Malaysia

Malaysia has one of the largest economies in Southeast Asia and certainly one of the most competitive. An easy place to do business, it is attracting significant investment from neighbours such as Japan; this is fuelling an increase in patent activity, even as budget cuts within the public sector negatively affect local filings. Interesting developments are taking place in the commercial IP space: Malaysia, like Singapore, has launched its own IP financing initiative, in the hope that this will promote innovation and boost productivity. The Malaysian Intellectual Property Office has also launched a special IP valuation training programme, so that companies seeking to take advantage of the financing scheme can more easily get the evaluation they need to move forward.

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

Recommended
H
KASS International
Mirandah Asia
Pintas IP Group
Shearn Delamore & Co
Wong & Partners
Advanz Fidelis takes a resolutely business-minded approach to intellectual property, conceiving commercially optimal ways to secure and leverage patents. Original drafting is the order of the day for the efficient, well-rounded technical team, which often secures early patent grants after successfully filing for expedited examination. An increase in the breadth and size of its client portfolio, together with new additions to the group, was a notable storyline of 2016. Though prosecution remains its bread and butter, Advanz Fidelis is undertaking more disputes work via a consulting team which is adept at guiding conflict resolution strategies. Main man Jern Ern Chuah is a silky-smooth deal negotiator and creative thinker who knows which paths to pursue if infringement issues arise. This top-flight IP consultancy is more than just a regional player: it is active internationally and can orchestrate sweeping prosecution programmes that extend into the United States and Europe with consummate ease. Its professionals collectively cover all scientific disciplines, combining technical acuity with commercial insight such that clients are never left wanting for subject-matter expertise or practical solutions. Heading the cosmopolitan patent crew is Dave Wyatt, a UK and European patent attorney and registered Malaysian agent with valuable in-house experience on his résumé. In over two decades at Henry Goh, he has created moments of magic for clients and provided inspiring mentorship to junior colleagues. Active in a number of other capacities – including expert witness, speaker and presenter – he is steeped in Malaysian IP practice. Patent manager Yen Yen Oon is also instrumental in the firm’s success. Her business development responsibilities include maintaining close relationships with the best foreign associates – a task she excels at – while in practice she specialises in biotechnology and chemistry patenting.
KASS International
A passionate guardian of innovation, KASS offers a cradle-to-grave patent service from offices in Malaysia, Singapore and Indonesia. Its in-house team of patent attorneys and technical experts has been trained to the highest standards and demonstrates a sure command of intricate technology in many industry sectors. Thanks to a stringent quality control and second-attorney review scheme, the set turns out pristine patents, which it “effortlessly gets granted”. Founder and director P Kandiah oversees operations. He is an eminent figure on the market, hailed at a C-suite level as an authority on the business of intellectual property. Having set up shop in Malaysia in 2009, Marks & Clerk has since grown rapidly; the firm’s name is synonymous with excellence in patent prosecution and the local crew hasn’t let the side down. The set-up in Malaysia is interesting, with an associated law firm – established by Marks & Clerk director Gerald Samuel under his own name – focusing on IP litigation and transactions; this ensures it can seamlessly cross the contentious/non-contentious divide and render a cohesive service to its international clientele. Prosecution and portfolio management, however, are its mainstay, with cracking specialists on hand who impress at every turn. Microbiology PhD Chris Hemingway is “one of the stars of the regional IP scene” and “an invaluable asset to any company looking to hire an extremely experienced patent attorney”. “He is a stickler for the details and has an exemplary body of knowledge covering many industries. His sharp intellect and ability to engineer clever solutions make him a potent IP protection force, and he operates with unquestionable integrity.” He safeguards the interests of the country’s oldest university – the University of Malaya – and one of the most prolific domestic filers in MIMOS Berhad, a national IT research and development centre.
Mirandah Asia
With offices in six Association of Southeast Asian Nations member states, Mirandah is a redoubtable boutique capable of procuring and enforcing patent rights across the region. The round-the-clock availability of responsive staff and a streamlined, efficient service are key draws for clients. For many of these, the first point of contact is Patrick Mirandah, the CEO and an influential individual in the context of Malaysian IP policy making.
Pintas IP Group
Pintas IP houses one of the market’s most vibrant patent prosecution practices and a dynamic cadre of both legal and technical consultants. Prolific in processing local applications, the team also has broad international horizons and regularly files in Singapore, the United States and Europe. Meanwhile, the recent establishment of two new divisions – IP tax and corporate advisory, and IP training and events – has enhanced its patent monetisation capabilities. In this area, it is doing things differently: for example, it recently hosted several pitching sessions linking IP owners with angel investors and venture capitalists. Choon Hong Lok is always seeking new ways to add value for rights holders and, as managing partner, oversees a variety of initiatives. He also shares generously of his time and wisdom in an extracurricular capacity, particularly on the start-up scene, and his advice comes laced with real-world insight as a result. The robust IP practice at full-service law firm Rahmat Lim & Partners focuses on patent monetisation and transactions, as well as litigation and enforcement. However, it also does a sterling job managing portfolios and guiding clients through IP regulatory thickets unscathed. Head of the IP and technology group Pauline Khor never blinks in the spotlight of must-win court cases and is also a trusted strategic counsellor to many multinationals, which appreciate her business-oriented approach to IP protection.
Shearn Delamore & Co
One of Malaysia’s top commercial law firms, Shearn Delamore is also a leader in the IP space, with a deep practice going back to the late 1950s. A combination of impressive legal and technical finesse makes it a favourite of pharmaceutical originators and other life sciences companies; a major recent highlight was the firm’s appointment by Bayer as its preferred agent for patent filing and prosecution in Malaysia. Biochemist Timothy Siaw is the man Bayer turned to. He has been in the game for decades and has a well-rounded perspective, having registered, enforced and commercialised patents throughout. Karen Abraham is another name for the contact book. She heads the IP department and, though best known for her trademark enforcement and anti-counterfeiting expertise, is an adroit operator in the patent and technology space. Siaw and Abraham, along with the rest of the staff, will carry on the legacy of IP legend Sai Fong Wong, who sadly passed away in 2016.
Shook Lin & Bok LLP
Cosmopolitan full-service outfit Shook Lin & Bok takes a commercially attuned, internationally focused approach to instructions; among its Malaysian peers, it has a particularly fine-grained understanding of the Singaporean and Chinese markets, but knows what it takes to protect and enforce rights across Asia. Trademark enforcement is one of its strongest suits, but on the patent side, pay particular attention to its brilliant licensing and commercial IP exploitation practice. Much-respected counsellor and litigator Michael Soo brings strong leadership to the department. You’d be hard pressed to find a gap in SKRINE’s patent service, which is one of the most comprensive on offer from a full-service commercial outfit in the country. Intellectual property is one of three pillars of the firm (the others being corporate and dispute resolution), and the strength and depth of its specialised department set it apart on the market. SKRINE has four individuals listed in the IAM Patent 1000 – more than any of its competitors. Leading the IP division is Charmayne Ong Poh Yin, a percipient trademark expert who also has an affinity for IT and e-commerce matters. Guan Huat Khoo is the resident litigation mastermind, as well as a connoisseur of alternative dispute resolution methods, particularly arbitration. Home-grown talent Pei Yee Kuek is a steady anchor within the prosecution practice. A senior consultant with over 40 years of IP experience, Tatt Boon Lee is on hand both as a mentor and sounding board for colleagues, and as a guiding light for clients.
Tay & Partners
Tay & Partners’ IAM Patent 1000 submission came packed with high-quality prosecution, litigation and transactional work examples, painting a picture of a practice that is in great shape. Perennially popular for its appreciation of, and focus on, clients’ objectives, the team partners closely with local and foreign innovators and gets things done with a minimum of fuss. The youthful, energetic group is run by Lin Li Lee, a contentious IP and transactions maven with a rising profile. “She is very perceptive and excellent at anticipating – and countering – the moves of her opposing counsel.” Under her watch, the group is running with a rare degree of efficiency and pragmatism.
Wong & Partners
On top of retaining its gold-tier listing in the litigation and transactions table, Wong & Partners makes its debut on the prosecution table this year. Myriad Malaysian conglomerates flock to the doors of this Baker McKenzie affiliate – not least thanks to its technical aptitude and international network – and are happy to entrust it with the management of their portfolios: each year, the prosecution group’s workload continues to expand. Still, the firm remains best known for its muscular patent litigation capabilities and willingness to push boundaries. As an example, it is currently handling the first case in Malaysia to examine the common law duty of good faith in patent prosecution. When infringement allegations present grave commercial concerns, companies seek out star litigator Kherk Ying Chew, who heads the IP practice; given the ground-breaking decisions lighting up her CV, they know she will do a top job.
Wong Jin Nee & Teo
For joined-up advice on all aspects of IP creation, protection, management, enforcement and commercialisation, married with an attentive service, this boutique is a neat choice. Those with diverse portfolios encompassing patent, trademark and design rights are well served by the versatile Jin Nee Wong. Co-founder Bong Kwang Teo has an unstinting dedication to quality and ensures that the right case law and legislative provisions are put to use expeditiously and efficiently. With the help of their fellow partners and several talented associates, these two keep the firm in a healthy groove.
ZICO IP
The defining feature of Zaid Ibrahim & Co is its international network and heft; as a founding firm of the ZICO Law network, it can instantly put 170 lawyers – spread across 10 Asian jurisdictions – at the disposal of clients. Within this mighty group there is no shortage of IP talent; overseeing patent activities in the Kuala Lumpur office is Linda Wang. A solutions-oriented pathfinder, she has litigated – and won – at all levels of the Malaysian court system. Though much of her work involves conflict, she also keeps her hand in on prosecution.

Individuals: prosecution

Jern Ern Chuah - Advanz Fidelis Sdn Bhd
Chris Hemingway - Marks & Clerk (Malaysia) Sdn Bhd
Mohan K - Adastra Intellectual Property Sdn Bhd
P Kandiah - KASS International
Brian Law - Harry Elias Partnership
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
Timothy Siaw - Shearn Delamore & Co
Jin Nee Wong - Wong Jin Nee & Teo
Dave A Wyatt - Henry Goh & Co Sdn Bhd

Individuals: litigation and transactions

Highly recommended
Kherk Ying Chew - Wong & Partners
Guan Huat Khoo - SKRINE
Michael Soo - Shook Lin & Bok LLP
Recommended
Karen Abraham - Shearn Delamore & Co
Pauline Khor - Rahmat Lim & Partners
Pei Yee Kuek - SKRINE
Lin Li Lee - Tay & Partners
Gerald Samuel - Marks & Clerk (Malaysia) Sdn Bhd
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 84