Patent & Trade Mark
Attorneys
Marcus Caulfield
Marcus Caulfield
Partner


Level 14, 90 Collins St
Melbourne VIC 3000 AUSTRALIA
Tel +61 3 8618 4123
Fax +61 3 8618 4199
Recent Publications
31 Jan 2017
The Federal Court of Australia decided in favour of our client, Merial, Inc., that Merial’s lack of entitlement ground of opposition was clearly established and that Intervet is not entitled to the grant of Australian patent application No. 2009203180 (Merial, Inc. v Intervet International B.V (No 3) [2017] FCA 21). This decision arises from an appeal of a patent office decision.

22 Aug 2011
Due to its remote geographic location and population of only 4.3 million, New Zealand doesn’t always spring to mind when setting patent and trade mark strategy. However we suggest it is certainly worth considering.

Clients rely on Marcus for his specialisation in chemistry patent matters – primarily the drafting and prosecution of patent applications, oppositions, providing validity and infringement advice, and conducting ‘freedom to operate’ patent searches.  Clients regularly comment on the intellectual input that Marcus makes, noting that they consider him to be a trusted advisor and very strategic in all that he contributes.  Clients often mention the significant effort that Marcus invests to develop processes which help them ‘in house’ to manage their intellectual property, adding value and saving significant resources.

Specialising in patent matters related to all areas of chemistry, his main areas of expertise are in opposition and infringement opinions.  He has a vibrant patent opposition practice and has particular expertise in the gathering and interpretation of competitor intelligence, which he then integrates into a variety of strategic risk management services to his clients.  Over the past few years, Marcus has built a robust expertise working with multinational corporates to develop tailored competitor surveillance tools which assist them to actively monitor current market conditions.  He has assisted a variety of clients, including foreign corporates, individuals, universities, start-ups, and established large companies, to develop and enforce intellectual property rights relating to a variety of technologies, with a specific focus in chemistry.

Marcus has extensive experience in a diverse range of technologies including animal health products, polymer chemistry, organic chemistry, biochemistry, rational drug design and delivery, formulation chemistry, agrochemicals and analytical chemistry, nanotechnology (including nanofabrication, nanomaterials and nanodevices), and other emerging new technologies in the chemical area. He also has experience in mining and processing of coal and other mineral resources.

Marcus is delighted to be part of our chemistry team, which was successful in the 2015 Corporate INTL Legal Awards Boutique category: Chemistry Patents Law Firm of the Year in Australia.

Before joining FB Rice, Marcus worked as a research fellow in the Department of Chemical & Biomolecular Engineering, University of Melbourne.  He has been involved in a variety of collaborative research projects with industrial partners including Rio Tinto, Comalco, BHP, Du Pont and a leading Australian Biotechnology company.  Marcus also has experience working as a chemist with ICI Australia (now Orica).  He has published widely in the chemical area and is the named inventor on a number of patents.

Marcus received his PhD under the supervision of the world renowned polymer chemist, Professor David Solomon.

Marcus is a registered Australian Patent and Trade Marks Attorney.

Education
  • Bachelor of Science (Hons) from the University of Melbourne with a double major in organic chemistry
  • Master of Intellectual Property Law from the University of Melbourne
  • PhD in Chemistry from the University of Melbourne
Key Areas of Expertise
  • Animal healthcare
  • Pharmaceutical and medicinal chemistry
  • Competitor surveillance
  • Organic chemistry
  • Polymer chemistry
  • Rational drug design and delivery
  • Formulation chemistry
  • Agrochemicals and analytical chemistry
  • Nanotechnology (including nanofabrication, nanomaterials and nanodevices)
  • Emerging chemical technologies
  • Mining and processing of coal and mineral resources

Industry Focus

Professional Affiliations
  • Registered Patent Attorney in both Australia and New Zealand
  • Member and Chartered Chemist of the Royal Australian Chemical Institute
  • Member of the American Intellectual Property Law Association (AIPLA)