It has been an eventful year for the Malaysian IP scene. The authorities’ institution of a Patent Prosecution Highway programme with China commenced in July 2018, which complements similar existing arrangements with the Japan Patent Office and the EPO, and makes it far easier for rights holders with a granted Chinese patent to quickly register it in Malaysia. However, progress has been slow in other areas of international patent cooperation. Although the Comprehensive and Progressive Trans-Pacific Partnership – a treaty designed to harmonise trade across 11 economies on both sides of the Pacific Ocean – is now in force within the seven countries that have thus far ratified the agreement, the Malaysian authorities are seemingly in no hurry to put pen to paper. In the wider IP market, there have been significant developments: the acquisition of Advanz Fidelis by Australian holding entity QANTM Intellectual Property (which itself is soon to merge with Xenith IP Group) has shaken up the balance of power. In the face of such consolidatory moves, law firms and patent agencies alike have ramped up their search for new scientific and engineering talent, competing fiercely to attract the very best legal and technical know-how the country has to offer.
Firms: litigation and transactions
- Shearn Delamore & Co
- Wong & Partners (member firm of Baker McKenzie International)
- Shook Lin & Bok LLP
- Tay & Partners
- Wong Jin Nee & Teo
- ZICO Law
- Rahmat Lim & Partners
Advanz Fidelis has a knack for extracting commercial value from innovation through its attentive client service and “top-notch work” across the entire IP lifecycle. The practice has recently been acquired by the Australian holding company QANTM Intellectual Property Limited, which was presumably impressed by the set’s ever-growing local following, “remarkable” Chinese and Japanese client base and domestic ambition. The set also prides itself on its “sharp business acumen and the ability to do old things in new ways” – which, coupled with “collegiate working relationships with government departments”, keeps clients coming back for more. The arrival this year of three technical consultants has further bolstered the team’s bench strength, but Debbie David and Jern Ern Chuah are still the names to remember. Highly regarded for her responsiveness and ever-reliable advice, David now heads Advanz Fidelis’s patent department. Founder and CEO Chuah is a far-sighted strategist who is also a certified IP valuer in Malaysia.
With 11 registered patent agents of all technical hues under its roof, Henry Goh boasts one of the deepest reservoirs of IP-related expertise in the country. Multinationals from the Far East, Europe and the United States are among those who take full advantage of the firm’s broad offering – 2018 saw its highest-ever market share in the country. Henry Goh is also a popular choice with local law firms in need of expert patent opinions. Yen Yen Oon and Dave A Wyatt are two of the set’s most prominent attorneys. Armed with degrees in law and microbiology, Oon steers the patent department’s operations with a sure hand. Wyatt channels experience gained in-house at General Electric Company and at leading London and Munich patent agencies into the crystalline expert opinions for which he is well respected throughout Malaysia.
KASS International’s strength lies in its outstanding six-person team of patent practitioners. The firm ably covers a multitude of technical areas, from electronics through to chemistry and biotechnology, and projects a strong presence in the Association of Southeast Asian Nations (ASEAN) by virtue of bureaux in Singapore, Indonesia and Myanmar. The practice is led by P Kandiah, a patent, trademark and design sage who has spent the last three decades refining his chemical and mechanical prowess.
Marks & Clerk
The market views Marks & Clerk’s Malaysian office very highly indeed, with one peer making it clear that “one expects, and finds, great quality” whenever the patent agency is enlisted. The UK-headquartered firm has myriad offices in East Asia – notably in Beijing, Hong Kong, Singapore and Kuala Lumpur – and also offers an Asia-Pacific portal through which clients can send instructions to cover the Indian subcontinent and ASEAN region. A UK, European and Malaysian patent attorney with a PhD in microbiology, Chris Hemingway is an absolute authority on life sciences matters. His capabilities are not confined to the drafting desk, with one client noting that “whenever he is commissioned as an expert witness in a patent litigation, his insights are invariably valuable”. Hemingway’s colleague Gerald Samuel is a thoroughbred litigator admitted before the courts of Malaysia and Singapore. The firm he founded in 2015, Messrs Gerard Samuel, works closely with Marks & Clerk to provide seamless assistance to clients across Malaysia.
One of the most trusted names in Asian intellectual property, Mirandah Asia boasts impressive geographical coverage with 11 offices distributed over the 10 ASEAN countries plus India. As one peer sums up: “The firm offers an attractive regional package, across difficult jurisdictions where the quest to find good agents can be very challenging.” Dual qualified in Malaysia and Singapore, founder Patrick Mirandah “remains the star of the show”; his mechanical engineering acumen is well recognised across southeast Asia.
Pintas IP Group
The Pintas IP Group takes a broad approach towards protecting and monetising intellectual property. In addition to its core patent prosecution practice, the agency also has stellar experience helping rights holders to obtain financing via its own angel investment pitching sessions and IP securitisation. Pintas also offers in-house training to its clients’ R&D staff to help improve their understanding of patentability and best practice – a service which enjoys an ardent following among Japanese corporates. On top of all this, the set was recently awarded a licence to manage venture capital funds. Pintas’s prosecution arm comprises five patent agents and 10 patent engineers, who collectively draft between 20 and 30 patents each month for a mix of leading universities and private clients. Managing partner Choon Hong Lok is an enterprising lawyer and patent agent who lives and breathes IP commercialisation initiatives. He serves as treasurer of the Malaysian Business Angel Network.
Rahmat Lim & Partners
As the Malaysian associate firm of Singapore’s Allen & Gledhill, Rahmat Lim & Partners has the regional connections to establish, monetise and safeguard patent portfolios in a seamless and far-reaching manner. The outfit’s forte is its sublime management of large-scale, global portfolios – which it carries out on behalf of some of Malaysia’s biggest natural resource players, including oil and fat producer Sime Darby Plantation Berhad – while its partners have the expertise and local contacts necessary to file in the farthest-flung corners of the world, with some recent work having taken place in the South Pacific island of New Caledonia. At the helm of the IP and technology department is the versatile Pauline Khor, who shines equally brightly in strategic, contentious and transactional mandates.
Shearn Delamore & Co
“Shearn Delamore stands out in the market for its commitment to professionalism and client service. Its attorneys are attentive to patrons’ needs and are very easy to work with.” The national outfit is going from strength to strength at the moment; it turns out a sizeable share of the total number of patents prosecuted in Malaysia and has taken on two new associates in the past year to meet the surging demand for its services. Foremost among its team of technically qualified practitioners is internet and e-commerce guru Timothy Siaw. A deft drafter, he is also routinely called upon to supply complex patent licensing and infringement analyses. His partner Zaraihan Shaari is both a former biochemist and a barrister, qualified to practise in England and Wales. She is a rock-solid choice for biotech drafting and prosecution instructions of all hues. Indran Shanmuganathan is a contentious ace who works on the firm’s hardest-hitting courtroom instructions. Recently, he has been busy advising pharmaceutical giant Merck Sharp and Dohme before the High Court in a complex and wide-reaching action that looks set to make its way to the very top of the Malaysian chain of justice.
Shook Lin & Bok LLP
The IP, IT and licensing department at full-service offering Shook Lin & Bok may not be as big as those of some of its larger competitors, but it punches well above its weight due to a laser focus on litigation and desire for quality. The practice is spearheaded by managing partner Michael Soo who, as “one of the pioneers in Malaysian intellectual property, has been on the scene for over 30 years”. He is known as a percipient advocate with a stellar track record in the courtroom and an extensive industry contact book, having served as president of both the Malaysian Intellectual Property Association and the Asian Patent Attorneys Association.
“Skrine has considerable technical and legal depth, as well as the workflow required to sustain a winning practice.” The firm’s IP division is an integral part of its wider commercial practice and offers patrons the chance to fulfil all their IP protection, licensing and enforcement needs under one roof. The outstanding work that Skrine produces is a result of its deep bench of talent. Charmayne Ong Poh Yin leads the IP and technology, media and telecoms departments. A patent and trademark virtuoso, she has superb sectoral knowledge across a wide range of industries – including the pharmaceutical, manufacturing and oil and gas arenas – and extensive experience in dealing with regulators and public bodies. On the contentious side of the practice, “seriously good litigators” Guan Huat Khoo and Pei Yee Kuek are a dynamic duo. The pair recently combined to secure a victory on behalf of Nuctech and Tsinghua University in a three-year High Court dispute over the infringement of their cargo inspection system by Billion Prima and Pan Asiatic Technologies.
Tay & Partners
Young and dynamic outfit Tay & Partners’ star is on the rise. The patent prosecution team has expanded over the past year in order to deal with a significant uptick in patent filings, a trend largely driven by the firm’s new Chinese and Japanese patrons. Tay & Partners can manoeuvre in almost any technical area a client might name – as evidenced by its activities in the manufacturing, healthcare, chemicals, electronics and oil and gas sectors of late. When matters become contentious, the firm’s courtroom team springs into action with characteristically “practical and commercially feasible solutions”. Leeds-educated IP and technology group leader Lee Lin Li is adept in many different spheres of intellectual property; her “proactive style” and meticulous scrutiny are well received by clients.
Wong & Partners (member firm of Baker McKenzie International)
This year, Baker McKenzie member firm Wong & Partners celebrates its 20th anniversary and also makes its debut in the IAM Patent 1000 prosecution rankings. Distinguished by its full-spectrum patent service, the firm’s Kuala Lumpur office is an established favourite among multinational players and is quickly becoming a darling of smaller technology companies too. Wong & Partners is one of the few elite Malaysian law firms to possess on-site drafting capabilities; it also draws from the technical nous invested in Baker McKenzie’s wide network of Asia-Pacific offices. Practice head Kherk Ying Chew is a high-powered litigator who commands immense respect from her competitors. The World Trade Institute-accredited IP valuer frequently collaborates with the firm’s M&A practice group to conduct outstanding due diligence on IP-rich corporate transactions. Newly ranked biotech buff Kimberly Liam is another key contact. She manages her patent portfolios meticulously and never fails to maximise returns on behalf of her stable of clients.
Wong Jin Nee & Teo
Nimble IP boutique Wong Jin Nee & Teo is a permanent fixture on the country’s complex patent disputes scene, with a gift for commercialising patent portfolios. Heading the litigation and patent department with verve, Bong Kwang Teo has been honing his craft for more than 30 years. His partner Jin Nee Wong is a certified IP valuer and licensing guru with a knack for alternative dispute resolution.
The only law firm with offices in every ASEAN country, ZICO Law offers rights holders a potent mix of technical knowledge and legal insight. The firm is in expansion mode: a recent influx of new patent associates and consultants has broadened its technical scope to include biotech, electrical engineering and information technology. A simultaneous series of upgrades to the outfit’s internal systems promises even greater efficiency and cost savings for clients, which currently include Colgate-Palmolive Company and Unicharm Corporation. Malaysian advocate and English barrister Linda Wang heads up the IP department with poise; the contentious ace is a force to be reckoned with in the courtroom and possesses extensive mediation experience to boot.
Other recommended expertsAdastra Intellectual Property’s managing director Mohan K is a font of knowledge when it comes to domestic and foreign patent prosecution. Educated in the United Kingdom, he has practised in Malaysia for 19 years and honed his IP skills to a fine edge. Chooi & Company + Cheang & Ariff’s Cindy Goh Joo Seong earns a place in the IAM Patent 1000 off the back of her “stellar litigation track record”. She is a commercial and IP litigator with extensive mediation experience in Malaysia and Italy. Newly minted in the guide, Suaran Singh Sidhu has been engaged in a plethora of patent invalidation cases this year. He plies his trade at LAW Partnership, as one of three partners that make up the Eversheds Sutherland relationship firm. Ambiga Sreenevasan is a “high-powered litigator” who works out of Sreenevasan Advocates & Solicitors. Her work in the field of human rights has garnered her numerous international honours, including the US secretary of state’s International Women of Courage Award and the French government’s Légion d’Honneur. Lin Yik Tee is another new entrant to the guide. The founder and CEO of Tee Intellectual Property has spent the past few years building up an outstanding domestic client base and is rapidly gaining prominence in the market.
Individuals: litigation and transactions
- Kherk Ying Chew - Wong & Partners (member firm of Baker McKenzie International)
- Guan Huat Khoo - Skrine
- Timothy Siaw - Shearn Delamore & Co
- Michael Soo - Shook Lin & Bok LLP
- Pauline Khor - Rahmat Lim & Partners
- Pei Yee Kuek - Skrine
- Lin Li Lee - Tay & Partners
- Gerald Samuel - Marks & Clerk
- Cindy Goh Joo Seong - Chooi & Company + Cheang & Ariff
- Indran Shanmuganathan - Shearn Delamore & Co
- Suaran Singh Sidhu - LAW Partnership
- Ambiga Sreenevasan - Sreenevasan Advocates & Solicitors
- Bong Kwang Teo - Wong Jin Nee & Teo
- Linda CL Wang - ZICO Law
- Jern Ern Chuah - Advanz Fidelis IP Sdn Bhd
- Debbie David - Advanz Fidelis IP Sdn Bhd
- Chris Hemingway - Marks & Clerk
- Mohan K - Adastra Intellectual Property Sdn Bhd
- P Kandiah - KASS International
- Kimberly Liam - Wong & Partners (member firm of Baker McKenzie International)
- Choon Hong Lok - Pintas IP Group
- Patrick Mirandah - Mirandah Asia
- Charmayne Ong Poh Yin - Skrine
- Yen Yen Oon - Henry Goh & Co Sdn Bhd
- Zaraihan Shaari - Shearn Delamore & Co
- Timothy Siaw - Shearn Delamore & Co
- Lin Yik Tee - Tee Intellectual Property
- Jin Nee Wong - Wong Jin Nee & Teo
- Dave A Wyatt - Henry Goh & Co Sdn Bhd