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Deborah Polites

Special Counsel Melbourne
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+61 3 9286 6958
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Overview

Deborah Polites is an intellectual property lawyer with more than 20 years' experience advising and representing clients in disputes in relation to all areas of intellectual property and related matters including the Australian Consumer Law.

Deborah has particular experience in patent litigation.  She has conducted patent litigation in the Federal Court of Australia in relation to a wide range of technologies, including in the biotechnology, pharmaceuticals, mining and telecommunications industries. She has a strong focus on strategic advice and dispute resolution in the context of significant and often multi-jurisdictional litigation, and has acted for clients in contentious matters in all areas of intellectual property.

Complementing her intellectual property expertise is Deborah's work advising clients on contentious issues arising from advertising and marketing,  including the Australian Consumer Law. She has acted for many highly recognisable national and international organisations in significant and ground-breaking matters. She regularly advises and represents prominent clients in relation to disputes with competitors and in regulatory investigations and actions relating to advertising campaigns, marketing activities and the  Australian Consumer Law.

Deborah regularly advises on risk management, internal knowledge, training and public communications in connection with intellectual property and consumer law issues.

Notable Work
  • Sonic Healthcare: acting for Sonic Healthcare in defending patent infringement proceedings by Sequenom, in relation to genetic diagnostic testing.
  • Telstra: acted for Telstra in defending patent infringement proceedings  by Upaid Systems in the Federal Court, in relation to two patents relating to mobile commerce, and a broad a range of Telstra products.
  • Maxam: acted 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 of a team that represented 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.
  • Monash University: advises and acts for Monash University regarding intellectual property issues including disputes related to patents, confidential information and technology, action to prevent misuse of the Monash name and reputation in Australia and overseas, and other issues concerning the protection of Monash's intellectual property rights.
  • Toyota Motor Corporation Australia: regularly advising and representing Toyota Australia in relation to a broad range of intellectual property, advertising and marketing and related matters, over many years.
  • Confidential client: key team member advising and representing a consumer technology company in a number of matters related to telecommunications, advertising and marketing.
  • Southern Mills, Inc (t/as TenCate Protective Fabrics USA): acted for world leading protective fabric company TenCate in Federal Court proceedings against  misleading statements by Bruck Textiles in advertising and promotional activities about TenCate products.
  • Labelmakers Group: acted for Labelmakers in a successful application for urgent interlocutory relief in the Federal Court of Australia against five former employees who departed Labelmakers with valuable confidential information and breached fiduciary duties owed to Labelmakeers. This proceeding involved obtaining interlocutory injunctions against the five individuals and interlocutory ""Anton Piller"" style search orders that resulted in the preservation of crucial evidence.
  • Plant breeders' rights: represented a US university in relation to management of its plant breeders' rights in Australia and a related dispute.
  • ThoroughVisioN: part of a team that acted for TVN in copyright infringement proceedings in connection with the unauthorised use of its audiovisual media broadcasts.
  • Toyota: represented Toyota in relation to allegations of misleading or deceptive conduct made by the ACCC concerning the leather content of certain Toyota vehicle interiors.
  • 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.
  • ThoroughVisioN: part of a team that acted for TVN in copyright infringement proceedings in connection with the unauthorised use of its audiovisual media broadcasts.
  • 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.
  • 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.
  • 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.
  • RACV: advised and represented RACV and in relation to enforcement of its trade mark rights, including in domain names disputes, and disputes concerning accreditation trade mark rights in star ratings of accommodation properties.
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