Kim O'Connell

Kim O'Connell

Kim is a partner in the Sydney office of King & Wood Mallesons where she specialises in intellectual property law, with a focus on patents and regulation of pharmaceuticals, biotech and health related products.

Kim acts for a wide range of clients in commercialising intellectual property and in resolving commercial disputes arising out of IP ventures, and advises on day to day activities, including commercial transactions, joint ventures, marketing and distribution arrangements, research and development arrangements, labelling and advertising.

Kim has also acted for a range of pharmaceutical and biotech companies, providing strategic advice in a range of areas, including matters in relation to registration and listing of pharmaceuticals, dealing with the Pharmaceutical Benefits Advisory Committee and the Pharmaceutical Benefits Pricing Authority, competition law matters in relation to pharmaceuticals and matters generally relating to the Pharmaceutical Benefits Scheme and Part VII of the National Health Act and other regulatory oversight of the pharmaceuticals industry (including the Therapeutic Goods Act), and has prepared clinical trial agreements and advised on issues arising in relation to trials.

Kim’s experience extends to representing clients in regulatory investigations, inquiries and Royal Commissions – leveraging her experience in complex disputes to counsel clients through the life-cycle of regulatory interventions. Her practice includes advising clients in relation to the approval and listing of medicines and medical devices, therapeutic goods compliance, product safety, and appeals from administrative decisions – particularly in relation to medical, healthcare and scientific issues.

In addition to advising life sciences companies, Kim has handled matters involving patents in a range of technologies, such as telecommunications, financial systems, banking and payments and internet security.  She has also conducted litigation involving inventions in other technological fields, including food products, methods of treatment, genetically modified plants, plastics, plumbing valves, mining, explosives, railways, telecommunications, and numerous medical devices.

Kim has guided clients through various regulatory applications and processes and has a strong track record of assisting clients to achieve desired outcomes. She has also handled a range of cross border disputes and transactions and is experienced at working cooperatively in multi-jurisdictional teams.

Kim also advises clients on the regulation of food and nutritional supplements.

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Professional honours

  • Guide to the World's Leading Women in Business Law, 2012 - 2013
  • PLC Which lawyer? Life Sciences; IP: Patent Litigation, 2011-2012
  • Australian Best Lawyers (2008 2013)
  • International Who's Who of Life Sciences Lawyers (2013 2014)
  • International Who's Who of Patent Lawyers (2012 and 2013)
  • IAM 250 The World’s Leading Patent Litigators (2011 2013)
  • IAM Life Sciences 250 (2010 2013)
  • Euromoney LMG Australasia Women in Business Law 2012 shortlisted for patent & trade mark prosecution.

Memberships

  • AusBiotech
  • American Intellectual Property Law Association
  • Advertising Standards Board - Legal Panellist (past)
  • Intellectual Property Society of Australia and New Zealand.

Experience

  • 1986: Bachelor of Arts (Hons), Australian National University
  • 1988: Bachelor of Laws (Hons), Australian National University
  • 1995: Master of Laws, University of New South Wales
  • 1990 - 1994: Solicitor, Allen Allen & Hemsley
  • 1994 - 1996: Senior Associate , Allen Allen & Hemsley
  • 1996 - 1998: Senior Associate, Andersen Legal
  • 1998 - 2002: Partner, Andersen Legal
  • 2002 - present: Partner, King & Wood Mallesons, Sydney.

Location

Legal insights

The increasing pace of digital health, wearables, and apps generally have spawned an increasing number of innovative software-based products that are able to assist with, or may aim to replace,...

23 August 2021

On 30 July 2021, Justice Beach handed down his decision that an artificial intelligence (AI) system can be an inventor for the purposes of the Patents Act.

30 July 2021

One of the key measures targeting innovation in the Federal budget announced on 11 May 2021, is the introduction of a ‘patent box scheme’ worth over $100 million annually.

03 June 2021

The High Court of Australia has ruled on and concluded a long-running dispute between Seiko-Epson and Calidad in relation to print cartridges, setting down an important precedent in relation to the...

13 November 2020

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