John Lee
PartnerBiography
John is a partner in Gilbert + Tobin's Tech + IP group and leads our market leading Patent practice.
John’s unique combination of legal and technical qualifications enables him to practice at the forefront of IP law. He has many years’ experience dealing with all aspects of intellectual property law with a particular focus on patent litigation and trade secrets across a range of industries including life sciences, resources, and digital technologies.
Recently, in a highly significant development in Australian patent law, John has succeeded in taking a patent eligibility case to the High Court of Australia.
John has had outstanding success in Federal Court litigation in recent years and clients highlight his expertise in “complicated patent cases” in addition to his "attention to detail and excellent communication" (Chambers). Commentators have noted “John Lee and his team are focused on the needs of the client to an exceptional extent; they always get the job done” (Legal 500).
He has lectured extensively at a number of universities on a range of intellectual property subjects and is a graduate of the Australian Institute of Company Directors.
John has a Bachelor of Laws (Hons) and a Bachelor of Science (Biochemistry) and is also a registered Patent Attorney.
Experience
John’s experience includes advising:
- Aristocrat v Commissioner of Patents –This case is the leading authority in Australia on the highly contentious area of patent eligibility. John’s client Aristocrat, the leading Australian patent filer, has taken the case to the High Court to be heard in mid 2022. In a very rare occurrence, the High Court granted leave to appeal on the papers.
- REC Technologies – Representing a global manufacturer of solar cell technology defending Federal Court patent infringement claims brought by Korean company Hanwha. A multi-faceted litigation over a highly complex technology which involves managing cross-border issues - corresponding proceedings on foot in the US and Germany.
- Xero v Factor Financial – A long running and successful entitlement dispute regarding John’s client Xero’s patents over a financial tool.
- BASF (Ciba Specialty Chemicals) v SNF Australia – A high stakes patent litigation relating to a mining technology. John’s client, the German chemical company BASF succeeded at every stage of this patent infringement case against SNF including at first instance in the Federal Court, on appeal to the Full Court and in resisting special leave to the High Court. This complex and hard-fought litigation had multi-jurisdictional reach with parallel actions in Canada and China.
- IP Transactional and Regulatory Projects – John regularly advises on IP and regulatory issues arising in transactions and in ongoing compliance regimes. John has extensive experience advising on IP strategy and commercialisation and with the TGA, Pharmaceutical Benefits and Defence Export regimes.
- Aristocrat v Konami – A successful patent infringement claim brought by Aristocrat against a competitor in relation to Aristocrat’s critical Hyperlink technology. Aristocrat succeeded at first instance and unanimously on appeal. The case is now in the quantum phase for assessment of the damages payable to Aristocrat.
- John has been active in establishing Gilbert + Tobin’s g+t<i> group including coordinating filing of patent applications for some of the firm’s legal technology innovations.
Awards and Recognition
Recognised as leading practitioner in Intellectual Property: Patents
Recognised as a Leading Individual for Intellectual Property
Winner: Intellectual Property Partner of the Year
"John is extremely sound on legal strategy and tactics, and is very commercial in his approach".
“He transcends the legal role to play a business adviser role as well”; “Clients underline his ‘outstanding client service, in-depth technical knowledge and understanding, communication and the ability to simplify complex matters’”.
“John Lee is an impressive lawyer who goes above and beyond to deliver results and meet the needs of his clients.”