Rahmat Lim & Partners’ IP practice group offers a full and wide range of contentious and non-contentious IP-related services. Our IP practice comprises five lawyers and 18 paralegals and executives, who provide advice on a broad spectrum of IP protection, management, transaction and enforcement issues exclusively.
The scope of our IP acquisition and protection work is extensive and encompasses the administration, registration, management and coordination of the various registrable IP rights – namely, patents, trademarks and industrial designs. Our IP practice group has experience in the protection and management of both registrable and non-registrable IP rights.
IP strategy, counselling and portfolio management
We offer our clients individual counselling and strategic advice on formulating the best protection for their local and international patent and trademark portfolios. In developing customised IP strategies and policies, we frequently assist local and foreign multinational corporations and government-linked corporations in the administration, registration, management and coordination of their patent, trademark and industrial design portfolios worldwide as part of our holistic service.
With the costs of IP protection ever increasing, we work closely with clients to tailor search and filing strategies that fit each client’s individual needs, thus adding value. We have a reliable network of foreign associates across Asia, Europe, the Americas and Africa, which we engage to register clients’ trademarks and patents across these jurisdictions.
Our IP practice group also focuses on IP commercialisation, monetisation, exploitation and licensing activities, which may form part of joint ventures or industry-wide licensing programmes. Our IP lawyers draft and negotiate licences and technology transfer agreements that maximise the value of clients’ patents, copyright, trade secrets and trademarks.
We advise on and undertake IP audits and due diligence exercises. In today’s fast-moving, high-pressure M&A and investment transactions, accurate and comprehensive IP evaluations are critical. Our in-depth knowledge of IP law enables us to provide thoughtful and accurate answers to investors’ questions and to craft contract terms that properly allocate risks. We deliver sophisticated analyses of the IP assets at stake that can help to drive a domestic or international deal.
We draft and negotiate IT contracts such as computer contracts, internet contracts, R&D agreements for research institutes and corporations, franchising agreements and other related documentation. We also advise on regulatory compliance, including in relation to online, digital and new media initiatives, approvals for franchises, food and drugs, medical devices and gaming matters.
Our IP practice group has extensive experience in all aspects of civil and criminal IP enforcement, including patents, trade secrets, copyright, registered designs and trademarks.
With our significant enforcement experience, we regularly advise on and craft anti-counterfeiting programmes. We maintain a close rapport with the relevant governmental agencies – the Ministry of Domestic Trade, Cooperatives and Consumerism, the Intellectual Property Corporation of Malaysia, Royal Malaysian Customs and the Royal Malaysian Police – as well as with reliable and reputable professional investigation firms.
Our IP practice group rigorously conducts anti-counterfeiting and anti-piracy raids, and we are familiar with and adept at tackling legal and operational issues that may arise during criminal raid actions. We routinely assist clients in conducting training programmes to educate government officials on international best practices and the identification of clients’ genuine goods.
We have extensive experience in civil litigation. Recognising that litigation can be costly and disruptive, can place severe demands on in-house resources and can be a management distraction, we are prepared to explore alternative dispute resolution procedures where circumstances permit. When litigation becomes necessary, our key strength is our ability to distil complex legal and technical issues into simple, clear and strategic themes and present cases to judges in a persuasive manner.
Our IP practice group has been involved in significant and complex patent litigation in the electronics, telecommunications and pharmaceutical fields, and has litigated extensively on trademarks and passing off. Many of our IP litigation cases are before the specialised IP court within the High Court of Malaya sitting at Kuala Lumpur.
Suite 33.01 Level 33
Gardens North Tower
Mid Valley City Lingkaran Syed Putra
Kuala Lumpur 59200
Pauline Khor, Partner
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