Patent Disputes in Australia: Expert Guidance from Baxter IP

Patent disputes and infringement conflicts represented by strategic chess pieces

Navigating patent disputes in Australia requires strategic insight and technical expertise. At Baxter IP we specialize in providing comprehensive advice on patent disputes. As a boutique, mid-sized IP firm, we offer flexible, client-centric services, including infringement and validity analyses, opposition proceedings, cease and desist correspondence and support for mediation, arbitration and Federal Court enforcement. Our team of industry experts works closely with lawyers and barristers to advise on patent interpretation and validity, ensuring robust strategies aligned with your commercial goals.

Recognized for our excellence, Baxter IP is one of the leading non-publicly listed IP firms in Australia. Our Director Martin Earley, with over 30 years of experience including time as a Patent Examiner at IP Australia, brings unique insights into Patent Office hearings practices. Dr. Qi Zhang, Principal and head of our Electrical & ICT team, offers international expertise in patent enforcement, particularly in China. With a track record of successful outcomes in contentious matters, we help clients from multinational corporations to startups resolve disputes efficiently while drafting stronger, more defensible patents.

Understanding Patent Disputes and Infringement in Australia

Patent disputes in Australia often arise under the Patents Act 1990 (Cth), involving challenges to patent validity, infringement claims, or oppositions before IP Australia. Once granted, a patent grants its owner the right to seek injunctions and compensation through litigation, but non-court approaches like negotiation or opposition should be considered first for cost-effective resolution.

Common patent dispute scenarios include:

Patent infringement claims: Allegations of unauthorized use of a patented invention.
Validity challenges: Questioning if a patent should have been granted.
Patent oppositions: Contesting accepted applications at IP Australia.
Commercial disputes: Conflicts over interactions between businesses and patent owners.

These can occur in administrative proceedings at IP Australia, business IP dispute resolution, or Federal Court actions (where we would assist your lawyers). Early assessment of patent strength, infringement scope, and commercial impact is essential. Our team handled 39 contentious proceedings and 29 infringement matters in FY24, demonstrating our capability in high-stakes disputes across sectors like engineering, medical devices, AI, and fintech.

Before Considering Patent Litigation: Initial Steps in Resolving Disputes

If you suspect patent infringement, attempting out-of-court resolution is advisable—and often required before Federal Court litigation via a "genuine steps statement." Care must be taken to avoid unjustifiable threats under Section 128 of the Patents Act 1990 (Cth), which could lead to counterclaims for damages.

At Baxter IP, we evaluate disputes holistically to recommend negotiation, opposition, or enforcement strategies. Services include:

Infringement and validity analyses, including prior art searches.
Drafting cease and desist letters that relate to patent or registered designs to assert your position.
Lodging patent oppositions to challenge applications at IP Australia.

For instance, in 2023, an infringer was imitating Nick Scali furniture design and we sent a cease and desist letter which caused the infringer to stop the infringing activities.

Baxter IP's Approach to Patent Disputes and Oppositions

Baxter IP's patent attorney team is highly experienced in handling disputes from analysis to resolution, focusing on commercial outcomes. Key services:

Assess Infringement & Send Cease & Desist Letters: Negotiate settlements aligned with objectives.
Lodge Patent Oppositions: To challenge applications, such as in cases Baxter IP has handled including Dynamic Suspensions Pty Ltd v Elizabeth Anne Molnar [2021] APO 8 and Pacific Enterprises v ASSA ABLOY [2014] APO 81.
Enforce Your Patent: Support lawyers in negotiation, ADR, or court actions with expert advice.
Resolution Focused on Commercial Objectives: Prioritize business goals and relationships.
Successful Track Record: Michael McCann v Molnar [2017] APO 30 before IP Australia.
Awarded Specialists: One of Australia's most awarded mid-sized IP firms, with expertise in physics, engineering, electrical, and ICT.

Our approach:

Initial assessment of rights, allegations, and implications.
Undertaking extensive IP searches to establish position.
Strategy development for enforcement, defense, or settlement.
Evidence gathering, including expert opinions.
Negotiation for commercial resolution.
Support for formal proceedings.

Why Choose Baxter IP for Your Patent Dispute Needs?

In today's competitive market, patent disputes demand technical knowledge and commercial acumen. Our 2,000+ clients, including BYD, UNSW, UAM and startups, trust us for end-to-end support. As a non-listed firm, we offer large-firm expertise at mid-tier rates.

Guided by values of dedication, transparency, and commercial focus, we filter dispute learnings into stronger applications. Committed to community, we provide pro-bono mentoring at UNSW and UTS, supporting innovation.