Skip Ribbon Commands
Skip to main content

Find a lawyer:



 Find by expertise »»


 Find people A - Z:

A B C D E F
G H I J K L
M N O P Q R
S T U V W X
Y Z
  • Kim O'Connell

    Partner
    Sydney
    T: +61 2 9296 2188
    M: +61 413 618 299
 

 Professional Biography

 
  • Kim O'Connell is a partner in Mallesons’ Sydney office where she specialises in intellectual property law and related areas of trade practices and consumer protection.

    Kim's focus includes exploitation, protection and enforcement of intellectual property rights. She also advises clients on misuse of confidential information and breaches of the Trade Practices Act.

    Throughout her career, Kim has advised clients on commercialisation of intellectual property, including patent licensing, joint ventures, research collaborations and partnering agreements. She regularly advises on IP issues in an M&A context.

    Kim has significant experience in resolving intellectual property disputes, particularly patent disputes. Recently she has represented clients in matters involving inventions in fields such as biochemistry, pharmaceuticals, medical devices, genetically modified plants and telecommunications. Kim has also conducted matters relating to plastics, mining, explosives, railways, internet security and business methods. She regularly advises clients on patent issues and commercialisation.

    Kim has been recognised as a leading lawyer in a number of global directories including PLC Which lawyer? 2011 (patent litigation) and the Asia IP Patent Survey 2010. She is listed as a leading specialist in the Guide to the World's Leading Patent Law Practitioners (2010).

 

 Experience

 
  • 1986: Bachelor of Arts (Hons), Australian National University
  • 1989: Bachelor of Laws (Hons), Australian National University
  • 1995: Master of Laws, University of New South Wales
  • 1990 - 1994: Solicitor, Allen Allen & Hemsley
  • 1994 - 1996: Senior Associate , Allen Allen & Hemsley
  • 1996 - 1998: Senior Associate, Andersen Legal
  • 1998 - 2002: Partner, Andersen Legal
  • 2002 - present: Partner, Mallesons Stephen Jaques, Sydney.
 

 Recent Matters

 
  • Alphapharm ats Lundbeck Acting for Alphapharm in proceedings against Lundbeck relating to Lundbeck's patent for escitalopram. Alphapharm was successful in revoking an extension of term of the Lundbeck patent. The matter is currently the subject of applications for special leave to appeal to the High Court.
  • Acting for Emory University in a range of patent disputes involving inventions surrounding an anti-AIDS anti-viral compound
  • Acting for Selfcare Inc in litigation involving revocation and infringement of a patent in relation to a blood glucose test kit
  • Acting for Microsoft Corporation in a patent dispute with Intertrust Technologies Corporation involving digital rights management technology
  • Acting for a major agricultural chemical distributor in relation to a range of issues, including trade practices compliance
  • Advising an agricultural products manufacturer on various intellectual property issues including licensing and distribution arrangements
  • Advising the Liquidators of Ansett on various intellectual property and IT issues and licensing transactions
  • Acting for an international manufacturer of therapeutic products in relation to a trade mark dispute and various labelling, branding and licensing issues.
 

 Professional Memberships

 
  • Advertising Standards Board - Legal Panellist
  • Intellectual Property Society of Australia and New Zealand
  • Copyright Society
  • New South Wales Society for Computers & the Law.