Prima teams with law firm to manage patent portfolio

Melbourne-based Prima Biomed has taken the unusual step of forming a strategic alliance with legal firm Blake Dawson Waldron's patent services group to manage its entire patent portfolio, which includes 26 granted patents and 44 patent applications at various stages.

Prima CEO Marcus Clark said the alliance had more to it than simply managing the portfolio, with the BDW team, headed by Bill Pickering and Mark O'Donnell, expected to provide tactical direction and strategic advice as the company moves towards commercialising its technologies.

"We are entering into a phase in our commercialisation timetable where the leverage of our strong IP position in licensing is becoming critical," said Clark.

"Both partners also see this as a 'strategic alliance' as Prima has consolidated its very large portfolio with BDW. Although our portfolio covers a range of technologies, there are many common aspects to licensing our portfolio, and we believe we can gain more where there is an understanding of the whole portfolio by BDW."

BDW would be able to assist the company in preparing the IP component of commercial packages, Clark said.

As part of the arrangement, Prima's in-house patent attorney Sue Wong would be spending two days a week at BDW where she will direct a team focused on the whole portfolio.

"It will allow us to leverage the legal group's expertise in contracts and licensing. Hopefully we'll get a lot of input into strategies for licensing," Clark said.

The close interaction between the law firm and Prima is a first, Clark said, with many companies preferring to spread their portfolios across several legal practices. He said the alliance would provide Prima with ongoing exposure in new ideas in contracts and licensing.