Joanne Grant

Jacinta Flattery-O’Brien PhD

Special Counsel, Patent Attorney

PhD, BSc (Hons, University Medal), GradDipLS
Doctor of Philosophy (Molecular Biology)
Bachelor of Science (Hons, University Medal) (Molecular Genetics)
Graduate Diploma in Legal Studies
Registered Patent Attorney (AU & NZ)

Jacinta is a trusted and recognised leader in biotech/pharma patenting, identified as an “IP Star” by the highly regarded Managing Intellectual Property Journal (MIP) for her expertise.

She is a registered patent attorney with 20 years’ experience serving clients in the biotechnology, pharmaceutical and biopharmaceutical industries.

Prior to being appointed as a Special Counsel of Pearce IP in 2020, Jacinta was a partner/principal for 14 years at specialist IP firm Shelston IP, where she was head of the biotechnology group.

Jacinta has extensive experience working with global biotech/ pharma/ biopharma companies to build and strategically protect their IP position. Her clients particularly value her responsiveness as well as her practical and commercially relevant advice delivered in a clear and concise manner.

Jacinta advises in relation to:

  • preparation and prosecution of applications for extension of term for patents covering blockbuster/high value pharmaceuticals (to date about 100 such applications);
  • prosecution of, and the provision of strategic advice relating to, patent applications in Australia, New Zealand and internationally;
  • patent oppositions at the Australian Patent Office;
  • freedom-to-operate clearances;
  • infringement and validity of patents;
  • drafting patent applications relating to biotech/pharma/biopharma inventions; and
  • prosecution of plant breeder’s rights (PBR) applications (Jacinta is a PBR “Qualified Person”, one of only a handful of Australian patent attorneys authorised by the Australian PBR office to certify PBRs).

Jacinta holds a PhD in molecular biology from the University of New South Wales (UNSW), and was awarded the University Medal for “outstanding academic performance” in her BSc(hons) as well as the CSL prize of the Biochemical Graduates Associates for achieving first place in the BSc(hons) programme at the same university. She enjoys working on complex matters relating to molecular biology, genetic engineering, biotechnology/protein expression, immunology, microbiology (eukaryotic and prokaryotic), stem cell technology, pharmaceuticals, biopharmaceuticals, veterinary products and plant breeder’s rights (PBRs).

Jacinta was a course coordinator at Macquarie University (INOV802 – Intellectual Property Creation, Strategy and Management) and has lectured at UNSW on the strategic management of IP in undergraduate and post-graduate courses for 19 years.

My Awards

Australian Law Awards (Lawyers Weekly)

Finalist – Boutique Diversity Firm of the Year:  Pearce IP (2022
Finalist – Intellectual Property Team of the Year: Pearce IP (2022)
Winner – Intellectual Property Team of the Year: Pearce IP (2021)

IAM Patent 1000

Highly recommended for prosecution – Jacinta Flattery-O’Brien (2022
Firm: Pearce IP ranked bronze for litigation and prosecution (2022)
Firm: Pearce IP ranked bronze for litigation and recommended for prosecution (2021)

Managing IP Stars

Firm: Pearce IP ranked – Tier 3 prosecution (2022)
Patent Star: Jacinta Flattery-O’Brien (2022, 2021, 2020)

World Intellectual Property Review (WIPR)

WIPR Leaders: Jacinta Flattery-O’Brien for Patents and Technology (2022, 2021)

Women in Business Law Awards – APAC

Shortlisted: Australian Firm of the Year (2022)

Australasian Lawyer 5-Star Awards

5-Star Intellectual Property Law Firm: Pearce IP (2021)

Lexology Legal Influencer

Healthcare and Life Sciences (Australasia):
Pearce IP (Q2 2022, Q1 2021, Q4 2020)
Healthcare and Life Sciences (Cross-border): Pearce IP (2021)

 

Latest Articles

"Winner - Intellectual Property Team of the Year 2021"

Australian Law Awards (Lawyers Weekly)

"Finalist - Intellectual Property Team of the Year 2022"

Australian Law Awards (Lawyers Weekly)

"Patent Star 2022, 2021"

MIP IP Stars

"WIPR Leader"

Jacinta Flattery-O’Brien for Patents and Technology (2022, 2021)

"5-Star Intellectual Property Law Firm"

Australasian Lawyer 5-Star Awards 2021

"Pearce IP Ranked Tier 3 - Prosecution"

MIP IP Stars 2022

"Pearce IP bronze ranking for litigation and recommended for prosecution"

IAM Patent 1000 2021

"Pearce IP - Lexology Legal Influencer"

Healthcare and Life Sciences (Australasia):
Pearce IP (Q2 2022, Q1 2021, Q4 2020)

Healthcare and Life Sciences (Cross-border): Pearce IP (2021)

"Pearce IP ranked bronze for litigation and prosecution"

IAM Patent 1000 2022

"Highly recommended for prosecution - Jacinta Flattery-O'Brien"

IAM Patent 1000 2022

"Women in Business Law Awards - APAC"

Shortlisted: Australian Firm of the Year (2022)

Australasian Lawyer 5-Star Awards

5-Star Intellectual Property Law Firm: Pearce IP (2021)

OUR VISION

By 2027, be the premier life sciences IP practice in Australia.