Practice Expertise

  • Intellectual property
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Areas of Practice

  • Intellectual property
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Profile

I manage the global patent portfolios of a number of ASX and NASDAQ listed biotechnology companies and have extensive experience running patent oppositions before the Australian and New Zealand Patent Offices. I have also been involved in a number of high-profile patent litigation matters in Australia.

Career highlights

I have a Ph.D in the fields of organic chemistry and photochemistry. My doctoral research involved the synthesis of complex organic molecules for studying electron and energy transfer processes. I am the co-author of more than 10 publications in peer reviewed journals, including the Journal of the American Chemical Society.

  • Securing patents for an Australian university that were subsequently licensed and earned substantial royalties for the university
  • Developing and executing a successful global patent strategy to protect a key compound for a listed Australian biotechnology company in the face of a difficult prior art landscape
  • Acting for Bayer CropScience AG and Allergan Inc. in a number of significant Australian patent oppositions
  • Providing technical advice to Bayer Pharma AG in the Australian Yasmin litigation relating to oral contraceptives
  • Providing ownership and inventorship opinions to a range of Australian universities

Awards & recognition

  • Leading patent professional in Intellectual Asset Management 1000 (IAM 1000) 2018, 2019, 2020 and 2021
  • Leading lawyer for Life Sciences – Australia in Expert Guides, 2018 (one of eight listed).

Areas of Practice

  • Intellectual property

Professional Career



Articles

  • Is your business overlooking opportunities to gain a market advantage over competitors?

    Businesses can gain a competitive market advantage by identifying potentially patentable innovations at a very early stage in the development process.

  • Sequenom patent found valid and infringed in Australia

    Diagnostic methods which involve the practical application of a natural phenomenon remain patentable in Australia.

  • What the Rokt decision tells us about patent eligibility for software inventions
    In a significant ruling, the Full Court has again weighed in on the patent eligibility of software inventions, overturning a decision of a single judge of the Federal Court and deciding that Rokt's marketing scheme is not patentable subject matter.
  • Patenting polypeptides in Australia: how broad can you go?
    Two decisions from the Australian Patent Office provide guidance as to the level of disclosure required to support claims directed to polypeptides.
  • Federal Court guidance on the patent claim support requirements

    The Federal Court has ‘raised the bar’ for patent claim support under the new legislative requirements. Any 'inventive' improvement to the product that meets the requirements of the claims may result in the patent being invalid. We discuss the implications of the decision.

  • When a pharmaceutical composition is not a pharmaceutical substance per se

    A pharmaceutical composition comprising a two-part mixture is not a pharmaceutical substance per se and cannot form the basis of a patent term extension.

  • Australia and Europe extend the Patent Prosecution Highway
    IP Australia and the European Patent Office have extended the Patent Prosecution Highway pilot program, enabling applicants to obtain a granted patent faster than would otherwise be the case.
  • Ethical considerations, conflicts, and practical implications: Strawperson Patent Oppositions

    Opposing Australian patent applications using strawperson proxies raises challenges, including conflicts, ethical concerns, and practical implications for attorneys, requiring careful consideration.

  • Australian innovation patents to be phased out
    With innovation patents set to be abolished in Australia, now would be a good time for innovators in all fields to consider whether innovation patents might be a useful part of their patent portfolios.
  • How you can take advantage of Australia's current two-tier patent system before August 2021

    There has been an important change to Australia’s patent system. We discuss strategies that you should implement now to take advantage of Australia’s current system.

     

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