Malaysia

Forthcoming legislative revisions that will introduce post-grant oppositions are expected to significantly boost patenting activity in Malaysia. Applications are already on the rise, fuelled in part by inbound instructions from Japanese enterprises. Despite the weak ringgit, innovation is flourishing, with domestic companies increasingly filing patents both at home and beyond. Patent disputes typically play out with little shock and awe, but practitioners have closely followed the recent Federal Court case on patent amendments; the court ultimately ruled that if an independent claim is found invalid, its dependent claims will also fail. The decision has been viewed as an added incentive for precision prosecution.

Firms: litigation and transactions

1
Shearn Delamore & Co
Wong & Partners
2
Shook Lin & Bok LLP
Tay & Partners
Wong Jin Nee & Teo
ZICO IP

Firms: prosecution

“Rigorous and conscientious” drafting is just one strength of the multifaceted Advanz Fidelis. Known for its flexible approach to both domestic and foreign briefs, the Petaling Jaya-headquartered boutique provides clients with forward-thinking strategic counsel. It is well versed in myriad technical fields, although food technology, chemistry and information technology are strongholds. Executive director and “jack of all trades” Jern Ern Chuah is a committee member of a slew of international associations and adeptly leads clients through all stages of the patent lifecycle. The “tremendously technical” Henry Goh enjoys an enviable reputation in Southeast Asia and further afield. It is home of one of the deepest talent pools of scientists and engineers in the country, making it a fine choice for research institutions and multinationals. From intricate industrial chemistry applications to household mechanical instructions, no patent matter is beyond its capabilities. Having practised locally for more than 20 years, electrical engineer Dave Wyatt is “one of the sharpest minds in all of Malaysia” and is often called on as an expert witness. Artfully managing the firm’s development, microbiologist Yen Yen Oon serves as a “leader by example”.
KASS International
Extensive regional coverage throughout the Association of Southeast Asian Nations (ASEAN) is a hallmark of KASS International. A diverse staff of internationally qualified attorneys and technical advisers makes it a favourite of many outward-facing Malaysian rights holders. “It is essential to the success of our portfolio,” raves one satisfied client. “We have forged a long-term relationship with the firm because it can solve even the most complex matters.” Manufacturing and refining industries cherish its chemical and mechanical expertise. Founder P Kandiah helms the practice with a commitment to “extremely careful planning and business-minded counsel”. Marks & Clerk’s KL outpost has established itself as a potent presence in the Malaysian prosecution space. It boasts a formidable team of “technically gifted” patent attorneys with UK qualifications. “Malaysian companies are thrilled to have a firm with international standards like Marks & Clerk. In the past, much of that work would have been sent off to Australia or Singapore.” Innovators treasure the wealth of life sciences knowledge that PhD holder Chris Hemingway brings to the table, although he also makes light work of information and communications technology (ICT) and petroleum briefs. Director Gerald Samuel showcases his “calm reasoning and persuasiveness” in courtroom battles via his own associated law firm; the cosmopolitan professional has extensive regional experience, having practised in Singapore, Penang and Kuala Lumpur.
Mirandah Asia
Mirandah Asia is a compelling option for entities seeking patent protection throughout the ASEAN region. From multiple bases that operate in close cooperation, it has been bundling contentious and non-contentious services in a tidy, efficient package for more than 25 years. Its user-friendly electronic case management system comes in for particular praise. Clients can rely on the leadership and foresight of firm head Patrick Mirandah. Based in the Kuala Lumpur office, he possesses exceptional mechanical engineering know-how alongside “time and battle-tested” poise in multi-jurisdictional suits.
Pintas IP Group
Fielding one of Malaysia’s most technically gifted patent teams, Pintas IP is a top choice for companies in need of “heavy-duty” drafting and portfolio management. Its multinational team of attorneys and engineers proves a real draw for manufacturing outfits and research institutions. Conducting a staggering number of freedom-to-operate searches and invalidity actions, it is one of the most active teams in the country. Managing partner Choon Hong Lok advises clients with a resolutely business-oriented vision. An MBA holder and the founding president of the Association of Intellectual Property Entrepreneurs and Organisations, he has a unique take on IP monetisation and investment matters. Full-service outfit Rahmat Lim & Partners shines brightest when counselling blue-chip multinationals in heated patent spats, but also adroitly handles intricate M&A and licensing issues. Its enviable client roster includes many prominent pharmaceutical, ICT and electronics players. “Pauline Khor Hong Ping comes into her own when a case has to be turned round; she knows how to claw clients from a weak position into an extremely strong one. She always fights tooth and nail.” She has recently been acting for a world-leading consumer electronics entity.
Shearn Delamore & Co
Malaysian IP “giant” Shearn Delamore pulls out all the stops for its elite clientele: “It has impressive technical expertise and a strong track record in the courtroom. Plus, the patent team works closely with the corporate practice. Really, there is not much else you could ask for.” One of the nation’s largest firms, it has earned a loyal following of patrons from a wide range of fields, including petroleum refinement and pharmaceuticals. Joint head of the IP team Karen Abraham is a “refined and pragmatic” contentious doyenne who knows how to triumph in any skirmish. A familiar face in the High Court, Sai Fong Wong enjoys legendary status among peers: “He is amazing in the courtroom. He delivers extremely convincing but easy-to-understand arguments as if it were nothing.” Biochemistry ace Timothy Siaw keeps busy processing a prodigious number of patent applications; he also frequently participates in high-stakes pharmaceutical battles.
Shook Lin & Bok LLP
Approaching its centennial anniversary, Shook Lin & Bok continues to supply patent owners of all stripes with top-notch representation. Favoured in particular by ICT portfolio holders, the corporate firm – supported by its associate Singapore practice – is adept at tackling high-stake, region-spanning disputes and high-rolling transactional engagements. Current president of the Asian Patent Attorneys Association Malaysia Group Michael Soo is “a venerated authority” famed for his flawless performances at the High Court. “SKRINE is the big dog here. It works with all of the most significant companies – they have real confidence in its services.” The one-stop shop excels across the patent spectrum and has strong international connections thanks to its membership of the Lex Mundi network. It enjoys the patronage of heavyweight players from a diverse range of industries, although pharmaceutical players feature prominently on its roster. Elder statesman Tatt Boon Lee has been a fixture on the IP scene for four decades and has unparalleled experience in commercialisation and portfolio management. IP head Charmayne Ong Poh Yin dispenses holistic advice on large-scale patent projects, informed by valuable ancillary e-commerce and IT know-how. Peers and clients alike hail consummate litigator Guan Huat Khoo as “magnificent”. A tour de force in big-ticket drug disputes, he is sought after time and again by multinationals for his “crisp but approachable” style. Another potent weapon in the firm’s arsenal, Pei Yee Kuek works wonders on the enforcement front and has published widely in the field.
Tay & Partners

Having bounced back from a difficult spell marked by key departures, full-service Tay & Partners has rebuilt its patent offering to an exceptionally robust level. Long-term domestic concerns have remained loyal clients, citing its dynamic, innovative approach to intellectual property. Bolstered by its expansive network of relationships with other firms throughout the region, it is increasingly attracting a diverse blend of foreign clients. IAM Patent 1000 debutante Lin Li Lee is primarily responsible for this phoenix-like resurgence; the flexible, much-respected practitioner wins warm accolades for her astute handling of cross-border licensing deals.

Wong & Partners
“In high-stakes cases, clients can rely on Wong & Partners. The talent and dedication of its professionals are enviable.” Working in sync with Baker & McKenzie’s titanic international network, this premier contentious and transactional practice is a favourite of marquee names in the oil refinery, automotive and pharmaceutical sectors, among others. Kherk Ying Chew stands out as one of the nation’s most “articulate and logically sound” litigators; the business-savvy practitioner is also spearheading Malaysia’s inaugural IP valuation courses. Also renowned in the field is Brian Law, an “integral asset” for clients with large and lucrative portfolios.
Wong Jin Nee & Teo
While agile boutique Wong Jin Nee & Teo is best known for its trademark and copyright work, it is no stranger to technically demanding patent litigation and licensing assignments. Comprising five seasoned partners, it is a persuasive choice for foreign and domestic companies seeking hands-on, personalised support. Co-founder Jin Nee Wong smoothly guides clients through biotechnology and industry design planning mazes; while the multilingual Bong Kwang Teo is a resourceful ally in ICT, pharmaceutical and consumer goods disputes.
ZICO IP
Commercial outfit Zaid Ibrahim & Co earns a place in the IAM Patent 1000 thanks to an aggressive partner recruitment campaign and ever-expanding workload. A broad footprint across Asia-Pacific keeps it well ahead of competitors in cross-border litigation and technology transfer matters. The revitalised IP division boasts a vibrant prosecution and consultancy practice too, in response to growing client demands for a more comprehensive service. Running the show on the technology side, Linda Wang has more than 20 years of experience and has secured stunning wins across all forums in the country.

Individuals: prosecution

Jern Ern Chuah - Advanz Fidelis Sdn Bhd
Chris Hemingway - Marks & Clerk (Malaysia) Sdn Bhd
P Kandiah - KASS International
Brian Law - Wong & Partners
Tatt Boon Lee - SKRINE
Choon Hong Lok - Pintas IP Group
Patrick Mirandah - Mirandah Asia
Charmayne Ong Poh Yin - SKRINE
Yen Yen Oon - Henry Goh & Co Sdn Bhd
Gerald Samuel - Marks & Clerk (Malaysia) Sdn Bhd
Timothy Siaw - Shearn Delamore & Co
Jin Nee Wong - Wong Jin Nee & Teo
Dave A Wyatt - Henry Goh & Co Sdn Bhd

Individuals: litigation and transactions

Kherk Ying Chew - Wong & Partners
Guan Huat Khoo - SKRINE
Michael Soo - Shook Lin & Bok LLP
Sai Fong Wong - Shearn Delamore & Co
Karen Abraham - Shearn Delamore & Co
Pauline Khor Hong Ping - Rahmat Lim & Partners
Pei Yee Kuek - SKRINE
Lin Li Lee - Tay & Partners
Timothy Siaw - Shearn Delamore & Co
Ambiga Sreenevasan - Sreenevasan Advocates & Solicitors
Bong Kwang Teo - Wong Jin Nee & Teo
Linda CL Wang - ZICO IP
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Issue 83