“King & Wood Mallesons provides a pragmatic and effective service, which is key to its fantastic results in large-scale disputes and transactions. The team is highly experienced, incredibly skilled and easy to work with; the practitioners put in that extra effort to cultivate relationships with clients as well.” Top dog Matthew Swinn helms the national IP practice. “He is practical in the advice he gives and his approach to litigation. One of Matt’s strengths is balancing complex legal issues with the commercial reality; he focuses on the issues that really matter.” He recently teamed up with Kim O’Connell in a precedent-setting dispute against Wyeth, where they represented Sigma Company and Alphapharm respectively. Pharmaceutical and biotech wizard O’Connell is known to be “excellent, strong litigator”. Clients are also quick to praise “all-rounder” Scott Bouvier: “He is simply outstanding. His vast and varied experience is an invaluable asset in both patent commercialisation and contentious matters. Scott is definitely a thought leader – I always learn something new from him!” The transactional guru continues to prove his quality, having recently closed a $600 million deal on behalf of Humanwell Healthcare in their acquisition of Ansell Limited. Brisbane-based John Swinson also runs a buzzing transactions practice – he is currently in the midst of advising QUTBluebox on their efforts to enter into a licence to use revolutionary gene-editing technology CRISPR.
Madderns always keeps its clients’ wider business interests at the forefront of its versatile practice, with its practitioners dispensing timely advice that leads to optimal financial outcomes time and time again. The firm’s specialities range across the electronics, engineering, IT and life sciences spaces and the outfit is also home to two patent attorneys qualified to practice before the State Intellectual Property Office of China. This naturally gives Madderns considerable appeal for clients looking to assert their rights in the Middle Kingdom. Having been recently elected to the partnership, Stephen O’Brien is fully committed to the task of elevating his clients’ businesses, by identifying and protecting their patent assets to maximum effect. The electronics and engineering master also heads up the partnership’s sports technology practice.
Making its debut in the guide this year is national law firm Mills Oakley, which comes “highly recommended, for matters ranging from litigation to licensing and commercialisation”. Operating out of Sydney, the energetic outfit is expanding fast and turning heads; acting for international hard-hitters such as Dr Reddy’s Laboratories and NUC electronics has boosted its profile among domestic observers. The firm has also carved out a space for itself in the computer-implemented inventions sector, which happens to be partner James Lawrence’s technical metier. “He has a great legal mind and is perennially up to speed with the latest case law. He puts clients at ease with his confident demeanour and commercially astute advice.” Lawrence recently represented the IPTA in its seminal appeal to the Federal Court in Encompass v InfoTrack; a case which spoke to the critically important issue of whether computer-implemented inventions can be considered patentable subject matter in Australia. His partner Melissa McGrath is an “excellent practitioner” and “a source of measured advice”; she has a penchant for mandates in the media, technology and fast-moving consumer goods domains.
Widely renowned for its patent litigation prowess, MinterEllison also has a compact but effective prosecution unit – which gives it the ability to provide patrons with an all-encompassing patent offering that ticks all of the right boxes. Spearheading the IP group is the “dynamic and highly skilled” Robert Cooper, who brings a wealth of experience of acting for leading players in the pharmaceutical space. Together with Jonathan Kelp – a medical devices magi who was recently made partner at the firm – he came to Alphapharm’s aid in proceedings brought by Sanofi-Aventis regarding the former’s insulin injector pen. Senior legal counsel Wayne McMaster is a fount of patent wisdom; he dispenses shrewd counsel on life sciences regulatory briefs, superbly leveraging his 30 years of experience of acting in such matters. Biotech virtuoso John Fairbairn packs a punch in the courtroom – and is also a dab hand when the need arises for refined portfolio management. Dual-qualified attorney at law and patent attorney Shyama Jayaswal both drafts and enforces with finesse. She has been kept busy lately acting for Mylan Health and Hospira/Pfizer Australia, in two separate matters wherein she successfully obtained interim injunctions against Apotex and InterPharma, preventing premature market entry on behalf of her clients. She also takes the lead in the day-to-day management of paints and coatings magnate PPG Industries’ Australian portfolio. Special counsel Nicole Reid is a noted purveyor of “fantastic transactional work”, with one peer describing her as “sensible and measured: an impeccable drafter who really knows how to negotiate”. Early 2019 saw two fresh arrivals from K&L Gates. Michael Christie has quite an impressive profile. Recipient of the 2017 Institute of Patent and Trade Mark Attorneys of Australia Institute Prize, he is the only Australian patent attorney certified by the Plant Breeder's Rights Office as a Consultant Qualified Person. The molecular biology PhD holder keeps fully up to speed with the academic world and that has enabled him to draft complex biotech patents with ease. His senior Nigel Lokan is “an excellent patent attorney who makes light work of challenging life sciences and chemistry-related patent work”.
Phillips Ormonde Fitzpatrick
“Industry leader” Phillips Ormonde Fitzpatrick continues to go from strength to strength, constantly adding to its stable of marquee clients across the electronics, engineering and life sciences sectors. “The service is excellent. Its range of technical expertise is superb, its back-end functions are ever-reliable and the commercially focused attitude of its practitioners is most impressive. Working in a collaborative environment, its attorneys are approachable, courteous and truly care about their clients’ success – all at a fair and reasonable price point.” Managing partner Ross McFarlane ensures that operations always run smoothly. The technology guru is a triple threat; as a qualified Australian, New Zealand and European patent attorney. Alongside him is deputy managing partner Chris Schlicht: “A recognised leader in the field, with significant experience and a fantastic track record of enforcing patents at both a domestic and an international level.” Schlicht recently teamed up with David Longmuir to represent Meat & Livestock and Dairy Australia at the Federal Court in a momentous biotech and genomics dispute against Cargill USA and Branhaven. “Longmuir has a keen eye for detail, yet never loses sight of the bigger picture and endgame. Great intelligence aside, his affinity for developing and maintaining positive working relationships is another crucial factor in his great litigation outcomes.” Taking the chemistry and life sciences team under his wing, Ray Evans is one of the most distinguished practitioners at the firm. “His work is of an exceptionally high quality and his drafting is always done to an excellent standard. He provides useful and practical advice and will make sure pressing issues are dealt with immediately. Ray is proactive and clients always receive the best service from him.” Overseeing the electronics, physics and IT group, Saskia Jahn is a trusted purveyor of skilfully constructed patent applications and freedom-to-operate opinions.
Shelston IP Pty Ltd
“Shelston IP is head and shoulders above the rest, for its holistic service and deep reserves of knowledge. The team is super proactive and always one step ahead of the opposition; they work around the clock, never missing a deadline and will go above and beyond to ensure the work is first-rate.” An example of the firm’s innovative tendencies is its recent launch of OneAsia, a business solution aimed at providing clients with seamless one-stop shop protection across the Association of Southeast Asian Nations. Vice president of the Australian chapter of the Asian Patent Attorneys Association Paul Harrison leaves both clients and peers in awe. As one patron enthuses: “Paul fuses his technical knowledge in chemical engineering with his legal expertise and sound commercial thinking, to produce great work. He has strong patent searching and analysis skills and his overall strategic approach makes him a stand out. Paul is proactive and his ability to understand complex processes and distil it into simple and easily digestible language is extremely valuable.” Patent attorney Greg Whitehead has a broad mechanical engineering practice; he possesses detailed and unique knowledge of robotic systems, automation equipment and industrial drying and heating machine patents. Both Kieran Williams and Grant Shoebridge are intimately familiar with patent term extensions and plant breeder’s rights and are the outfit’s resident biotech and pharmaceuticals authorities. Williams has an assured hand when it comes to overseeing complicated instructions thanks to former stints as a patent examiner at IP Australia and as a clinical pharmacology scientist at GlaxoSmithKline, while Shoebridge leverages over 15 years’ worth of medical research experience in the immunology field to provide consistently shrewd counsel. Commercial law department spearhead Chris Bevitt comes “highly recommended for his finesse in transactional matters. He has the ability to take intricate commercial arrangements involving the past, present and future rights and obligations of parties and draft meticulous, concise and effective clauses to reflect them perfectly. Chris’ turnaround is fast and his communication extremely effective – he proposes alternative solutions to achieve the best possible outcome. He is courteous and always available to answer questions too.”
Spruson & Ferguson
Having joined forces with two other top Australian IP outfits in July 2018, Spruson & Ferguson now has an impressively deep bench and an offering that is hard to beat. Patrons rhapsodise about the partnership’s services: “From drafting applications to dispute proceedings and asset commercialisation, the firm’s practitioners utilise their instinctive understanding of our commercial and technological strengths to serve up strategies that further our goals.” To take matters one step further, Spruson & Ferguson has recently established an exclusive agreement with Beijing Pat SF Intellectual Property Agency to provide a seamless, A-Z service for the firm’s clients in China. Spearheading the chemical and life sciences team, seasoned attorney Simon Potter is a repository of trust for some of the country’s leading academic institutions, including the University of Sydney and the Australian National University. Brisbane-based Adam Luxton leads the way for the engineering and IT team; hard-hitters in the mining, energy and medical devices industries alike seek him out for his sharp technical dexterity. Although he is more renowned for his expertise in the trademark arena, head of the legal department Khajaque Kortian is continually breaking new ground in the patent space as well. The tenacious litigator recently secured the first interlocutory injunction to restrain the launch of a biosimilar pharmaceutical product, on behalf of F Hoffmann-La Roche AG & Roche Products against Sandoz.
Wrays runs a commercially focused, fully integrated patent attorney and legal practice out of its three offices in Melbourne, Perth and Sydney. The firm has had a bumper year, in which it has absorbed a significant increase in workload – with numerous international pharmaceutical and mechanical industry players joining its roster of clients. The client-centric outfit pays the closest attention to the needs of those it serves, which allows it to provide a bespoke offering that has proven irresistible to Australian Stock Exchange-listed and international companies alike. Clients of the calibre of Eli Lilly entrust the esteemed set with instructions, which often relate to both contentious and non-contentious matters. Gary Cox is the resolute leader of the firm, and is “highly respected in the IP community”, “a favourite in the life sciences arena” and can resolve any kind of patent conundrum with finesse.
Other recommended experts“The versatile Anthony Alder, of Alder IP, stands out on the legal landscape. Knowledgeable, with highly specialised expertise, Anthony is always open-minded and entrepreneurial in his quest to provide solutions to complex issues. He provides a seamless service and is a man of integrity and principle.” “Fantastic patent prosecutor” and director of Argon IP Hayden Barke is an adroit handler of mechanical briefs. The trans-Tasman patent attorney works closely with clients of all stripes, helping them to realise their long-term commercial goals. With over two decades of industry experience to his name, Solubility’s own Jeff Bergmann “has an outstanding reputation for his superb licensing skills”. Certified licensing professional and IAM Patent 1000 debutant Catherine Boxhall offers a refined transactional patent service from her base at Integra Law. Pharmaceuticals connoisseur Wayne Condon possesses over three decades’ worth of experience gained navigating major industry players through regulatory hoops and tricky product launches. The former Griffiths litigator now plies his trade at Biopharmalex. Having recently set up eponymous boutique Cooper IP, Michael Cooper marries his expertise as a mechanical engineer with his legal capabilities to get deep into the nitty gritty of each and every patent application. Dynamic duo and FAL Lawyers co-founders Peter Francis and Jenni Lightowlers have IP asset commercialisation down to a fine art. Francis is known for his deft handling of innovative technology briefs, while Lightowlers is a life sciences leader specialising in R&D agreements. Blackwattle IP founder Paul Mahony is a computer-related inventions specialist; he is adept at leveraging his in-house experience at a leading telecoms company to navigate thorny issues without breaking a sweat. Seasoned advocate Glenn McGowan QC, of Gadens, leverages 27 years’ worth of experience to manage chemical and pharmaceutical patent cases flawlessly. Former DibbsBarker man Rob McInnes collaborates closely with technology incubators to realise the value of their assets. The “doyen” operates out of his recently established firm Rob McInnes IP Advisory. Watermark director Leanne Oitmaa is a force to be reckoned with on both sides of the contentious divide; a dual-qualified practitioner whose expertise spans many sectors, she is widely sought-after. Matthew Ward recently departed Shelston IP to set up Forward Intellectual Property; he focuses on building patent portfolios for start-ups, with a view to commercialising their assets in the long term.
- Grant Fisher - Corrs Chambers Westgarth
- Sue Gilchrist - Herbert Smith Freehills
- Philip Kerr - Allens Patent & Trade Mark Attorneys
- Wayne McMaster - MinterEllison
- Shaun McVicar - Herbert Smith Freehills
- John F Collins - Clayton Utz
- Robert Cooper - MinterEllison
- Rebekah Gay - Herbert Smith Freehills
- Odette M Gourley - Corrs Chambers Westgarth
- Richard Hamer - Allens Patent & Trade Mark Attorneys
- Kate Hay - Corrs Chambers Westgarth
- Shyama Jayaswal - MinterEllison
- John Lee - Gilbert + Tobin
- Sarah Matheson - Allens Patent & Trade Mark Attorneys
- Kim O'Connell - King & Wood Mallesons
- Jane Owen - Bird & Bird LLP
- Ian Pascarl - Davies Collison Cave
- Robynne Sanders - DLA Piper
- Patrick Sands - Herbert Smith Freehills
- Kellech Smith - Ashurst Australia
- Matthew Swinn - King & Wood Mallesons
- John Swinson - King & Wood Mallesons
- Lisa Taliadoros - Jones Day
- Nicholas Tyacke - DLA Piper
- Derek Baigent - Griffith Hack
- Gary Cox - Wrays
- Stuart D'Aloisio - Ashurst Australia
- Paul Dewar - Davies Collison Cave
- John Fairbairn - MinterEllison
- Nina Fitzgerald - Ashurst Australia
- David Fixler - Corrs Chambers Westgarth
- Richard Hoad - Clayton Utz
- Jonathan Kelp - MinterEllison
- Khajaque Kortian - Spruson & Ferguson
- James Lawrence - Mills Oakley
- Lynne Lewis - Bird & Bird LLP
- David Longmuir - Phillips Ormonde Fitzpatrick
- Glenn McGowan QC - Gadens
- Melissa McGrath - Mills Oakley
- Leanne Oitmaa - Watermark
- Chris Schlicht - Phillips Ormonde Fitzpatrick
- Stephen Stern - Corrs Chambers Westgarth
- Chris Williams - Gilbert + Tobin
- Michael Williams - Gilbert + Tobin
- Anthony Alder - Alder IP
- Hayden Barke - Argon IP
- Karen Bentley - FPA Patent Attorneys
- Chris Bird - FPA Patent Attorneys
- Janelle Borham - Griffith Hack
- Richard Brown - Davies Collison Cave
- Michael Caine - Davies Collison Cave
- James Cherry - FPA Patent Attorneys
- Michael Christie - MinterEllison
- Andrew Clarke - Innofy
- Michael Cooper - Cooper IP
- Gary Cox - Wrays
- Daneta Crump - FPA Patent Attorneys
- Adam Denley - FPA Patent Attorneys
- Jeremy Dobbin - FB Rice
- John Dower - FPA Patent Attorneys
- Ray Evans - Phillips Ormonde Fitzpatrick
- Linda Govenlock - Allens Patent & Trade Mark Attorneys
- Tom Gumley - FPA Patent Attorneys
- Carl Harrap - FPA Patent Attorneys
- Paul Harrison - Shelston IP Pty Ltd
- Rachel Hooke - FB Rice
- David Hughes - Griffith Hack
- Saskia Jahn - Phillips Ormonde Fitzpatrick
- John Landells - FB Rice
- Nigel Lokan - MinterEllison
- Brett Lunn - FB Rice
- Adam Luxton - Spruson & Ferguson
- Paul Mahony - Blackwattle IP
- Ross McFarlane - Phillips Ormonde Fitzpatrick
- Connie Merlino - FB Rice
- Nick Mountford - Griffith Hack
- Stephen O’Brien - Madderns
- Jenny Petering - FB Rice
- Bill Pickering - Davies Collison Cave
- Simon Potter - Spruson & Ferguson
- Katherine Rock - Innofy
- Ian Rourke - FB Rice
- Grant Shoebridge - Shelston IP Pty Ltd
- Rosie Stramandinoli - Griffith Hack
- Justin Sweetman - HopgoodGanim Lawyers
- Matthew Ward - Forward Intellectual Property
- David Webber - Davies Collison Cave
- Greg Whitehead - Shelston IP Pty Ltd
- Kieran Williams - Shelston IP Pty Ltd
- Scott Bouvier - King & Wood Mallesons
- Rob McInnes - Rob McInnes IP Advisory
- Jeff Bergmann - Solubility Pty Ltd
- Chris Bevitt - Shelston IP Pty Ltd
- Catherine Boxhall - Integra Law
- Anita Cade - Ashurst Australia
- Peter Francis - FAL Lawyers
- Tom Gumley - FPA Patent Attorneys
- Jenni Lightowlers - FAL Lawyers
- Nicole Reid - MinterEllison
- Eddie Scuderi - Corrs Chambers Westgarth
- Kristin Stammer - Herbert Smith Freehills
- Amalia Stone - Herbert Smith Freehills
- Frances Wheelahan - Corrs Chambers Westgarth
- Chris Williams - Gilbert + Tobin
- Andrew Wiseman - Allens Patent & Trade Mark Attorneys
- Wayne M Condon - Biopharmalex
- Rodney De Boos - Davies Collison Cave
- Richard B Jarvis - Davies Collison Cave
- Anthony Muratore - Jones Day