Asialaw Profiles
The Guide to the legal markets of the Asia-Pacific

Allens Arthur Robinson maintains its position at the summit of IP law in Australia thanks in no small part to its depth of knowledge and expertise across various industries. Offering the full range of IP services to clients of the calibre of Pfizer, Australia Post and Viater Medical, the firm continues to develop its prosecution department.

In the last year, Singapore-based renewable energy company Atlantis Resources Corporation asked the firm to manage and protect its patent rights for underwater power generative systems across 45 jurisdictions. Allens also advised recent client MySpace on issue such as the ownership of information and branding within the new digital environment. Other work from the News Corporation subsidiary includes registering a trade mark portfolio in Australia and drafting specifications for new trade mark applications.

Key practitioners at the firms include Jackie O’Brien (who led the team for MySpace), Richard Hamer (for his science background), the very experienced Jim Dwyer, Andrew Wiseman and practice head Phillip Kerr. Consultant Michael Dowling is a past executive president of AIPPI.

The IP department at Gilbert + Tobin is split into four dedicated practice areas: patents; copyright; trade marks, designs and domain names; and commercial IP. Housing particular strength on patents and copyright, the firm also benefits from its high tech roots and is active advising clients on anti-counterfeiting, high tech investigations and internet based work.

Key clients of the practice include AGL, Aristocrat Technologies Australia, EMI Music Australia, Google Group, Motion Picture Association, Red Bull and Wyeth Pharmaceuticals.

Gilbert + Tobin acts for EMI on all of its digital music deals, and recently drafted and negotiated a full suite of licence agreements with EMI’s digital music partners. The firm also successfully acted for FOXTEL in a major claim against smart card programmers and pirate equipment providers. This tested the rights of pay-tv providers to protect encoded broadcasts and was one of the first uses of the broadcast decoding device provisions in Australia’s Copyright Act.

Partner Michael Williams heads the five-partner department, and recently acted for the leading film studios in their landmark copyright infringement case against an Australian ISP (iiNet). He also advised Nine Network in its long running case against IceTV in the High Court on copyright protection in compilations and databases.

Other leading lawyers include Anthony Muratore, Lisa Lennon and Michael Argy.

Mallesons Stephen Jaques is at the forefront of IP developments in Australia, with its team of litigators, patent and trade mark attorneys and lawyers advising across a broad range of sectors including pharmaceuticals, biotechnology, IT, media and communications, food and beverage, and marketing.

Key clients of the group include Tesltra, Microsoft, Cadbury Schweppes and Nestlé. Significant work for Telstra over the last year includes copyright tribunal proceedings concerning copyright collecting society APRA|AMCOS and its proposed licensing scheme for digital music downloads. With the matter expected to be set down for a final hearing at the end of 2009, the proceedings will have substantial implications for the long term viability and operation of the digital music industry in Australia.

Another important case has been the firm’s representation of Cadbury Schweppes in its long running proceedings concerning Darrell Lea’s use of the colour purple on the packaging of its chocolate confectionery products. Mallesons argued that consumers were likely to be misled or deceived in breach of section 52 of the Trade Practices Act. The decision, which is pending, will clarify certain legal principles about the role of reputation in actions for passing off / misleading and deceptive conduct.

The 14-partner national team includes the highly regarded Maurice Gonsalves, Cheng Lim and Katrina Rathie.

Blake Dawson’s IP practice offers clients the complete range of contentious and non-contentious specialist services and is know to be extremely commercial and solution focused. On the trade marks side, the firm manages portfolios for such brands as Condé Nast Publications Australian and Qantas Airways. And it has more recently been instructed by Burger King, HSBC and Rolex – while AstraZeneca appointed the firm to its IP advisory group this year.

On the patent litigation side, Blake Dawson recently finished more than nine years of representation for subsidiaries of Swedish medical technology and healthcare group Gambro and Gambro Lundia in a settlement with Fresenius Medical Care Australia.

Respected team members include Lisa Ritson, Peter Chalk and Ben Miller.

The IP practice at Clayton Utz has suffered the departures of Peter Knight and Anna Sharpe, who both retired from the partnership in January 2009, but remains one of the best around. Providing both front-end and back-end advice, the firm specialises in all aspects of IP law, passing off and Trade Practices Act claims and related commercial disputes, and now houses a dedicated trade marks group.

Key clients of the practice include Eli Lilly & Company, Astrazeneca, Weatherford International, Free TV Australia and Racing Victoria.

The highlight of its patent litigation work is undoubtedly its work for Eli Lilly concerning patent infringement and revocation allegations for the company’s gemcitabine hydrochloride molecule. This forms the basis of its successful anti-cancer treatment GEMZAR, and the case deals directly with the complex interplay of patent rights, product registration and PBS (Australia’s Pharmaceutical Benefits Scheme) listing procedures.

A significant copyright tribunal dispute is the firm’s instruction by Free TV Australia in proceedings commenced by Phonographic Performance Co of Australia, which represents the interests of record labels and Australian recording artists. The proceedings relate to a licensing scheme for the television broadcast of commercial sound recordings in Australia, and this will be the first determination of such a scheme by the Copyright Tribunal.

Practice head John Collins is advising on the Eli Lilly case. Other star performers include John Fairbairn and Kate Marshall.

Sue Gilchrist is the practice area leader of Freehills’ IP litigation, and patent and trade mark groups and enjoys an excellent reputation. The firm continues to act for Glaxo SmithKline and Biochem Pharma Inc in a series of cases in the Federal Court and the Patent Office concerning compounds used in the treatment of the AIDS virus. And it is advising Deutsche Bank on the licensing and IP aspects of its investment in Redfern Photonics. Despite the recent loss of senior partner Anthony Muratore to Gilbert + Tobin, the firm has strength in depth with other leading lawyers including Tom Gumley, Kristin Stammer and Frances Drummond.

The practice at Baker & McKenzie is very highly regarded, particularly for trade marks, anti-counterfeiting and enforcement. The firm can cite numerous high profile brands as clients. For example, Mars’ Asia-Pacific instructs the firm with its trade mark portfolio in addition to all of its IP work in Australia. Other clients such as Macquarie Bank and Pfizer have similarly sought out the practice to manage their marks. Practice head Robert Arnold is well respected, with his previous tenure in Asia giving the firm an edge.

Corrs’ profile in IP is on the rise and its 12-partner team is led by the well respected Stephen Stern. The firm can boast an impressive client list, which includes Louis Vuitton and Blackberry (RIM), while the likes of Johnson & Johnson and Foster’s have trusted Corrs with their strategic IP work for decades. Work over the last year includes its role on the Lundbeck Lexapro case, which involved the consideration of enantiomer patents, how extensions of term of such patents are to be calculated, and the consideration of the non-literal infringement of chemical process patents.

Though boosted by the February 2008 arrival of Ian Pascarl from Blake Dawson, IP boutique Davies Collison Cave has long been known for its strength in depth. One of the larger practices in Australia, the firm has a lot of experience in taking IP issues to the Federal Court. Recent work includes advising US-based Hanson Beverage Company through an ultimately successful passing off action against local drinks maker Bickfords. The firm also worked on a copyright infringement case brought by Polo Ralph Lauren against Ziliani Holdings. In addition to Pascarl, Michael Wolnizer is one of a number of other partners commended by clients.

Another practice that has been active with its lateral hires is Minter Ellison which, in March 2008, lured Lynne Peach across from Mallesons Stephen Jaques. The firm is best known for its outstanding pharmaceutical group. High profile work includes advising John Fairfax Publications on the alleged reproduction of headlines by the Australian Financial Review. And the practice negotiated with the Australian Performing Rights Association on behalf of Google and Fox (MySpace) regarding the latter two’s respective use of music on their websites. Partners Paul Zawa and Charles Alexander give the firm a strong litigation capability.

DLA Phillips Fox

The intellectual property and technology practice at DLA Phillips Fox is led by partner Tony Conaghan and comprises specialists in commercial and litigious IP and franchising. On the latter, the firm recently made a submission to the government’s enquiry into the franchising code of conduct, and Conaghan was requested by the Senate Committee to appear before it and provide oral evidence at the Committee hearing. The firm also advised Pac Mining and CQMS in patent infringement proceedings in the Federal Court in Sydney, where Pac and CQMS were alleged to have infringed two patents. In a judgment delivered on March 4 2009, the Full Federal Court unanimously found that the patents had not been infringed.