John is a partner in Gilbert + Tobin’s Intellectual Property group and heads up our market leading patent sub-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.
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.
John’s experience includes advising:
- Aristocrat v Commissioner of Patents - This was a comprehensive finding in Aristocrat’s favour upholding the patentability of EGMs. The outcome John achieved has been described as “a rare victory” in the very contentious area of patentability of computer related inventions.
- BASF (Ciba Specialty Chemicals) v SNF Australia - A long-running patent litigation relating to a mining technology. John’s client, the German chemical company BASF has 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 has multi-jurisdictional reach with parallel actions in Canada and China and John has provided strategic oversight.
- REC Technologies - Representing this global manufacturer of solar cell technology in defending Federal Court patent infringement claims brought by Korean company Hanwha.
- 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.
- Advising ResMed on multi-jurisdictional patent litigation contrary to Fisher & Paykel.
- EnGeneIC - Representing Australian biotech company EnGeneIC in relation to a patent dispute regarding mini-cell technology.
- 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 contentious IP lawyer.
Recognised in the Intellectual Property Law category.
Recognised as a Next Generation Partner (Intellectual Property).
Recognised as IP Partner of the Year.