“One client described her working relationship with the firm as ‘excellent’, adding it is ‘responsive, commercial and proactive’". Managing Intellectual Property 2013
The IP Practice
Gilbert + Tobin’s Intellectual Property (IP) practice is one of Australia’s leading IP practices. We aim to be at the forefront of IP legal services in Australia, engaged in the most complex cases for clients for whom IP issues are critical to the success of their business.
“Gilbert + Tobin’s IP team is consistently engaged in the nation’s most newsworthy cases.” Managing Intellectual Property 2011
With a national focus, offices in Sydney, Melbourne and Perth and specialists across the range of IP disciplines, we have the capacity to provide the highest levels of service.
Sources say “We are very impressed by the team’s strategic approach, expertise and ability to provide advice in a timely manner.” Chambers 2012
We cover the spectrum of intellectual property issues, including copyright, patents, brand protection and trade marks, false advertising, breach of confidence, database protection, commercial IP licensing, product liability and anti-counterfeiting.
“Acknowledged for “winning lead roles on a number of milestone IP cases… Clients and peers describe the team as ‘standout’, ‘exceptional’ and ‘present on all the high profile cases’.” Managing Intellectual Property 2010
We have a dedicated 25 lawyer team that practices exclusively in IP law. All of our partners are ranked as leading Australian IP lawyers in the legal directories including Chambers, Managing Intellectual Property, Asia Law and PLC Which Lawyer.
“I think the depth of knowledge of the law is second to none,” says a litigation client of Gilbert + Tobin. Managing Intellectual Property Handbook 2011
Our clients include a wide range of Australian and international companies in fields as diverse as consumer electronics, content, entertainment, software, FMCG, mining and financial services. Common to these retainers is the need to provide sound strategic advice, robust representation in proceedings and unswerving focus on client commercial objectives.
IP is our passion and we publish extensively in the field, deliver papers at leading IP conferences and training to the next generation of IP practitioners and law students.
We are the market leader in copyright. With the largest team of lawyers dedicated to copyright law expertise in the country, no other firm can match our knowledge of copyright, our experience in copyright litigation in Australian Courts and our capacity for providing strategic copyright advice across the spectrum of copyright works and subject matter.
In the last decade we have run some of the most important cases in copyright law, including Roadshow v iiNet (High Court), Nine Network v IceTV (High Court), Cooper v Universal Music (Full Federal Court) and Universal Music v Sharman Networks (the “Kazaa case”). These cases set the benchmarks in Australia for issues such as the right of communication, authorization in the digital environment and originality in copyright works.
We also have one of the most active practices in the Copyright Tribunal, having acted in major proceedings for the recording industry involving the rate setting for performances and exploitation of sound recordings in nightclubs, gymnasiums, commercial radio and television broadcasts. In 2011 we also brought a landmark Constitutional challenge in the High Court against the cap on royalties payable by commercial radio broadcasters and the ABC.
We have grown a substantial practice in patent litigation in the last 5 years and it continues to expand. At any given time we act in a number of infringement proceedings before the Federal Court across the country, and are frequently engaged to ensure that major IP litigation expertise and strategy is applied to patent subject matter.
Our patent litigation team is engaged in work in a range of industries including industrial packaging, consumer electronics, the internet and mining. We also have substantial expertise in claims involving innovation patents and the strategic options facing patentees to secure their rights in the short and medium terms. This expertise includes patent portfolio review, strategic patent filing advice and patent licensing support services.
Our commercial IP expertise includes advice on the commercialisation of IP rights and draft commercial IP agreements including complex IP and technology licences and assignments. We stand out in the market for our commercially focused and practical approach and are routinely called on to advise on the IP aspects of complex corporate and commercial transactions, IP asset review, risk assessment and transaction documentation.
Brand protection and trade marks
We are a major force in brand protection and have acted in some of the largest brand and advertising challenges run in this country. Our track record in successfully challenging false advertising campaigns, or defending those under challenge, is amongst the best in the Australian market. We have a capacity to bring urgent applications that few can match.
We have a broad brand and advertising services offering, based on our expertise in unfair competition and false advertising cases involving claimants and respondents in the electronics, telecommunications, publishing and FMCG industries, in relation to television, print and online advertising.
Our trade marks practice manages significant brand portfolios both locally and overseas and provides advice on all aspects of brand protection (trade marks, designs, domain names, company and business names), enforcement and brand recovery. We have a broad range of clients in the media, entertainment, FMCG, telecommunications, health services, retail, software and financial services industries.
Partners and Special Counsel
Other Team Members
Frances St John