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

Allens Arthur Robinson once again had another strong year in IP. The national firm advised sanofi-aventis in response to Apotex applying to the Federal Court of Australia for revocation of a sanofi-aventis patent in respect of its drug Plavix. The team helped the client cross claim for infringement and applied for an interlocutory injunction restraining Apotex from launching its generic version of clopidogrel.

Another high profile matter was advising IBM in Federal Court proceedings brought by the Commissioner of Taxation. The proceedings focused on a detailed analysis of intercompany licensing arrangements under which IBM’s Australian subsidiary pays its US parent certain fees. This landmark case is likely to impact on future licensing arrangements of multinational companies operating in the Australian technology market.

Davies Collison Cave is highly regarded for its “outstanding work in the IP sector”, says one competitor. “It is the only firm I go to when it comes to IP matters,” adds a client.

The firm advised Kmart Corporation and Kmart Australia in a Federal Court proceeding in relation to Kmart’s registered trade marks and alleged misleading and deceptive conduct by K Marketing.

Another highlight was acting for VIP Plastic Packaging, the owner of Australian Standard Patent, in Federal Court proceedings against BMW Plastics in which VIP alleged that BMW Plastics had infringed the patent. BMW Plastics cross claimed, seeking revocation of the patent.

“Freehills provides solid and reliable IP advice,” says one client. The firm’s history acting on high profile IP transactions has earned its IP practice praise as “a safe and reliable pair of hands providing very good, sensible, commercial advice”.

A highlight for the firm was advising Australian General Practice Network on a misleading and deceptive conduct passing off action brought by Primary Health Care against the firm’s client and others. This was in relation to Australian General Practice Network’s proposal to change its name to ‘Australian Primary Health Care Network’.

One client says Gilbert + Tobin’s “deep understanding of IP law, quality of service and advice, and commitment to relationships” is what sets it apart and why it is consistently ranked among the best IP firms in Australia.

The team acted for the major motion picture companies and Village Roadshow against Australian ISP, iiNet. This involved allegations that the ISP was liable for the infringement of copyright that was taking place on its network through the use of BitTorrent by users of iiNet’s internet access services.

Another highlight was acting for the Phonographic Performance Company of Australia on litigation concerning the setting of rates for the public use of certain sound recordings. This included proceedings concerning royalties’ payable by commercial television broadcasters in Australia.

Mallesons Stephen Jaques’ “first class technical IP service” retains its top tier status this year. Clients note the team’s “good reliable advice” and “exceptional services that reach world class standards”.

Peers in the field also praise the Mallesons team for its “technical knowledge and commercial awareness”.

The team advised CSIRO on the structure of its global licensing agreements for Ultrabattery technology, and drafted agreements that implement licensing arrangements for improvements to the technology that may be developed by CSIRO and its licensees.

Another notable deal was advising Medrad Inc and Imaxeon in a patent infringement action that included an application for urgent interlocutory relief.

“The individuals at Blake Dawson are very knowledgeable and have excellent standards”, says one client. “The IP team is able to draw upon other practices to combine efforts with the dispute resolution team.”

Partner Melinda Upton is “exceptionally knowledgeable on a wide range of IP matters and is a fantastic communicator”, adds another client.

The firm advised on the IP aspects of the 10 year agreement between Coca Cola Amatil (CCA), Beam Global Spirits and Wine Inc for the manufacture, sales and distribution of the Beam premium spirits portfolio in Australia.

Clayton Utz’s ability to provide “excellent and relevant trade mark law advice” keeps this premier firm in the upper echelons, says one client. “The firm’s IP team finds innovative solutions to complex problems.”

The firm houses a team full of talented individuals, including partner John Collin who “tailors his advice to address our business and strategic business requirements”, says another client.

The firm advised Free TV Australia in Copyright Tribunal proceedings commenced by Phonographic Performance Company of Australia. PPCA grants licences on behalf of record labels and Australian recording artists. The proceedings related to a licensing scheme for the television broadcast of commercial sound recordings in Australia.

The team was also acted for Amgen in defending patent revocation proceedings brought by Hospira concerning a patent owned by Amgen.

Corrs Chambers Westgarth has had another busy year advising clients on how to prevent the misuse of patents and trade marks.

The team acted for British American Tobacco as part of an international team protecting BAT’s IP rights against encroachments likely to occur as a result of planned generic labelling legislation. This international legislation has enormous potential ramifications across a broad range of industries and the team helped BAT to provide protection on its labelling rights.

Another highlight was acting for H Lundbeck A/S in a case relating to the validity of Lundbeck’s patent for Lexapro, a blockbuster anti-depressant patent that was challenged by pharmaceutical companies Alphapharm and Arrow.

IP specialist Griffith Hack confirms its status as “an impressive IP outfit”, says a competitor. Widely acknowledged for its strength in depth, “the firm has a very big team and dedicated specialists for every IP area”, adds a client.

The past year has seen the team advise on a complex patent opposition relating to genetic markers for traits of commercial interest in livestock. This involved Meat & Livestock Australia, Australian Wool Innovation, Dairy Australia, the Cooperative Research Centre for Beef Genetic Technologies and the Cooperative Research Centre for Sheep Industry Innovation. The patent application contains very broad claims which, if granted in their present form, would greatly restrict the application of marker assisted selection in livestock breeding programmes. It would also prevent research directed to the enhancement of commercially desirable traits in livestock animals produced in Australia.

Spruson & Ferguson is the only Australian patent attorney firm with a direct presence in Asia, through associated firm Ella Cheong Spruson & Ferguson. Leading the team is David Griffith, who is described by one client as “the dean of patent and trade mark attorneys”. Griffith is ably assisted by Lee Pippard, who produces “steady work in trade marks,” according to another firm client.

The firm acted for Arbitron in a patent case against Telecontrol Aktiengesellschaft.

Baker & McKenzie is “always on top of the issues, and we find the firm to be not just legal but very commercial with trade mark work”, says one client.

The team advised Bard Australia in relation to regulatory issues associated with the approval, marketing and sale of a market leading medical device product. The matter has involved high level engagement with the Therapeutic Goods Administration and representative associations, and has potential ramifications across the industry.

Norton Rose “understands our business and industry and makes an effort to do so”, says one client. This experienced and dedicated team is “extremely responsive when requested”, adds another client.

Last year saw the team advise Virax Holdings in its licensing agreement with French biopharmaceutical company Transgene SA. The licence grants Virax exclusive access to Transgene’s product being used in clinical trials for treating non small cell lung cancer.

The team at Phillips Ormonds Fitzpatrick last year advised CSIRO Materials Science & Engineering Division’s patent portfolio. Another highlight was advising PopArt and Biba for patent protection.