Tom commonly appears in the Federal Court of Australia in trials and appeals throughout Australia, and from time to time in the Patents Office and Trade Marks Office. He appears for, and advises, a broad range of clients in all kinds of industries including pharmaceutical, mining, automotive, agricultural, information technology/telecommunications, wagering, and fashion.

He has the current highest ranking (band 1) in the Chambers and Partners’ Asia-Pacific Guide for “Intellectual Property: The Bar – Australia” and the highest ranking (preeminent) in the Doyles’ Guide for “Leading Intellectual Property Senior Counsel” in both Australia and Victoria for a number of years: “Leading Intellectual Property Law Senior Counsel – Victoria, 2024”; “Leading Intellectual Property Law Senior Counsel – Australia, 2023".  He has also been ranked in Doyles’ Guide for “Leading Technology, Media & Telecommunications Senior Counsel” in Australia and Victoria.

Tom contributes to IPForum each quarter, is the author of Patent Infringement in Lahores, published by Lexis Nexis, and is often called on to speak at or chair intellectual property seminars.

Background

Prior to joining the law, Tom obtained tertiary qualifications in science and law and earned an honours degree in molecular genetics with a project funded by Florigene Ltd (responsible for the “Blue Rose” and “Long-life carnation” projects) and Melbourne University.

From 1998 to 2003, Tom was a solicitor with Ashurst (then Blake Dawson Waldron), including taking on a six-month secondment at GE Capital.  He became a registered patent attorney and trade marks attorney while with the firm, drafting and prosecuting mechanical and molecular biology patents, and assisting clients in a range of technologies.

At the bar and memberships

Tom has been a barrister of the Victorian Bar since 2003.  He was appointed as a silk in 2016 and as a Queen’s Counsel (now King’s Counsel) in early 2017.  He is also a member of the:

• Institute of Patent and Trade Mark Attorneys (IPTA);
• Intellectual Property Committee of the Law Council of Australia;
• Intellectual Property Society of Australia and New Zealand (IPSANZ);
• International Association for the Protection of Intellectual Property (AIPPI);
• The Board of Directors of List G Barristers.

Publications, teaching and speaking

Tom is the author of the patent infringement chapter for the online and loose-leaf publication of Patent Law for Lexis-Nexis.  Tom also contributes quarterly to the specialist Australian law journal, IP Forum.

Tom has taught post graduate intellectual property subjects at Monash University and Melbourne University.  He has also been invited to speak at, and chair, various patent attorney and lawyer conferences and seminars. 

Selection of cases

Cases in the past few years in which Tom has acted (including recent hearings with reserved decisions), in reverse chronological order:

• ToolGen Incorporated v Fisher (Federal Court hearing in May 2024, decision of Nicholas J reserved) - application to amend patent application regarding CRISPR technology.
• CQMS Pty Ltd v ESCO Group LLC [2024] APO 17; [2023] APO 46; [2023] APO 35; [2023] APO 29; [2023] APO 28; [2023] APO 26; [2023] APO 16; [2023] APO 7; [2022] APO 64; [2022] APO 9; [2022] APO 5; [2020] APO 54; [2020] APO 53; [2020] APO 24; [2020] APO 14; [2020] APO 5 – oppositions to grant of various patents regarding mining equipment, and related disputes.
• Jusand Nominees Pty Ltd v Rattlejack Innovations Pty Ltd & Ors [2024] HCASL 105 – successfully resisted High Court special leave application – patent infringement and validity dispute concerning safety system to protect against falling broken drill rods in underground mining.
• Novartis AG v Pharmacor Pty Ltd (Federal Court hearing in April and May 2024, decision of Yates J reserved) – patent infringement and extension of term/validity dispute concerning patent for sacubitril/valsartan combination drug for heart failure and hypertension.
• ResMed Pty Ltd v Fisher & Paykel Healthcare (Patent Office two-day hearing in March 2024, decision of Delegate reserved) – opposition to grant of a suite of patent applications concerning CPAP masks.
• CDB Goldair Australia Pty Ltd v SharkNinja Operating LLC (Patent Office hearing in March 2024, decision of Delegate reserved) – opposition to grant of patent application concerning double air-friers.
• Confidential party names (arbitration hearing in February 2024, decision reserved) – trade mark licence and validity dispute in dental industry.
• Sanofi v Amgen Inc (Federal Court hearing in November and December 2023, decision of Nicholas J reserved) – appeal from an opposition to grant of a suite of patent applications concerning antibodies to PCSK9 for treating hypercholesterolemia.
• Allied Pumps Pty Ltd v LAA Industries Pty Ltd [2023] FCA 1457 – patent infringement and validity dispute concerning generators used for dewatering pumps on mining sites.
• Jusand Nominees Pty Ltd v Rattlejack Innovations Pty Ltd [2023] FCAFC 178 – patent infringement and validity dispute concerning safety system to protect against falling broken drill rods in underground mining.
• Sanofi v Amgen Inc. (No 2) [2023] FCA 1156 – dispute regarding use of multiple experts and evidence from same.
• Energy Beverages LLC v Kangaroo Mother Australia Pty Ltd [2023] FCA 999 – trade mark validity dispute by owner of MOTHER mark (Energy Beverages) against registration of KANGAROO MOTHER.
• Novartis AG v Pharmacor Pty Limited (No 2) [2023] FCA 963 – interlocutory dispute regarding proposed separate question on validity of patent.
• Novartis AG v Pharmacor Pty Limited [2023] FCA 804 – interlocutory dispute as to discovery.
• ToolGen Incorporated v Fisher (No 2) [2023] FCA 794 – appeal from opposition to grant of patent application over CRISPR gene editing technology.
• Henley Constructions Pty Ltd v Henley Arch Pty Ltd [2023] FCAFC 62 – trade mark validity and infringement dispute over marks comprising the word HENLEY for building and construction services.
• CYC17 v Minister for Immigration, Citizenship and Multicultural Affairs [2023] FedCFamC2G 191 – pro bono immigration law dispute – protection visa.
• BlackSquare Inc v Cracka IP Pty Ltd [2022] ATMO 168 – opposition to registration of trade mark WINE COLLECTIVE in respect of wine.
• Jusand Nominees Pty Ltd v Rattlejack Innovations Pty Ltd [2022] FCA 540; [2022] FCA 867 – patent infringement and validity regarding mining equipment.
• Henley Arch Pty Ltd v Henley Constructions Pty Ltd (No 3) [2022] FCA 408; [2022] FCA 231; [2021] FCA 1369 – trade mark validity and infringement dispute over marks comprising the word HENLEY for building and construction services.
• Brass Homes Pty Ltd v Macasa Homes Pty Ltd (settled March 2022) – copyright infringement and subsistence/ownership.
• Cantarella Bros Pty Ltd v Koninklijke Douwe Egberts B.V. [2022] APO 12 – amendment of patent application regarding hot beverage capsules.
• Biogen International GmbH v Sandoz Pty Ltd (20 December 2021, unreported) – preliminary discovery concerning patent infringement and validity regarding dimethyl fumerate.
• Ariosa Diagnostics, Inc v Sequenom, Inc [2021] FCAFC 101 – infringement and validity of patent concerning pre-natal diagnosis with cell-free foetal DNA.
• Janssen Sciences Ireland Unlimited Company v Juno Pharmaceuticals (for hearing in June 2021, settled) – patent infringement and validity regarding darunavir.
• Taxiprop Pty Ltd v Neutron Holdings Inc [2020] FCA 1565; [2020] FCA 1822; [2021] FCA 274 (trade mark infringement and validity – LIME for transport services);
• Mylan Health Pty Ltd v Sun Pharma ANZ Pty Ltd [2020] FCAFC 116 (3 July 2020) (patent infringement and validity – fenofibrate);
• Regeneron Pharmaceuticals, Inc. v Kymab Limited [2019] APO 36 (31 July 2019) (opposition to patent concerning mouse models for antibody production);
• Liberation Developments Pty Ltd v Lomax Group Pty Ltd [2019] FCA 1180 (30 July 2019); [2019] FCA 2059 – infringement and validity of patent concerning hoarding systems.
• Technological Resources Pty Limited v Tettman [2019] FCA 1889 – patent validity for mining equipment.
• Sequenom, Inc. v Ariosa Diagnostics, Inc. [2019] FCA 1011 – infringement and validity of patent concerning pre-natal diagnosis with cell-free foetal DNA.
• InterPharma Pty Ltd v Hospira, Inc (No 5) [2019] FCA 960 – infringement and validity of patent concerning drug, dexmedetomidine.
• Juno Pharmaceuticals Pty Ltd v Millennium Pharmaceuticals, Inc [2019] FCA 526 (16 April 2019) – application to withdraw admission in patent infringement and validity case concerning drug, bortezomib.
• Mylan Health Pty Ltd v Sun Pharma ANZ Pty Ltd (No 2) [2019] FCA 505 – interlocutory application for injunction pending appeal.
• Mylan Health Pty Ltd v Sun Pharma ANZ Pty Ltd [2019] FCA 411 – application to set aside notice to produce.
• Sanofi-Aventis Deutschland GmbH v Alphapharm Pty Ltd [2019] FCAFC 28 – appeal from application for interlocutory injunction re drug dispenser for insulin glargine.
• GM Global Technology Operations LLC v S.S.S. Auto Parts Pty Ltd [2019] FCA 97 – infringement and validity of design registrations for car parts.
• Meat & Livestock Australia Limited v Cargill, Inc (No 2) [2019] FCA 33 – opposition to amendment of patent regarding identifying a trait of a bovine subject from a nucleic acid sample.
• Mylan Health Pty Ltd (formerly BGP Products Pty Ltd) v Sun Pharma ANZ Pty Ltd (formerly Ranbaxy Australia Pty Ltd) [2019] FCA 28 – patent infringement and validity regarding drug, fenofibrate.
• Caesarstone Ltd v Ceramiche Caesar S.p.A. (No 3) [2019] FCA 7 – trade mark oppositions and revocation for mark CAEARSTONE.
• Shen Dian Enterprise Ltd v ARK Corporation Pty Ltd [2018] APO 92 – opposition to patent application regarding battery box with built-in charger.
• Sanofi-Aventis Deutschland GmbH v Alphapharm Pty Ltd (No 3) [2018] FCA 2060 – interlocutory injunction application re patent infringement and validity for drug dispenser for insulin glargine.
• Cantarella Bros Pty Ltd v Koninklijke Douwe Egberts B.V. [2018] APO 81 – opposition to patent application for coffee capsule systems.

Liability limited by a scheme approved under Professional Standards legislation