Australia’s economy has remained relatively buoyant through the global downturn. Licensing is an important mode of revenue generation for patent-owning companies, with cutting-edge innovations in the renewables sector recently catching the attention of many practitioners. Elsewhere, the pharmaceutical sector is still robust; as several important drugs reach the end of their patentable lives, this has helped to stimulate a range of licensing activity relating to pharmaceutical distribution channels. Mining and retail are also booming and provide an important source of work. The specialised needs of research institutions such as the Commonwealth Scientific and Industrial Research Organisation (CSIRO), as well as various universities, complete the picture. Licensing practitioners in Australia tend to offer advice and representation in technology transactions as part of broader IP practices, often including litigation. Those with a particularly strong emphasis on licensing, such as Rodney De Boos, are singled out for particular praise.
Reflecting its full service nature, Allens provides a broad spread of licensing services. It assists with the commercialisation of technology in the fields of pharmaceutical, biotechnology, chemical, minerals, food and beverages, electronics, communications, media and information technology, via both its IP and communications and media and technology teams, and is considered “a major player with terrific quality” across the board. Richard Hamer is “extremely knowledgeable, thorough and deeply experienced”. He also possesses “strong client relationship-building skills” and recently impressed with his representation of Rio Tinto on the IP aspects of its joint venture with BHP, reported to be the largest and most complex arrangement of its kind ever undertaken. Hamer is also active in the pharmaceutical and food and beverages fields. “We always look forward to working with Andrew Wiseman,” say clients and peers. He acts for a wide range of clients on an equally wide range of IP matters; recent licensing highlights include leading Pfizer through the complex IP licensing and other issues relating to its US$68 billion merger with Wyeth.Banki Haddock Fiora
Banki places a notable emphasis on intellectual property and related work. The team is experienced in handling the full range of issues relating to the licensing of patents and technology, helping universities, research institutions, technology investors and inventors from a wide range of sectors, including communications, pharmaceuticals, biotechnology and food and beverages. Peter Knight has garnered significant attention for his technology licensing practice. A “must have”, he is described as “a very intelligent and constructive negotiator”.Blake Dawson
Pharmaceuticals, biotechnology, telecommunications, energy and mining are among the industry sectors covered by this “leading” practice, which balances patent litigation with significant licensing mandates to ensure that all of its practitioners are keenly aware of potential drafting pitfalls. Clients include many leaders in their fields, including Novartis, Eli Lilly, AstraZeneca and Merck in pharmaceuticals and BHP Billiton in mining. Belinda Findlay is particularly active in this area and recently worked with Murdoch Childrens Research Institute to draft an agreement with the University of Melbourne regarding ownership and commercialisation of the results of a joint research project. Ben Miller is also “very strong in licensing” and “a sure pick for the table”. He led the team negotiating for the Australian Nuclear Science and Technology Organisation (ANSTO) over its licence arrangement with Clarity Pharmaceuticals for the latter’s exclusive development and commercialisation of SarAr cryptate compounds, which were developed by ANSTO in collaboration with the Australian National University.Corrs Chambers Westgarth
Corrs Chambers Westgarth is a “major” presence, with a group dedicated to patent and technology licensing. It handles the full range of issues, with highlights provided by recent mandates in the pharmaceuticals fields. Eugenia Kolivos and Eddie Scuderi are well known in the market; the former’s broad practice reflects that of the firm, while the latter specialises more in biotechnology.Francis Abourizk Lightowlers
This compact IP boutique has a thriving practice advising universities, cooperative research centres and hospitals, among other clients, on licensing issues. IP transactions make up a relatively large proportion of both its domestic and international work. “Always on the ball”, Peter Francis “is a true expert with years of experience” and a higher degree of specialisation in patent and technology licensing than many of his peers in Australia. Jenni Lightowlers also focuses on commercial IP issues and is an esteemed presence in the marketplace. Jason Watson is another “major player with a significant reputation”.Freehills
“Terrific at licensing” is the verdict on this full service firm’s IP group. It delivers the expertise of attorneys at law and patent attorneys to clients from a wide range of industries including food and beverages, clean technology and others. Kristin Stammer is a highly regarded practitioner, who recently advised a leading microchip company on the worldwide patent, software and know-how licencing of its sound reduction technology. She also worked with a globally recognised Australian entity on IP structuring, collaboration and licensing agreements relating to solar cell technology.Gilbert + Tobin
Gilbert + Tobun’s technology licensing work takes the form of IT contracts, with a considerable number of mandates coming from the banking and finance sector. Like the firm, Tim Gole’s focus is on software, IT and telecommunications licensing. Lately he has been working on a major deal in the banking and finance sector; last year he represented the Australian government in the licensing of technology for its public transport systems.Griffith Hack
IP specialist and “very strong licensing practice” Griffith Hack provides a comprehensive range of services to clients, ranging from patent prosecution to licensing and litigation; it works across industries, recently advising players in the medical devices and mining sectors. Highlights include representing Tyco in the acquisition and licensing of certain technologies with regard to the clean-up of the BP oil spill in the Gulf of Mexico; the firm also represented Attachmate on a number of high-value licensing issues. Russell Berry has proven himself to be “highly skilled when a diverse array of issues come into play”, as well as a “great guy with immense experience in the field”. Special counsel Geraldine Farrell similarly brings a wide range of experience to the table, with her experience in patent licensing lying particularly in matters for the pharmaceutical and biotechnology industries.Mallesons Stephen Jaques
Leaving clients “constantly impressed with the quality of work delivered on large matters”, Mallesons’ “excellent, high-end” ensemble is the preferred choice for many of the most valuable strategic and complex licensing deals taking place in the Australian market. The full service firm renders a comprehensive range of licensing advice and representation through its IP group, home to a broad array of specialisms. The team’s expertise spans industries including pharmaceuticals, biotechnology, information technology, clean technology, mining, food and beverages, media and communications, and counts many of the nation’s leading technology companies and research institutions among its clients. The lawyers are a “great resource, with a thorough, detailed and service-orientated approach”. Among them is the “experienced, innovative and knowledgeable” Scott Bouvier, who is “always focused on getting the deal done”. Well established at the vanguard of Australian patent and technology licensing, he assisted CSIRO on global licensing agreements for its Ultrabattery technology. Patrick Gunning worked with Microsoft on its strategic alliance with Telstra and with Suntech Australia on its bid for federal and New South Wales state government funding to establish the first largescale commercial photovoltaic solar power plant in Australia. He is described as “excellent, with intelligence, curiosity and the ability to find a practical application for the law to business goals”, as well as being “always responsive and available”. Wayne McMaster also has a significant practice in the field, recently handling a complex and novel matter for Biota.Minter Ellison
Minter Ellison is hailed for its work in the field of energy, natural resources and clean technology, where it advises on the licensing aspects of large corporate deals and structures, including joint ventures. In addition, the firm has close relationships with a number of major research institutions and universities. Paul McGinness is a “must-have” licensing practitioner, who offers licensing services as part of his broader IP practice.Spruson & Ferguson Lawyers
The legal arm of patent and trademark attorney outfit Spruson & Ferguson, this group is largely concerned with litigation for clients shared by the two branches; it also handles significant licensing matters across a range of industry sectors. Philip Heuzenroeder’s broad licensing practice is typical of the firm. Industry sectors in which he is experienced include life sciences, information technology, consumer goods and retail. He works with major Australian universities and government departments alongside commercial businesses. Other top practitioners confide that “he is clearly good enough for us to refer clients to him”.Watermark Intellectual Property Lawyers
Watermark combines a patent agency and legal teams to serve the IP needs of its client base, which includes leaders in the mining, biofuels and mechanical engineering sectors. Peter Hallett is a well-known presence in the marketplace with an “extremely good” patent licensing practice, which he balances with his work in trademarks.
Jeff Bergmann of Solubility is valued for his “excellent levels of client service”, while his strategic input on licensing negotiations and excellent drafting skills also come in for particular praise. He has 15 years’ experience in handling deals for large and multinational corporations, venture capital funds and investors, universities and not-for-profit institutions. He recently acted for Starpharma in a major licensing transaction. Dubbed “the doyen” and admired for the depth of his experience and expertise, Davies Collison Cave consultant Rodney De Boos emerges as one of the most specialised Australian licensing practitioners. While he may have reduced the volume of his workload in recent years, De Boos remains at the summit of the market, according to his peers: “We have immense respect for him and can’t overstate how good he is.” Formerly of Spruson & Ferguson Lawyers, Robert McInnes is a recent arrival at DibbsBarker. With De Boos, he is among the most specialised licensing practitioners in the field and is described as “terrific and a top player”. McInnes runs a broad practice, with an emphasis on technology licensing in the life sciences industries; clients include research institutions, private sector companies and their investors. Bernard O’Shea is at Norton Rose’s Melbourne outpost. Areas of expertise include information technology, pharmaceuticals and biotechnology; he is “experienced and highly skilled” at drafting licensing agreements relating to patents in these and other fields.