Patents

We offer:

• no learning curve in understanding the issues in new technology and scientific causation issues in patents, so our clients save time and money;
• significant experience in co-ordinating cross-jurisdictional matters; and
• the backing of Australia's premier litigation team.

Patents are one of the strongest available methods of protecting intellectual property rights and are consequently the most commercially valuable. However, this complex area has hurdles and challenges that require specialist legal advice.

Clayton Utz's patents team is made up of patent specialists renowned for their strategic and commercial approach to solving patent law issues. Key members of our patent litigation team have tertiary qualifications in computer science, biochemistry, pharmacology, veterinary science, molecular biology or genetics. Combing our deep knowledge of the law and our non-legal background, we help clients manage, exploit and enforce their patents across all business sectors, including pharmaceutical, medical device, electrical, mining and technology patents.

Our experience ranges from small to large clients, with a particular expertise in international patent protection strategies. We understand the need for co-operation and co-ordination as part of a global approach and are experienced in maintaining a consistent global position. Our clients benefit from the co-ordination and by not reinventing the wheel we can contain their legal costs.

We advise our clients on patent portfolio management and protection strategies, including patent licences and assignments, non-disclosure and confidentiality agreements, research and development agreements, patent co-ownership agreements and non-competition agreements. We also help clients due diligence reviews when they acquire or sell patents.

If litigation is required, our clients have the backing of Australia's premier litigation practice behind them. We advise them on patent validity and infringement issues, providing analysis and opinions on freedom to operate issues, and represent them before the Australian Patents Office and courts in patent infringement and revocation (invalidity) proceedings.

We are also pioneers in crucial aspects of patent litigation, in particular the exploitation of pre-trial applications in the Federal Court of Australia. As a result, patentees which might not be able to prove infringement (as the competing product has not yet been released to the market) can approach the court for an order requiring a possible infringer to give pre-trial discovery of documents to assist the patentee to decide whether the product is likely to infringe its patent.

Recognition 

• Managing Intellectual Property IP Stars: Patent contentious (2019)

Eli Lilly & Company: we acted for Eli Lilly in connection with patent infringement and revocation proceedings for its gemcitabine hydrochloride molecule which forms the basis of its successful anti-cancer treatment branded as GEMZAR. Various generic pharmaceutical companies were looking to introduce competing products which Eli Lilly asserted contravened its exclusive patent rights. These cases dealt directly with the complex interplay of patent rights, Therapeutic Goods Administration (TGA) product registration and Pharmaceutical Benefits Scheme (PBS) listing procedures.

Northern Territory Government v Collins: Clayton Utz successfully defended the Northern Territory Government in one of the very few patent cases to reach our highest court, the High Court of Australia. The case concerned the production of essential oils from trees removed from Crown land pursuant to statutory licences. This matter is significant not only because patent disputes of this type are rarely argued at all, let alone considered by the High Court of Australia, but also because it involves issues of the potential liability of parties for others' patent infringements. The litigation will have a significant impact on the way governments manage their profitable bio-prospecting regimes (the search for chemical compounds from biological resources, which are often used to create pharmaceutical and agrochemical products).

Amgen Inc: we are representing Amgen in defending patent revocation proceedings brought by Hospira in the Federal Court of Australia. The patent in question relates to a protein called pegfilgrastim (Neulasta) used to assist in the treatment of neutropenic cancer patients. Related proceedings are being prosecuted in the UK. The matter deals with the validity of a biotechnology patent, the extension of its term and the regulation of biosimilars. There have been few biotechnology patent disputes in Australia and this matter could give rise to one of first Federal Court judgments in the area. Our involvement demonstrates our breadth of expertise in advising the life sciences industry in matters dealing with complex scientific and intellectual property issues.

Major global pharmaceutical company: advised our client on the appropriate patents to be referenced under the new Pharmaceutical Benefits Scheme Reforms. This matter was significant because the new reforms mandate price reductions for certain major pharmaceutical products by reference to remaining patent life. There was disagreement as to which patents should be referenced and our team managed to convince the Government that it had chosen the incorrect patent. It also generated substantial benefits in excess of US $200 million to our client over ten years.

Genetic modification: we acted in pioneering patent litigation in the Federal Court relating to patents for the genetic modification of cotton and corn plants. This matter was part of worldwide litigation involving the same suite of patents.

Medical device company: we advised a medical device company on certain issues arising as a result of litigation concerning patents for its dialysis machines.

Equine worming: Federal Court proceedings appealing a decision of the Patents Office concerning an equine worming preparation.

Erythropoietin: we provided expert witness assistance in relation to a US patent dispute relating to erythropoietin.

Osteoporosis and bone disorders: we advised a large US pharmaceutical company regarding pharmaceutical patents directed to treatments for osteoporosis and bone disorders.

Ophthalmic technology: we represented an Australian company with respect to cutting-edge patented ophthalmic technology.

Plant breeders rights: we represented a US university and advised in relation to the commercialisation and management of its plant breeders rights in Australia.

Mechanical patent matters: advised on a number of mechanical patent matters concerning machinery and components in relation to air conditioning systems and ducting for power stations.

Pre-paid call access information technology system: Acted in a patent infringement action brought in the Federal Court of Australia for infringement of an Innovation Patent directed to a real time pre-paid call access information technology system.

Mineral processing equipment: Advised on patent and copyright infringement issues concerning mineral processing equipment.