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Deborah Polites
Clayton Utz Special Counsel , Melbourne Work T +61 3 9286 6958 cell dpolites@claytonutz.com http://www.claytonutz.com
Deborah Polites' particular focus is on contentious intellectual property matters, including dispute resolution and litigation.
She has conducted significant litigation relating to patents in a wide range of technologies, including in the biotechnology, pharmaceuticals mining industries and telecommunications industries. She advises and represents clients in disputes relating to all aspects of intellectual property and related issues.
Complementing her intellectual property expertise is Deborah's work advising clients on advertising and marketing law issues. She has acted for many highly recognisable national and international organisations in significant and ground-breaking matters. She regularly advises and represents clients in relation to disputes with competitors and regulatory action relating to advertising campaigns and marketing activities, including compliance with the Australian Consumer Law.
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Deborah knows that managing both internal knowledge and public communications are crucial elements in protecting a client's position and achieving success, so she also advises on IP policy and strategy. She also develops and conducts training programmes on intellectual property and consumer law issues.
Best Lawyers Australia: voted by peers as one of Australia's Best Lawyers in Intellectual Property (2019-2020)
Doyle's Guide: names Deborah as a Rising Star – Intellectual Property, Australia (2016)
High Court of Australia (1999)
Federal Court of Australia (1999)
Articles by Deborah Polites (see also Knowledge listings):-
Swim at your own risk: Patent pools in Australia, Australian Intellectual Property Journal (2015) 25 AIPJ 220
Access Denied – Confidential discovery, inhouse counsel and experts" Inhouse Counsel (2007)
"Preliminary discovery in the Federal Court of Australia - a practical approach",IPL Newsletter (American Bar Association Section of Intellectual Property Law) (2006)
"No change to patent grace period"Australian Intellectual Property Law Bulletin (2005)
"Comparative Advertising - the bunny race case"Marketing Update Australian Marketing Institute (2002)
"Agrochemical data compensation in Australia", International Company and Commercial Law Review (2002)
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Telstra: Key team member acting for Telstra in defending patent infringement proceedings commenced by Upaid Systems in the Federal Court. Upaid Systems seeks to enforce two patents relating to mobile commerce, across a range of Telstra products.
Sonic Healthcare: Acting for Sonic Healthcare in defending patent infringement proceedings by Sequenom, in relation to genetic diagnostic testing.
Maxam: Acting for Spanish based explosives manufacturer Maxam in patent infringement litigation in the Federal Court in connection with explosives technology used in the mining and quarrying industries.
Novartis Pharma: Part of a team that has represented Novartis Pharma and Novartis Pharmaceuticals in patent enforcement and litigation matters relating to its Australian patents over a number of years. This has included significant patent litigation relating to Novartis; cancer and osteoporosis treatments (Zometa and Aclasta), and separately, in relation to Novartis to treatment of hypertension (Diovan).
Regency Media: Represented Regency Media, Australia's largest independent DVD manufacturer, in relation to patent licensing disputes, including in Federal Court proceedings relating to "pool" licensing of standards essential patents.
Weatherford: Represented Weatherford in a significant patent infringement case, relating to technology widely used in the mining, quarrying and mineral processing industries, which was invented in Australia and is now deployed throughout the world. The matter involved complex questions regarding patent prosecution, the breadth of the claims for divisional applications, as well as allegations of invalidity, and parallel overseas proceedings.
Confidential client: Advised and represented a consumer technology company in relation to infringements of its Australian patents by a competitor.
Monsanto: Key team member representing Monsanto 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.
Mayne Pharma Limited: Represented Mayne Pharma in patent litigation in the Federal Court of Australia and related proceedings in the Australian Patent Office, and advised it on a number of patent-related issues involving various pharmaceutical products.
Intellectual property and related disputes
Confidential client: Key team member advising and representing a consumer technology company in a number of matters related to telecommunications, advertising and marketing.
TenCate: Acted for world leading protective fabric company TenCate in Federal Court proceedings against a competitor to prevent misleading or deceptive conduct in the competitor's advertising and promotional activities.
Monash University: Advises and acts for Monash University regarding intellectual property issues including misuse of the Monash name and reputation in Australia and overseas, and other infringements of Monash's intellectual property rights.
Labelmakers: Acted for Labelmakers in a successful application for urgent interlocutory relief in the Federal Court of Australia against five former employees for misuse of confidential information and breaches of duty to their former employer.
Plant breeders' rights: Represented a US university in relation to management of its plant breeders' rights in Australia and a related dispute.
Other intellectual property, advertising and marketing and consumer law
Toyota: Represented Toyota in relation to allegations of misleading or deceptive conduct made by the ACCC concerning the leather content of certain Toyota vehicles.
adidas Australia Pty Ltd: Advised adidas on various intellectual property and related matters, advertising and marketing issues, and has conducted staff training programmes.
Saatchi & Saatchi: Advised Saatchi & Saatchi on intellectual property and related legal issues arising from advertising campaigns it developed.
Monash University: Advised Monash University on its review of its intellectual property policies and related university statutes.
See Intellectual Property
See Patents
adidas Australia Pty Ltd: Advised adidas on various intellectual property and related matters, advertising and marketing issues, and conducted staff training programmes.
See Copyright
Confidential client: Key team member acting for a client in Federal Court proceedings in relation to advertising and marketing in the communication technology sector.
See Australian Consumer Law
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