Karen Sinclair

Principal, Patent & Trade Marks Attorney

Dynamic and energetic, Karen is passionate about working with major multinationals and Australian start ups to strategically protect, manage and commercialise their innovation in Australia and internationally.

Karen focuses on giving her clients the perspective to turn their IP into a working portfolio of assets which delivers commercial outcomes, enhances their competitive position in the market and which is aligned with the overall objectives of the business. ‘I love seeing my clients’ products on the shelf. Innovation is often remarkable, but unless it’s successful in the marketplace it hasn’t done its job – and neither have I.’

Technically qualified in chemistry and life sciences and with 30 years’ experience as a patent and trade marks attorney, Karen works in all aspects on a diverse range of start up and SME-owned global patent and trade mark portfolios for Australian clients, and also for well-known global multinationals in the chemical and pharmaceutical fields before the Australian Patent Office. She has extensive experience in medical and biodegradable polymers, feminine and infant hygiene products, product formulation, consumer health care and nutraceuticals, vaccine technology and diagnostic methods.

EXPERTISE
  • Pharmaceuticals
  • Active ingredient formulation
  • Medical and biodegradable polymers
  • Consumer health care and nutraceuticals
  • Vaccine technology
  • Feminine and infant hygiene products
  • diagnostic methods
  • Strategic intellectual property management
  • Intellectual property due diligence for IPO listings and M&A and technology valuation
  • International patent prosecution strategy and the IP systems of the United States and Europe
  • Trade mark and brand portfolio management
  • IP education programs
EXPERIENCE
  • Assisting start up Australian companies in vaccine development, medical and biodegradable polymers spin out technology originating from Australian public research organisations into successful commercial ventures based on international patent portfolios.
  • Managing the Australian patent portfolio of a major multinational pharmaceutical company for over 25 years and through several mergers and acquisitions.
  • Conduct of interviews before the US Patent and Trade Marks Office and the Technical Board of Appeals of the European Patent Office.
  • Creation of tools for the assessment of the relative business value of patent portfolios for a major Australian pharmaceutical company.
  • Strategic advice identifying licensing, commercialisation and partnering opportunities for a technology platform of a major Australian research organisation.
  • Strategic advice to a Victorian Government funded nanotechnology venture concerning the strengths and weakness of its intellectual asset portfolio including patents, licences, research collaborations and commercialisation avenues.
  • Representing a multinational pharmaceutical company at Hearings before the Trade Mark Office regarding INN stems and driving change in examination guidelines on pharmaceutical trade marks.
  • Expert witness in US and Australian patent proceedings before superior courts.
  • Development of the statutory Code of Conduct for Patent and Trade Marks Attorneys.
QUALIFICATIONS

Registered Patent & Trade Marks Attorney (Australia & New Zealand)

Bachelor of Science (Chemistry, Microbiology, Biochemistry), Monash University

Executive Program, Biotechnology: Strategies for Management of Intellectual Property, Northwestern University – Kellogg School of Management

Company Director’s Course, Australian Institute of Company Directors

MEMBERSHIPS

The Institute of Patent and Trade Marks Attorneys (IPTA), Ordinary

Governor of the Victorian Chapter and member of Women in Leadership Advisory Board, American Chamber of Commerce

Member, Licensing Executives Society of Australia and New Zealand

Committee Member of Asia-Pacific Committee, Licensing Executives Society

Australian Institute of Company Directors

Ausbiotech

Member of the Advisory Panel, The Friends of St Vincent’s Health Australia

Beyond the Desk

Karen relishes the opportunity to impart her knowledge to the next generation of IP asset managers and ‘give back’ to the IP industry. She has been providing education and training programs in intellectual property and its management as a Senior Fellow of the Law faculties of the University of Melbourne and Monash University, as a Fellow of the Academy of the Institute of Patent and Trade Marks Attorneys of Australia and for Chartered Secretaries Australia and other academic forums for over 15 years.

She was appointed by the Federal Government of Australia, to the Australian IP industry’s peak professional body; the Professional Standards Board for Patent and Trade Marks Attorneys for the maximum six years between 2007 and 2013. Karen was also a member of the Advisory Board of the Intellectual Property Institute of Australia – a federal government, Department of Industry-funded initiative involving the Faculties of Law and the School of Economics of the University of Melbourne and the Melbourne Business School between 2011 and 2014. Karen has also been a member of the Licensing Executive Society of Australia and New Zealand since 1988, and was President in 2009 and 2010.

She is a passionate advocate for social and corporate responsibility and, beyond the desk, Karen is an active participant in a range of charitable causes, among them, the annual Vinnies CEO Sleepout and the Country Fire Authority.

 

Awards

2016 & 2015 IAM 1000

The World's Leading IP Strategist