Ian Pascarl

Ian Pascarl

Principal Lawyer | Director
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Ian has extensive experience in a wide range of contentious and non-contentious intellectual property law disputes and transactions covering all intellectual property regimes including patents, copyright, trade marks and related competition law issues, with a particular emphasis on strategic intellectual property litigation. Recently Ian’s practice has involved major national and multi-jurisdictional patent litigation in the pharmaceutical, life sciences, and resources/metallurgical sectors.

Ian is supported by outstanding internal legal and technical teams that work with clients to:

  • initially ascertain the client’s commercial objectives;
  • develop an agreed strategy best designed to achieve those objectives; and
  • thereafter work within agreed legal costs budgets to achieve those agreed objectives.

A selection of recent and current cases in which Ian has acted, or is continuing to act, both at first instance and at the appellate level, together with Ian’s recent awards, professional memberships, recent client comments, professional qualifications and contributions to the continued development of intellectual property law and practice are set out below.

 


Awards

  • WHO’S WHO LEGAL Patents: Considered a “leading practitioner in patent litigation”, 2015, 2016, 2017, 2018 & 2019
  • ​Expert Guides: Patents: “IP Expert”, 2015
  • ​WHO’S WHO LEGAL Life Sciences: Considered a “leading practitioner in the field”, 2014, 2015, 2016, 2017, 2018 & 2019
  • Asialaw Leading Lawyer: Listed as a leading lawyer Intellectual Property and Dispute Resolution and Litigation 2012, 2014, 2015 & 2018; listed as a Market Leading Lawyer for Intellectual Property and Dispute Resolution and Litigation 2016
  • Managing Intellectual Property World Survey and Global Awards: Leading individual for Patents, Trade Marks and Copyright, 2014
  • Asia IP Experts: A leading lawyer for litigation, patents, pharma and biotech, 2013.  Leading lawyer for enforcement, copyright, patents, pharma and biotech, media and entertainment, 2015
  • The Legal 500 Asia Pacific: Ranked as one of Australia’s leading IP individuals, 2012, 2013, 2015.  Listed as an elite leading lawyer 2016
  • Doyle’s Directory: Listed as a Preeminent Leading Victorian Patent Litigation Lawyer, 2015, 2016 & 2019; recommended as a Leading Victorian Trade Mark lawyer, 2015; listed as a Leading Victorian Non-Contentious IP Lawyer, 2015 & 2019, Preeminent ‘Leading Intellectual Property Lawyer’ 2015. 
  • Chamber & Partners Intellectual Property – Patents Australia: Ranked in Band 3, 2013, 2014, 2015 & 2016
  • IAM Patent 1000 Guide: Ranked Silver in the top 20 leading individuals in Litigation in Australia, 2012
  • IAM Patent 1000 Guide: Recommended as a leading individual for patent litigation, 2011, 2012, 2013, 2014, 2016 & 2018
  • Ranked in Legal Media Group Expert Guide, Chambers Global, Chambers Asia Pacific, Asia Law Leading Lawyers, 2011
  • Best Lawyers, ranked highly amongst ‘Australia’s Top Lawyers’ in Intellectual Property and Biotechnology Law, 2008 to 2020, ‘Lawyer of the year’, 2017.
  • Managing Intellectual Property ‘IP Stars’: Ranked highly as an Australian ‘IP Star’, 2014, 2015, 2016, 2017 & 2019
  • WIPR Leaders 2017 & 2019
  • Life Sciences – Lawyer of the Year – Australia – Lawyer Monthly – Legal Awards 2018

Some Recent and Current Cases

Bayer Pharma Aktiengesellschaft v Generic Health Pty Ltd and Lupin Australia

Ian lead a team who acted successfully on behalf of Bayer in an infringement suit against a number of generic companies asserting a patent covering Bayer’s oral high selling contraceptive products Yasmin and Yaz and in defending the relevant Bayer patent covering these products. 

Ian’s team was successful in firstly amending the patent after institution of proceedings (a novel strategy now being adopted by other firms),

Bayer amendment: http://www.austlii.edu.au/au/cases/cth/FCA/2012/1510.html

at trial in establishing infringement and validity,

Bayer trial (experiments): http://www.austlii.edu.au/au/cases/cth/FCA/2013/226.html

Bayer trial: http://www.austlii.edu.au/au/cases/cth/FCA/2013/279.html

in defeating a Full Federal Court Appeal (roughly equivalent to the US Federal Circuit) on both infringement and validity,

Bayer Full Court: http://www.austlii.edu.au/au/cases/cth/FCAFC/2014/73.html

in defeating a High Court Special Leave Application (equivalent to a US Supreme Court leave application),

Bayer High Court: http://www.austlii.edu.au/au/cases/cth/HCATrans/2014/261.html

in a damages trial in recovering damages of approximately AU$32m plus substantial legal costs,

Bayer damages:  http://www.austlii.edu.au/au/cases/cth/FCA/2017/250.html

in defending the damages award in a Full Federal Court Appeal (the respondents achieved only a very small deduction on appeal),

Bayer damages appeal:  http://www.austlii.edu.au/cgi-bin/viewdoc/au/cases/cth/FCAFC/2018/183.html

GSK v Apotex and Generic Partners – Federal Court of Australia Proceeding No. VID 638/2014

Ian lead a team who were successful on 43 out of 44 points in an infringement proceeding on behalf of GSK in which GSK asserted a patent covering its Panadol Osteo product and was met with a patent revocation cross-claim.

The team firstly obtained an interlocutory injunction (equivalent to a US preliminary injunction) in December 2014,

GSK PI: http://www.austlii.edu.au/au/cases/cth/FCA/2014/1398.html

was successful at trial in defeating all of the respondents’ many grounds of invalidity and all the infringement points except 1 (construction point),

GSK trial: http://www.austlii.edu.au/au/cases/cth/FCA/2016/608.html

was successful in the Federal Appeal Court holding all of the 43 of 44 points that were established at trial but not the construction point,

and are currently amending the patent to address the one construction point that was lost at trial and before the Federal Appeal Court, but do not expect the hearing of that matter to take place prior to the last quarter of 2019 in the Federal Court.

Sequenom Inc v Ariosa Diagnostics & Ors – Federal Court of Australia Proceeding No. VID 611/2016

Ian lead a team who represented Sequenom Inc in proceedings against Ariosa Diagnostics, Inc, Clinical Laboratories Pty Ltd and Sonic Healthcare Limited in an infringement proceeding with a revocation cross claim heard in the Federal Court in August/September 2018.  The patent covered the areas of fetal medicine and molecular genetics with the technology being a non-invasive pre-natal test kit for detection of sex, aneuploidies, pre-eclampsia and Rhesus D.    Justice Beach delivered his decision in June 2019, finding Sequenom’s patent to be both valid and infringed.  The decision of Justice Beach is significant as it makes it clear that claims directed to practical applications of naturally-occurring phenomena, including gene sequences, used in methods of diagnoses and prognosis are patent eligible subject matter in Australia. 

RESOURCES INDUSTRY

Dyno Nobel Inc v Orica Explosives Technology Pty Ltd

Ian has lead a team since 2009 representing Orica, one of the world’s largest suppliers of explosives (ammonium nitrate) and electronic blasting services, in defending their mining blast technology first in a contested hearing before the Australian Patent Office. 

http://www.austlii.edu.au/au/cases/cth/APO/2016/36.html

Secondly, by forcing the withdrawal of a Federal Court appeal from the above decision and is currently defending a patent revocation proceeding to which the team has cross-claimed asserting substantial infringements with the trial listed for mid-September 2019. 

http://www.austlii.edu.au/cgi-bin/viewdoc/au/cases/cth/FCA/2019/258.html

Policy and Legal Development Contributions

Ian was President of the Intellectual Property Committee of the Law Council of Australia for 5 years during which Ian contributed significantly to a large number of submissions to Intellectual Property Australia (Patent, Trade Mark and Designs Office), Law Reform Bodies including the Australian Law Reform Commission, the Productivity Commission, Government Ministries such as the Attorney General’s Department Science Technology and the Department of Foreign Affairs and Trade.

Ian continues to serve on the Intellectual Property Committee of the Law Council of Australia and has made significant contributions to the Committee’s recent submissions on Investor State Dispute Settlement (ISDS) clauses, Safe Harbor Provisions, contained in the Competition and Consumer Act, for Intellectual Property Agreements, and proposed further amendments to Australian law on Inventive Step.

Memberships

  • Recent Past Chairman of the Intellectual Property Committee of the Law Council of Australia
  • Continuing member of the Intellectual Property Committee of the Law Council of Australia
  • Member: American Bar Association
  • Member: American Intellectual Property Law Association
  • Member:  Intellectual Property Owner’s Association
  • Member: International Association for the Protection of Intellectual Property
  • Member: Law Council of Australia
  • Member: Law Institute of Victoria

Qualifications

  • Accredited Mediator (LEADR: Lawyers Engaged in Alternative Dispute Resolution)
  • Bachelor of Laws, University of Melbourne
  • Graduate Diploma (Commercial Law), Monash University
  • Registered Trade Marks Attorney

Recent Articles by Ian