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.

Our Approach

Our patent lawyers aim 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 Australia’s leading patent counsel and regularly work as part of multi-national teams on cross-border patent litigation. and. The majority of our team have technical and scientific qualifications.

Patent litigation demands excellent project management skills. Our patent law experts 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 patent lawyers’ expert experience includes advising:

  • Calidad Pty Ltd in their successful special leave application to the High of Court of Australia in relation to the issue of exhaustion of patent rights for the first time in 112 years. The matter concerns the complex doctrinal issue of whether patent rights are exhausted on first sale to the market. Equivalent decisions of the US Supreme Court, the UK Supreme Court define the scope of patent rights in those markets.
  • Aristocrat Technologies, an international gaming company, on strategic patent management and enforcement, including in Aristocrat Technologies v Konami Japan - the longest running and the highest value patent damages case in Australia; and on the protection of its IP rights in relation to its blockbuster games, Hyperlink and Lightning Link.
  • Encompass Corporation and 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, the world’s largest chemical company, on its long standing, highly contentious multi-jurisdictional patent litigation against SNF Australia. The patents in issue related to chemical technologies in the mining and resources space. The broader case had numerous limbs, including several Federal Court patent cases as well as Australian Patent Office oppositions. There were 12 substantive decisions throughout the history of the case and BASF has succeeded on every occasion. We were able to settle the matter on a confidential basis.
  • Imdex, a leading manufacturer of core orientation mining tools in Australia, in successfully conducting a patent enforcement program in respect of its mineral exploration technologies.
  • Clinical Laboratories in patent infringement proceedings in relation to its use of Ariosa, Inc.’s “Harmony” prenatal test by Sequenom, Inc., which offers the competing “MaterniT21” genetic test.
  • ResMed, a global medical devices company, on multi-jurisdictional high stakes patent infringement litigation against key competitor, Fisher and Paykel.
  • 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 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 on TGA regulatory and patent litigation issues during the divestment of Ansell’s sexual wellness business for AUD800m.

Intellectual Property Team of the Year – winners 2020, 2017, 2015

AUSTRALIAN LAW AWARDS

Ranked Highly Recommended for Transactions and Silver for Litigation

IAM Patent

Ranked Tier 2 for Patent Contentious

IP Stars

Clients commend the team’s “pragmatic approach, clear and prompt communication, and ability to handle the most difficult matters”. “G+T lawyers treat client relationships as a genuine and equal partnership in which they invest the time to understand the business, people and culture of the client, and so the legal solutions offered to clients are invariably tailored to each business. Responses to enquiries are almost instant and the work is always of the highest quality, which makes the firm’s fee quite reasonable.”

IAM PATENT 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

Finalists - Best patent contentious firm and Best IP transactions advisory firm

MANAGING IP AWARDS – ASIA 2020