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Geraldine FARRELL
BSc LLB LLM (IP Law) 
Special Counsel, Lawyer
03 9243 8300 Email Geraldine View Melbourne Office Details Download PDF Profile

 
 
 
 

Specialised in Practice Areas:

Intellectual property
Brand protection strategies
Licensing of IP rights
Litigation and dispute resolution
Clinical trial regulation and agreements
Technology commercialisation strategies and agreements, including research & development, collaborative research arrangements, material transfer agreements
Cooperative Research Centres (CRCs)
Pharmaceutical regulation

Additional Experience:

Geraldine is a senior intellectual property, commercial and technology lawyer with a broad range of experience in both litigious and non-litigious matters.

Geraldine has advised clients on the management of IP portfolios, technology commercialisation, IP aspects of acquisitions and disposals, brand protection and anti-counterfeit strategies, trade mark registrations, IP due diligences and audits, IP dispute resolution (including patent litigation, trade mark litigation and domain name disputes), licensing, distribution and manufacturing agreements, research and development and collaborative research agreements and the Co-operative Research Centre (CRC) program. She has particular experience and expertise in the pharmaceutical and biotechnology industries, including advising on GCP aspects of clinical trials, the Australian Therapeutic Goods Act and regulations, the Pharmaceutical Benefits Scheme and the Pharmaceutical Benefits Advisory Committee.

 
 
 

Educational Background:

Bachelor of Science (majoring in Physiology and Pharmacology) – Monash University (1989)
Bachelor of Laws – Monash University (1993)
Master of Laws (Intellectual Property) – Monash University (2004)

 
 
 

Professional Affiliations:

AusBiotech Limited – Director and member
Swinburne University of Technology – Council Member
Australian Red Cross Blood Service Human Research & Ethics Committee - Member
Australian Institute of Company Directors – Graduate
Licensing Executives Society of Australia and New Zealand – member
Intellectual Property Society of Australia and New Zealand – member
BioMelbourne Network - member
Victorian Women Lawyers - member

 
 
 

Description:

Prior to legal practice, Geraldine gained an invaluable insight into the pharmaceutical industry by working as a sales representative for Servier Laboratories, selling pharmaceuticals to general practitioners, medical specialists and hospital pharmacists.

Specific examples of Geraldine's experience include:

• acted for a round 10 CRC in the establishment and ongoing operation of the CRC;
• acted for an Australian company involved in stormwater and wastewater technologies in a complex restructure of its IP assets as part of the share sales of its subsidiary companies;
• prepared and negotiated documentation on a DEST funded project with the Australian Institute of Commercialisation (AIC) and PricewaterhouseCoopers, to update the CRC template constitution and participants agreement for the round 10 CRCs;
• managed and coordinated the recordal of trade mark assignments for approximately 3,500 trade marks globally following divestment of portfolio by large Australian consumer goods company;
• senior lawyer responsible for working with US-based pharmaceutical company in the preparation of clinical trial agreements and patient informed consent documentation for multi-centre phase III clinical trial for treatment of Hepatitis C in Australia;
• advised overseas client on potential investment in joint venture with an Australian based company for solar technology, including IP due diligence on patents underlying the solar technology;
• acted for numerous biotechnology companies (both public and private) in contract negotiations, including licensing arrangements with large pharmaceutical companies and technology transfer arrangements with research institutes and universities;
• acted for a company specialising in water and air purification technology, on a multi-million dollar out-licensing of technology to a large Australian resources company.  Also assisted in IP aspects of due diligence leading to company’s IPO and listing on the ASX and continue to assist in ongoing IP management and operational issues;
• advised Commonwealth government research organisation on various matters, including aspects of a multi-million dollar research funding agreement for research into climate change and on projects relating to cancer research;
• acted for satellite navigation instrument manufacturer in the negotiation of software licensing and service agreements with Telstra;
• acted for medical instrument and device manufacturer in the negotiation of numerous manufacturing and supply agreements for supply of large medical devices and automated laboratory systems;
• advised an Australian based food manufacturer on the in-licensing of food packaging technology;
• represented companies in patent opposition proceedings before both the Australian Patent Office and the Federal Court;
• advising a number of small to medium sized enterprises (SME's) on commercialisation strategies;
• represented companies in trade mark opposition proceedings before both the Trade Marks Office and the Federal Court, and trade mark infringement and enforcement proceedings in the Federal Court;
• acted for a number of companies in disputes involving franchise and distribution agreements in the Federal Court, NSW District Court and Court of Appeal and the Victorian Supreme Court;
• acted for pharmaceutical company in Federal Court proceeding under the Administrative Decisions (Judicial Review) Act, being the first ever administrative law challenge to a decision of the PBAC in the Federal Court; and
• acted for the owner of the Melbourne Central shopping centre in a Federal Court proceeding instituted by a vexatious tenant alleging breach of section 52 of the Trade Practices Act (TPA).

 
 
 
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