Areas of practice
Intellectual Property
Administrative Law
Trade Practices
Date of admission to the Bar
1993
Date taken silk
2007
Contact details
+612 8815 9123
stephen.burley@5wentworth.com
Education
Mr Burley completed his Bachelor of Arts and Bachelor of Laws degrees at the University of Sydney, graduating in 1983 and 1985 respectively. He graduated from the University of London (London School of Economics and Political Science) with a Masters of Laws degree in 1989. Mr Burley also holds an A Mus A from the Australian Music Examinations Board.
Professional Career
Mr Burley was admitted as a solicitor in New South Wales in 1987 and commenced practice at Hunt and Hunt in their banking and finance department. He moved to London in 1990 and worked in intellectual property litigation at Farrer & Co.
Since commencing practice as a barrister in New South Wales in 1993, Mr Burley has developed a specialist practice in the intellectual property field, with particular emphasis on patents, trade marks, copyright and designs cases. He appears mainly in the Federal Court of Australia and also appears on a regular basis before hearing officers of IP Australia in their administrative jurisdiction associated with the registration of patents and trade marks.
In 2008 he appeared in each of the four cases noted by the magazine "Asia IP" as the most significant intellectual property cases of the year, namely, Nine Network v IceTV (High Court, Copyright), Alphapharm v Lundbeck (enantiomer chemistry, Patent), Delnorth v Dura-Post (first innovation patent case) and the Objection by Rothbury Wines to determination of a geographical indication for the region "Rothbury" (trade mark / geographical indications).
Selected Cases
Mr Burley has appeared in numerous first instance and appellate cases concerning intellectual property matters (see "Recent Cases" for a brief summary of some recent matters in which Mr Burley has appeared).
In the patent field, his appearances in matters at trial, in the full court of the Federal Court and in the High Court include Aktiebolaget Hassle v Alphapharm Pty Ltd (pharmaceutical), Lockwood Security Products Pty Ltd v Doric Security Products Pty Ltd No.1 and No.2 (mechanical), Gambro Pty Ltd v Fresenius Medical Care Australia Pty Ltd (biomedical), and New England Biolabs v F Hoffman-la Roche (biotechnical). Mr Burley has recently appeared in Del North Pty Ltd v Durapost Pty Ltd which is the first Federal Court case considering the question of "innovative step" under section 7(3) of the Patents Act. He has recently appeared in appeals in the Full Court of the Federal Court in Sanofi-Aventis v Apotex (pharmaceutical), Lundbeck v Alphapharm (pharmaceutical) and Esco Corp and Bradken v PAC Mining (mechanical).
In trade marks, Mr Burley's appearances at first instance and appellate levels include B P v Woolworths (the first colour trade mark case), Kenman Kandy v Registrar of Trade Marks (the first shape trade mark case), Le Cordon Bleu BV v Cordon Bleu International and Woolworths v Registrar of Trade Marks. He recently appeared in the Federal Court in Bavaria Holland Beer v Bavarian Brewers Association (trade mark / geographical indication) and, as noted above, in the Rothbury geographical indication case.
In the registered designs and copyright fields, Mr Burley's appearances include Nine Network Australia Pty Ltd v Ice TV Pty Ltd (compilation copyright), Polo Lauren International v Ziliani (parallel imports, copyright, designs), Norm Engineering Pty Ltd v Digga Australia Pty Ltd (copyright/designs) and Caroma Industries v Technicon Pty Ltd (registered design).
Mr Burley's practice routinely includes urgent interlocutory applications, one of which was Eli Lilly v Interpharma P/L in which restraining orders were made preventing the Respondent from applying to list a pharmaceutical product on the Pharmaceutical Benefits Scheme (PBS) under the National Health Act.
Publications and Presentations
Mr Burley has been a regular invited speaker at conferences concerning intellectual property subjects.
Memberships
Mr Burley is a member of the Intellectual Property Committee of the Law Council of Australia. He is also a member of the Intellectual Property Society of Australia and New Zealand.