Clare Cunliffe
- Commercial Law Intellectual Property
- Public Law
Clare has particular expertise in intellectual property litigation, with extensive experience in patent revocation and infringement proceedings (including pharmaceutical patent injunctions) and patent oppositions, trade mark infringement and revocation proceedings, non-use applications and oppositions, and copyright litigation, as well as litigation concerning the misuse of confidential information in the pharmaceutical context.
Before joining the Bar, Clare was a Senior Associate at Corrs Chambers Westgarth in Melbourne where she practised in intellectual property litigation, focusing on patent litigation, and general commercial litigation. Clare has also worked in the United Kingdom, at boutique intellectual property firm Powell Gilbert, and at Allens. From 2005 to 2018, Clare co-authored the Australian chapter of Kluwer’s Global Patent Litigation. In 2021, she wrote the Australian chapter of a text called Patent Enforcement for Globe Law and Business.
Clare is listed in Doyle's Guide to Leading Victorian Intellectual Property Barristers (2023) as a pre-eminent junior counsel and in Doyle’s Leading Intellectual Property Junior Counsel – Australia (2023) as a pre-eminent junior counsel.
She is listed in Chambers Intellectual Property: The Bar (2022) and (2023) as a Band 1 practitioner. Her 2022 review reads:
“Clare Cunliffe operates across the IP spectrum, being particularly well known for her exhaustive knowledge of patent law and deep familiarity with the pharmaceutical sector. Interviewees respect her as a barrister who is "really excellent at marshalling large amounts of complex legal and factual material and presenting that in a convincing way," as well as one who "stands her ground and keeps her clients' interests at heart." Sources further note that she is "very prominent and at the top of many people's lists for briefing."
In 2023, she was described as having a “comprehensive knowledge of Australian patent law and is able to get across complex scientific material quickly. She is collaborative and in high demand.”
and in the Legal 500 Asia-Pacific (2022) as a Leading Junior. Her review reads: “An original legal thinker. Works seamlessly with the solicitor team and with senior counsel. Hard working and very approachable.”
Clare is also recognised in Who's Who Legal - Australia and New Zealand (2022) for her expertise in trade mark law.
Liability limited by a scheme approved under Professional Standards Legislation
Contact
- P03 9225 6234
- M0422 133 135
- F03 9225 8668
- E[email protected]
- Connect on Linkedin
- Download VCard
Emmerson Chambers
Level 18 Room 5
200 Queen Street
Melbourne VIC 3000
Jane King
03 9225 8558
Expertise
- Appellate
- Commercial Arbitration
- Competition
- Consumer Law
- Appellate
- Confidential Information
- Copyright & Designs
- Information Technology
- Media & Entertainment
- Patents
- Privacy & Data Protection
- Telecommunications
- Trade Marks
- Administrative Law
- Judicial Review
Qualifications
Bachelor of Laws (Hons) (Melb)
Bachelor of Arts (Hons) (Melb)
Diploma Intellectual Property Law (Bristol)
Victoria
State and Territory Courts and Tribunals
Federal Court of Australia
High Court of Australia
Recent Cases
Lundbeck v Sandoz (acting for Lundbeck in a long running dispute as to escitalopram, which is presently in the High Court of Australia)
Juno v Celgene (acting for Celgene in relation to Revlimid, in a proceeding involving a compound patent and seven method of treatment patents)
Merck v Sandoz (acting for Merck in relation to its compound patent for sitagliptin)
ACCC v AFG (acting for the ACCC against Australasian Food Group in a case where the ACCC alleges AFG engaged in exclusive dealing)
MMD Design and Consultancy Limited v Camco Engineering Pty Ltd (acting for MMD Design and Consultancy Limited, initially in a preliminary discovery application and then in patent infringement and revocation proceedings)
ACCC v Megasave (acting for the ACCC against Megasave in circumstances where the ACCC alleges that Megasave made false representations to potential franchisees)
Toolgen v Fisher (acting for Mr Fisher in a case about the patentability of gene editing technology, involving novel issues of support and enablement)
VMS v Sarb (acting for Sarb in a long running dispute concerning parking technology)
Sportsbet Pty Ltd v Crownbet Pty Ltd (acting for Sportsbet in a dispute about Crownbet’s right to use the name Sportingbet. Sportsbet obtained an injunction)
Samsung Bioepis v Fresenius (acting for Samsung Bioepis in a dispute against Fresenius relating to Fresenius’ patent for a formulation of adalimumab, which resulted in Fresenius surrendering its patent)
Teva v Boehringer Ingelheim (acting for Teva in a dispute against Boehringer Ingelheim concerning three patents protecting tiotropium)
Roche v Sandoz (acting for Roche in a dispute concerning rituximab, where Roche obtained interlocutory injunctive relief against Sandoz based on four method of treatment patents)
Pokemon Company International, Inc v Redbubble Ltd (acting for Pokemon in a copyright case against Redbubble)
Publications
Intellectual Property – Patent Law Update: Section 117, authorisation and “Swiss-style” claims, liability not avoided - but where to on damages?
14 February 2024The Agency Group Australia Ltd v H.A.S. Real Estate Pty Ltd [2023] FCAFC 203
09 February 2024Intellectual Property Law Update - McD Asia Pacific LLC v Hungry Jack’s Pty Ltd [2023] FCA 1412
13 November 2023Halal Certification Authority Pty Limited v Flujo Sanguineo Holdings Pty Limited [2023] FCFCA 175
08 November 2023Cantarella Bros Pty Ltd v Lavazza Australia Pty Ltd (No. 3) [2023] FCA 1258
02 November 2023Intellectual Property - Appellate Law Update - Directed Electronics OE Pty Ltd v Gridtraq Australia Pty Ltd [2023] FCAFC 149
14 September 2023Energy Beverages LLC v Kangaroo Mother Australia Pty Ltd [2023] FCA 999
08 August 2023UbiPark Pty Ltd v TMA Capital Australia Pty Ltd (No 2) [2023] FCA 885
07 August 2023Copyright Law Update - Chapcon Building Services Pty Ltd v Spectrum Homes Qld Pty Ltd [2023] FCA 873
07 August 2023Trade Mark Law Update - Ragopika Pty Ltd v Padmasingh Isaac Trading as Aachi Spices and Foods [2023] FCA 487
15 June 2023Trade Mark Law Update - Seven Network (Operations) Limited v 7-Eleven Inc [2023] FCA 608
06 June 2023Patent Law Update - Sandoz Ltd v Bristol-Myers Squibb Holdings Ireland Unlimited Company [2023] EWCA Civ 472
06 June 2023Patent Law Update - Commonwealth Scientific and Industrial Research Organisation v Urrbrae Foods Pty Ltd [2023] FCA 504
02 June 2023Intellectual Property Law Update - New Aim Pty Ltd v Leung [2023] FCAFC 67
31 May 2023Copyright and Confidential Information Law Update - Austin Engineering Pty Ltd v Podulova [2023] FCA 419
16 February 2023Intellectual Property Law Update – claim construction fuels the Full Court – Airco Fasteners Pty Ltd v Illinois Tool Works Inc [2023] FCAFC 7
14 February 2023Misleading & Deceptive Conduct Update – Inspiration vs Deliberate Copying. Elements common to the trade – Natural Raw C Pty Ltd v Maicap Pty Ltd [2023] FCA 51
14 February 2023Misleading and Deceptive Conduct Update - Brick Lane Brewing Co Pty Ltd v Torquay Beverage Co Pty Ltd [2023] FCA 66
27 October 2022Intellectual Property Law Update - Australian Mud Company Pty Ltd v Globaltech Corporation (No 3) [2022] FCA 1189
06 October 2022Patent Law Update – Full Federal Court upholds Justice Burley’s findings that only half of Juno’s proposed product infringes Pharmacia’s valid patent
14 September 2022Trade Marks Update – acquired distinctiveness is not relevant to assessment of deceptive similarity
13 September 2022Trade Marks Update – the CAT is well and truly in the bag - Puma SE v Caterpillar Inc [2022] FCAFC 153
08 September 2022Trade Marks and Consumer Law Update – Shape mark – use as a trade mark – is this the FINISH?
23 August 2022Intellectual Property Law Update – What to do with the split High Court decision on Manner of Manufacture?
22 August 2022Defamation Law Update – Google LLC v Defteros [2022] HCA 27
25 July 2022Intellectual Property Law Update – WeChat confidential information and lawyers beware, how to prepare expert reports
25 June 2022Intellectual Property Update - C.M.E. Blasting & Mining Equipment Ltd v Rock Tool Refurbishment Solutions Pty Ltd (No 2)
27 May 2022Intellectual Property Law Update – Enough with elections already
27 May 2022Intellectual Property Law Update When “opposites” attract infringement
12 May 2022Intellectual Property Law Update – Finally: A truly trivial addition not innovative
12 May 2022Intellectual Property Law Update – recovery of costs by a successful appellant from a decision of the Registrar (designs, trade marks or patents).
12 May 2022Intellectual Property Law Update – Copyright and Works of “Artistic Craftsmanship”, assessment of evidence, the need for special training, skill and knowledge
12 May 2022Intellectual Property Law Update – Stay of Costs Orders Pending Appeal
12 May 2022Intellectual Property Law Update – Microphone design more than a sound bite
12 May 2022Intellectual Property Law Update – “Oils ain’t oils” but can be staple commercial products
12 May 2022Intellectual Property Law Update – Damages for infringement of a patent that is still under attack
11 May 2022Intellectual Property Law Update Default Judgment and Declarations
09 May 2022Intellectual Property Law Update Settling an appeal from the Trade Marks Office: power and public interest
29 April 2022Intellectual Property Law Update State Street Global Advisors Trust Company v Maurice Blackburn Pty Ltd [2022] FCAFC 57
20 April 2022Intellectual Property Update Novartis AG v Pharmacor Pty Limited [2022] FCAFC 58
08 December 2021Intellectual Property Update - Repipe Pty Ltd v Commissioner of Patents [2021] FCAFC 223
19 November 2021Intellectual Property Update - Shepparton Partners Collective Operations Pty Ltd v QAD Inc [2021] FCAFC 206
05 November 2021Intellectual Property Update - Henley Arch Pty Ltd v Henley Constructions Pty Ltd [2021] FCA 1369
11 October 2021Intellectual Property Update - Nagpal v Global Cars Aus Pty Ltd
27 September 2021Intellectual Property Update - BGD Corporation Pty Ltd v Kalaoun
15 September 2021Intellectual Property Update - Otter Products, LLC v Haydon
10 September 2021Intellectual Property Update - XCFB and National Disability Insurance Agency
07 September 2021Intellectual Property Update - Swancom Pty Ltd v The Jazz Corner Hotel Pty Ltd (No 3) [2021] FCA 729 (30 June 2021)
07 September 2021Intellectual Property Update - Ono Pharmaceutical Co, Ltd v Commissioner of Patents [2021] FCA 643 (11 June 2021)
07 September 2021Intellectual Property Update - Ariosa Diagnostics, Inc v Sequenom, Inc [2021] FCAFC 101 (18 June 2021)
07 September 2021Intellectual Property Update - Chevron Global Energy Inc v Ampol Australia Petroleum Pty Ltd [2021] FCA 617 (8 June 2021)
07 September 2021Insolvency & Intellectual Property Update - McCallum, in the Matter of Re Holdco Pty Ltd (Administrators Appointed) (No 2) [2021] FCA 377 (21 April 2021)
27 August 2021Intellectual Property Update - Caterpillar Inc v Puma SE
23 August 2021Intellectual Property Update - State Street Global Advisors Trust Company v Maurice Blackburn Pty Ltd (No 2)
04 August 2021Intellectual Property Update - International Wushu Federation v Google LLC
04 August 2021Intellectual Property Update - Ames Australasia Pty Ltd v AgBoss Australia Pty Ltd
09 July 2021Intellectual Property Update - Chevron Global Energy Inc v Ampol Australia Petroleum Pty Ltd (No 2)
08 July 2021Intellectual Property Update - Swancom Pty Ltd v The Jazz Corner Hotel Pty Ltd (No 2)
08 July 2021Intellectual Property Update - Repipe Pty Ltd v Commissioner of Patents (No 3)
08 July 2021Intellectual Property Update - Whitsunday Aerial Solutions Professionals Pty Ltd v Emprja Pty Ltd
02 July 2021Intellectual Property Update - Verix Pty Ltd v Williams
29 March 2021Intellectual Property Update - D’Annunzio v Willunga Projects Pty Ltd
26 February 2021Intellectual Property Update - The Cultural Intelligence Project Pty Ltd v The Entourage Education Group Pty Ltd
22 January 2021Intellectual Property Update - UON Pty Ltd v Hoascar [No 3]
Memberships
From 2012 to 2015, Clare was the secretary of the Intellectual Property Society of Australia and New Zealand (IPSANZ). From 2016 to 2018, she was the Treasurer. From 2018 she became Vice President of IPSANZ, a position she still holds. She has been a committee member of the International Association for the Protection of Industrial Property (AIPPI Australia) from 2013. In 2016 she became treasurer and chair of the continuing professional development committee, a position she still holds. She is also vice chair of AIPPI’s global amicus curiae committee.