Patents

Gilbert + Tobin has a highly respected and award-winning patent practice that combines a strong and commercially focussed advisory and litigation practice with in-depth technical and industry knowledge. The majority of our patent team have technical and scientific qualifications.

Our Approach

Our patent team aims to constantly challenge themselves and the “accepted” approach to patent litigation. Each project is different and deserves its own strategy.

We approach patent litigation with a clear strategy, goal setting, action plans and by taking strong interlocutory and procedural action to deliver results. We use novel ways to get the best for our clients as opposed to the accepted usual ways of litigating. We work with the leading patent counsel in Australia and are used to working on cross-border patent litigation and as part of multi-national teams.

Patent litigation demands excellent project management skills. From our experience acting on significant transactions, we are adept at managing complex, multi-faceted patent cases and balancing the demands of multiple stakeholders. Our experience enables us to save considerable time and resources in identifying and addressing the core issues in what can be a complex matrix.

Our experience includes advising:

  • Encompass Corporation and SAI Global: advising Encompass, a leading financial services startup along with its exclusive licensee, SAI Global, in patent infringement and validity proceedings regarding our clients’ online search technology brought against SAI Global’s main competitor, InfoTrack. This case is one of the most significant cases affecting software patents in decades. The appeal in the case attracted a rare enlarged five-member judicial bench to determine the eligibility of the software under Australian patent law.
  • BASF: advising BASF, the world’s largest chemical company, on its long standing, highly contentious multi-jurisdictional patent litigation against SNF Australia. The patents in issue relate to chemical technologies in the mining and resources space. The broader case has numerous limbs including several Federal Court patent cases as well as Australian Patent Office oppositions. There have been 12 substantive decisions throughout the history of the case and BASF has succeeded on every occasion.
  • Imdex: advising subsidiaries of Imdex, Australian Mud Company and Reflex, a leading manufacturer of core orientation mining tools in Australia, in successfully conducting a patent enforcement program in respect of its mineral exploration technologies.
  • Aristocrat Technologies: Aristocrat, an international gaming company, has one of the largest patent portfolios in Australian. We have partnered closely with Aristocrat on successful strategies for leveraging and enforcing its IP as well as advising on the protection of its IP rights in relation to its blockbuster games Hyperlink and Lightning Link.
  • Clinical Laboratories: defending Clinical Laboratories from claims of patent infringement in relation to its use of Ariosa, Inc.’s “Harmony” prenatal test by Sequenom, Inc., which offers the competing “MaterniT21” genetic test.
  • ResMed: advising ResMed, a global medical devices company, on multi-jurisdictional high stakes patent infringement litigation against key competitor, Fisher and Paykel.
  • EnGeneIC: advising EnGeneIC, an award winning Australian biotech company, on the commercialisation of its proprietary EDV™ nanocell platform for the targeted delivery of chemotherapeutics and functional nucleic acids in cancer.
  • KKR: advising KKR in relation to IP and TGA regulatory issues in its acquisition of Laser Clinics Australia's non-invasive aesthetic treatments business for AUD650m. This involved the TGA on the regulatory aspects of the transaction, including providing technology-based patient consultations for schedule 4 (prescription only) cosmetic injectables.
  • Ansell: advising Ansell on TGA regulatory and patent litigation issues during the divestment of Ansell’s sexual wellness business for AUD800m.

Michael Williams awarded IP Partner of the Year

Lawyers Weekly 2019

“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.”

IP Stars 2019

"The lawyers have been very accommodating with the sharp time-zone differences when dealing with clients from another country. I found the team to be highly competent, professional and personable. Aspects of Australian law have been very clearly and succinctly explained."

Chambers Asia- Pacific 2019

Gilbert + Tobin "has built an expert team of lawyers for litigation and patent defence’, which ‘works at a fantastic pace to meet all deadlines".

Legal 500 2018

John Lee awarded IP Partner of the Year

Lawyers Weekly 2017