David Clark - Blake Dawson

David Clark is a registered Australian and New Zealand patent attorney and practises in intellectual property procurement concentrating on patents and designs. David Clark’s strong practical background in general engineering combined with his vast experience in patent drafting and advice work means that he consistently provides commercially effective patent protection for his clients. His ability to grasp a range of client technologies allows him to quickly identify the key patent issues.

David Clark acts for local and overseas companies with a focus on the physical sciences. David Clark has particular expertise in the fields of mechanical engineering, chemical engineering, materials science, medical devices, gaming and industrial chemistry. His clients include International Game Technology (IGT), Boart Longyear, ANZ, Qantas, Global Valve Technology, Terumo Corporation, Boral, Chubb, CSIRO, Wesfarmers, and GE. David Clark assists clients with patent drafting, filing and prosecution; patent validity and infringement advice; contentious patent work including pre-grant opposition and re-examination; registered design protection; patent due diligence; strategic patent filing advice and patent portfolio management.

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Blake Dawson - Patent claim interpretation by reference to dependent claims

Joe Mok and David Clark of Blake Dawson report on Termite Tite (NZ) No 2 Limited v Term-Seal (Aust) Pty Limited [2007] FCA 1493, in which the Federal Court considered whether it is permissible to interpret a claim for a patent by reference to its dependent claim. The Court also re-affirmed the strict conditions under which prior art may be admitted when invalidating a patent.

According to Joe Mok and David Clark, dependent claims may be used to help construe claims on which they depend, but should not limit the scope of these inherently broader claims. Patentees can be reassured by this decision that the scope of their monopoly as broadly defined by the independent claims is still maintained whether or not dependent claims are included. The decision should also be welcomed by patentees as it demonstrates that prior art can only be admitted under strict conditions when invalidating a patent.

Blake Dawson - Patent claim interpretation by reference to dependent claims

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Blake Dawson IP

Blake Dawson’s Intellectual Property team comprises the foremost legal experts in this field in Australia. Blake Dawson’s award winning team provides a complete range of contentious and non-contentious specialist intellectual property services. Blake Dawson is one of the few Australian law firms which provide a completely integrated full service intellectual property offering. Their team is able to register, commercialise and enforce any intellectual property (IP) right. Blake Dawson’s technical skills in IP to provide the best strategic advice to local and international companies operating in the pharmaceutical, manufacturing, publishing, food, media, financial services, airline, life sciences, chemistry, electronics, computer engineering, mining and engineering sectors.

Chambers Global, 2007 stated that Blake Dawson’s “team has a strong practice across the board”, while Chambers Global, 2006 commented that “Clients get a lot of attention, no stone is left unturned”. Asia Pacific Legal 500, 2006/2007 also noted Blake Dawson’s strong client base: “The firm acts for a long list of companies, including many globally famous brands, as well as government bodies, life sciences organisations and research institutes”. In the Managing Intellectual Property World IP Survey, 2006 the Blake Dawson IP practice received recognition in all categories: patent prosecution, patent contentious, trade mark/copyright contentious, and trade mark prosecution. They have a first-tier ranking in IP, IT and Communications and Media from Asia Pacific Legal 500, 2006/2007 and in PLC Which Lawyer? Yearbook, 2006. Blake Dawson’s life sciences practice has received particular accolades. They are judged to be a leader in Life Sciences (all categories) in PLC Cross-border Handbooks, 2006/2007. Interviewees for Chambers Global, 2007 singled out the life sciences sector as an area of “overwhelming strength” for our practice.

Blake Dawson is one of only three Australian firms listed in the top 20 IP practices in the Global Intellectual Property Super League Tables, 2006. Three of the firm’s IP partners were named in the Legal Media Group Guide to the World’s Leading Trade Mark Law Practitioners, 2007.
Our perspective

Blake Dawson’s Intellectual Property practice offers Australian and international clients a full range of intellectual property services, including:
* Advising on identification, protection and management of patents, trade marks, designs and plant breeders’ rights, and related services such as drafting, filing, prosecution, opposition and strategic portfolio management
* Negotiating and drafting a full range of IP agreements, including agreements regarding commercialisation, research and development, licensing, distribution, franchising, sponsorship, joint venture and international technology transfer
* Advising on copyright, confidential information, passing off and unfair competition
* Enforcing all IP rights, including conducting IP litigation and alternative dispute resolution and developing anti-counterfeiting strategies.
* Advising on marketing, advertising and promotions and on sponsorship and merchandising agreements
* Advising on food, pharmaceutical, therapeutic goods and agricultural and veterinary chemicals regulation.

Blake Dawson’s recent Intellectual Property experience includes:

* World’s first vaccine against cervical cancer - Blake Dawson acted for CSL Limited in the Federal Court of Australia in a dispute concerning the world’s first vaccine against cervical cancer. The dispute was satisfactorily resolved. CSL subsequently successfully applied to the PBAC and federal government to annually vaccinate all Australian females aged 12 and to conduct catch up vaccinations over a two year period.
* Gambro v Fresenius - Blake Dawson acted for Gambro in its long running patent litigation against Fresenius Medical Care relating to haemodialysis systems and disposables in Australia. We represented Gambro in victories on infringement and validity in the Federal Court at first instance and before the Full Court on appeal. We also successfully defended Fresenius’s application for special leave to appeal to the High Court of Australia. Blake Dawson is currently acting for Gambro in the damages phase of the case.
* Conor Med Systems Inc v Angiotech & UBC - Blake Dawson acted for Conor who sought revocation of patents held by Angiotech Pharmaceuticals, Inc and the University of British Columbia over taxol-coated stents in the Federal Court. This was the first case to consider whether the inclusion of an additional patentee, who has no entitlement to the claimed invention, renders the patent liable to be revoked under section 138(3)(a) of the Patents Act 1990.

IP Partners at Blake Dawson

Peter Chalk
David Clark
Belinda Findlay
Grant Fisher
Ben Miller
Mary Padbury
Lisa Ritson

Senior Associates at Blake Dawson

Annika Barrett
Anita Cade
Karen Gettens
Natalie Hazel
Joanna Lawrence
Nik Ramchand
Kellech Smith
Melinda Upton

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Contributory patent infringement considered

Joe Mok, Stephanie Patterson and David Clark of Blake Dawson report on Collins v Northern Territory [2007] FCAFC 152 and highlight the alternative cause of action for contributory infringement when it is difficult or impractical to take action against a direct infringer:

• By majority, the Court decided that the grant of a licence can amount to �supply�, within the meaning of section 117. Of course, whether a particular licence will amount to �supply� will depend on the terms of that licence.
• The majority of the Court has also provided guidance on the meaning of �staple commercial product�. All the judges on appeal noted that, prior to this case, there was virtually no authority on the meaning of this phrase. From the judgments of the four judges who considered the issue in this case, it seems that the relevant considerations will be, first, whether the product has multiple uses and secondly, how readily available the product is.
• The Collins decision highlights the alternative cause of action for contributory infringement when it is difficult or impractical to take action against a direct infringer. For example, it may be more cost effective for a patentee to sue a supplier (rather than multiple end users) where a product is supplied for what later will constitute an infringing use.

Link to Contributory patent infringement considered

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