Patent & Trade Mark
Attorneys
Karin Innes
Karin Innes
Senior Associate


Level 14, 90 Collins Street
Melbourne VIC 3000
AUSTRALIA
Tel +61 3 8618 4118
Fax +61 3 8618 4199
Recent Publications
29 May 2018
Functionally defined genus claims are vulnerable to invalidity based on lack of written description support, particularly where it is difficult to establish a correlation between structure and function of the whole genus or to predict other species falling within the genus.

18 Oct 2016
The Australian Patent Office (APO) has determined that claims directed to a composition comprising double-stranded RNA (so-called “interfering RNA” or “iRNA”) is a manner of manufacture (patent eligible subject matter) in accordance with Section 18(1)(a) of the Patents Act.

16 Mar 2016
For US patent applications filed post introduction of the America Invents Act (AIA) (which changed from first-to-invent to first-to-file), sale and offer for sale made in confidence of a product that is subsequently patented will not count as prior disclosure in the United States. Put simply, secret use is not prior art for post-AIA applications.

Karin is a senior associate in the Biotechnology group with over 15 years' experience.  She assists a broad range of clients in all facets of academia and industry with patent procurement and defence in Australia and New Zealand and internationally through her close network of foreign associate contacts.  Karin is affectionately referred to by her colleagues as “the queen of oppositions” in view of her track record in obtaining successful outcomes in patent oppositions for her clients.

She regularly advises on patent strategy, patentability and infringement as well as freedom to operate.  She also assists clients in the preparation of prospectuses for listing on the Australian stock exchange. 

Karin's background experience working at Amgen as well as her secondment to a multinational pharmaceutical company has helped her to understand and appreciate the commercial drivers that underlie research and development strategies within large biotechnology and pharmaceutical companies and her drafting and prosecution strategies are tailored with these considerations in mind. Her particular experience in clinical oncology provides a unique practical understanding of the application of basic research.

Additionally, Karin has assisted non-scientifically qualified litigation counsel in understanding the concepts of immunology in patent litigation matters and participated in the discovery process for the Viagra® litigation in Australia.

Karin’s experience spans across a number of different technology areas including molecular and cellular biology, gene cloning, gene expression and silencing, yeast biology, immunology, microbiology, intracellular signalling, virology, vaccines and CRISPR technology.  Her particular areas of interest and strengths are in relation to antibody, stem cell and aptamer technologies.  Karin also works largely in the medical diagnostics and cancer biomarker area and has a keen interest in cross-jurisdictional legal issues affecting patentability of diagnostics and personalised medicine, having been invited to give talks on the subject.

She is passionate about “giving back” and is regularly sought after to give careers talks to PhD students and post-doctoral researchers and to be a panellist at industry events. She mentors and teaches junior attorneys. 

Karin is also actively engaged with the Victorian trade industry and Bio Melbourne network. Additionally, she sits on the committee for the Intellectual Property Society of Australian and New Zealand (IPSANZ). Karin also regularly contributes articles on the firm’s website and in other industry publications.

Karin’s PhD was undertaken at the prestigious Walter and Eliza Hall Institute for Medical Research under the supervision of Professor Suzanne Cory AC, FAA, FRS where her research focussed on retroviral-based strategies for hematopoietic stem cell immortalisation. 

Education

  • Bachelor of Science (Honours), The University of Melbourne, double major in Microbiology and Biochemistry
  • PhD in Medical Biology, Walter and Eliza Hall Institute

Key Areas of Expertise

  • Antibody technology
  • Stem cells
  • Cellular and molecular biology
  • Immunology
  • Microbiology

Industry Focus

Professional Affiliations
  • Board member of the Trans-Tasman IP Attorneys Board
  • Fellow of the Institute of Patent and Trade Mark Attorneys of Australia
  • Member of the Intellectual Property Society of Australia and New Zealand (IPSANZ)
  • Member of AusBiotech