The outlook for Malaysia’s patent scene is marred by economic uncertainty. While contentious work is stable, domestic industries have been feeling the pinch and as a result, have tightened their purse strings; the resulting drop in filings has put a damper on short-term prospects for IP agencies and law firms. Silver linings can be found in a recent influx of international applications, which is going some way towards compensating for the domestic decline. Opening its doors to European rights holders, the IP Corporation of Malaysia has rolled out a Patent Prosecution Highway pilot with the European Patent Office, seeking to replicate the success of a similar agreement with Japan; it recently extended the latter programme for a further three years. Despite the United States’ withdrawal, the Trans-Pacific Partnership is going ahead – albeit in a slightly modified form. Retitled as the Comprehensive and Progressive Agreement for Trans-Pacific Partnership, the agreement removes several IP provisions relating to pharmaceutical patents.
Firms: litigation and transactions
Malaysian IP stalwart Advanz Fidelis is an “astute commercial operation” that appeals to both domestic small and medium-sized enterprises and international powerhouses. The team’s unwavering pursuit of quality is paying off; a boom in inbound instructions has driven increasing demand for its services in patent filing, infringement analyses and freedom-to-operate searches, while the contentious arm of the practice is also expanding at a healthy rate. With 20 years of experience under his belt, deft strategist and CEO Jern Ern Chuah is a safe pair of hands; he provides sound counsel across the whole spectrum of patent services.
Boasting “an impeccable reputation and highly qualified personnel, Henry Goh & Co is a trustworthy partner to rights holders”. Defined by its resolute focus on consumer service, profound technical nous and ambition to secure the most comprehensive protection possible, the globally attuned practice ably prosecutes patents nationally and before the world’s major patent offices. Marking four decades in business in 2017, the firm celebrated by expanding its international business development efforts and recruiting a new patent attorney specialising in electrical engineering and electronics matters. Spearheading these efforts, patent manager Yen Yen Oon is a trusted source of expertise to both colleagues and clients. Her rational approach makes her a formidable force in third-party opposition proceedings. By her side, Dave A Wyatt directs the set and is deeply embedded in the Malaysian patent landscape; he is a familiar face in court as an expert witness. Extensive in-house and private practice experience in London and Munich informs his precipitous counsel.
With offices across the Association of Southeast Asian Nations (ASEAN), KASS International is a one-stop shop for securing iron-wrought patent protection. The local office is a superb prosecution outfit; start-ups particularly value its sophisticated guidance on commercial strategy, although it assists clients of every hue in realising the value of their patent portfolios. P Kandiah founded and directs the firm; he is a chemistry and chemical engineering guru intimately familiar with the intricacies of various Asian IP systems and an expert in harmonising applications to boot. He also provides well-rounded advice on infringement and validity matters.
Marks & Clerk (Malaysia) Sdn Bhd
As part of its pan-Asian footprint, Marks & Clerk boasts a highly acclaimed prosecution practice in Malaysia, staffed by a solid team of practitioners adept across a wide range of technologies. With a particular emphasis on life sciences, IT and electronics operations, Chris Hemingway channels his refined approach to draft winning applications for international companies. A microbiologist by training, he is qualified to practise before the Malaysian Intellectual Property Office, the UK Intellectual Property Office and the European Patent Office. Contentious and transactional briefs are handled by an affiliated outfit owned and run by director Gerald Samuel, an IP litigator qualified in Malaysia and Singapore with 20 years of experience.
A dedicated ally for ASEAN rights holders for over 30 years, Mirandah offers cost-effective portfolio management, litigation support and freedom-to-operate search services within the region. The considerable volume of instructions receives from large multinationals can be attributed to its strong ties with foreign associates, for whom the firm is a resolute partner and well-positioned gateway to the region. A major magnet for the outfit’s following, co-founder and CEO Patrick Mirandah is a name to remember; based out of the Kuala Lumpur headquarters, the mechanical engineering scholar is qualified to practise as a patent attorney in Malaysia and in Singapore. His oversight is credited with fostering the firm’s excellent standing in the ASEAN IP scene.
Pintas IP Group
With a devoted following of national universities and research institutions, adaptable prosecution shop Pintas IP has recently moved into rights protection for medium and large commercial entities. Ably prosecuting a technically diverse array of patents in key jurisdictions, the side has upped the ante by rolling out new commercially focused services; its freshly minted IP training and events division utilises government grants to provide top-notch instruction for R&D-intensive companies seeking added-value from their creations. Recently, the set has also established a venture capital firm to nurture IP rich companies and facilitate monetisation. Managing partner Choon Hong Lok is behind this shift in strategy; the business-minded advocate and patent attorney is a dab hand at realising the value of innovation.
Full-service law firm Rahmat Lim & Partners is a tantalising option for high-profile multinationals seeking nationwide and regional coverage; it is supported in the latter by Singaporean IP stalwart Allen & Gledhill alongside a vast network of foreign associates. Famed for its talents in prosecution and transactional briefs, the firm’s endeavours are led by IP head Pauline Khor. A versatile and adroit prosecutor and IP strategist who always maintains a focus on the big-picture, she boasts an enviable record before the national courts too, championing her devotees’ rights in enforcement and litigation proceedings.
Shearn Delamore & Co
With no shortage of instructions flowing its way, the top-flight patent practice at Shearn Delamore shines equally bright in both contentious and non-contentious realms. A beacon for international pharmaceutical concerns, the firm maintains exclusivity over Bayer’s prosecution requirements in the country, while also representing Merck Sharp & Dohme in ongoing infringement and appeal proceedings against Malaysian outfit Hovid Berhad. Quality is guaranteed by the careful stewardship of Karen Abraham – a silver-tongued trial virtuoso who never falters, even in the most challenging situations. Working alongside Abraham, Timothy Siaw is immensely popular with the outfit’s life sciences fans thanks to his biochemistry background and the 20 years he has spent practising as an IP lawyer andpatent attorney. Lately, Gilead Sciences commissioned him to negotiate on their behalf with no less than three government departments over compulsory licensing arrangements for its Hepatitis C medicine.
Shook Lin & Bok LLP
A well-established presence in the Malaysian legal community, home-grown operation Shook Lin & Bok runs a “highly respected enforcement practice”. A full-service backing and international orientation make it an excellent choice for regional portfolio management needs. In recent years, the IP division has gone from strength to strength and was recently bolstered by the promotion of one of its key associates to partner early last year. The practice is helmed by Michael Soo, widely regarded to be “one of the country’s top IP litigators”. The managing partner is a mastermind across all sub-sets of intellectual property and deservedly sports the captain’s armband in courtroom clashes.
Lex Mundi and Pacific Rim Advisory Council member SKRINE delivers a cradle-to-grave service, tackling contentious and non-contentious mandates with equal finesse. In the former, Guan Huat Khoo and Pei Yee Kuek make up a dynamic duo; the pair recently represented Nuctech Company Limited and China’s Tsinghua University in a High Court infringement suit relating to a drive-through cargo scanning system. Khoo chairs the IP litigation group and is in high demand for his “excellent advocacy skills”. Keuk is a quick-witted litigator whose practice also encompasses patent prosecution matters. Providing both insight and hard-earned wisdom, Tatt Boon Lee has spent 40 years atop the Asia Pacific IP litigation scene. Now a consultant at the firm, he earned his stripes as a barrister in the United Kingdom. Recently promoting one of its transactional specialists to partner, SKRINE is sought-after for its talents in this area. Heading up such efforts, team leader Charmayne Ong Poh Yin is a licensing maven who brings a business-oriented approach to concluding high-profile agreements.
Tay & Partners
A small but perfectly formed IP practice embedded within a full-service law firm, Tay & Partners positions itself as a panacea for any patent problems. Its practitioners steer clients effortlessly through both courtroom clashes and challenging prosecution briefs. With prowess stretching across the telecoms, pharmaceuticals, automotive and electronics realms, the firm holds considerable appeal for major operations Nuctech and ZTE. A smooth operator in the prosecution, litigation and transactional theatres, Lin Li Lee presides over this bustling patent practice. “She is excellent during trial preparations and extremely effective in court.”
Wong & Partners (member firm of Baker McKenzie International)
One of the few offerings on the Malaysian patent scene with the capacity to perform a full prosecution service in-house, Baker McKenzie group member Wong & Partners holds a commanding presence on Malaysia’s patent scene. Its legion of technically qualified patent executives undertakes original patent drafting and novelty searches for some of the world’s most recognisable automobile, pharmaceuticals and household goods manufacturers. Channelling the all-around faculties of the international group, the set operates a fully armed litigation machine and as a result is a go-to destination for high-profile courtroom clashes. A champion across all aspects of rights protection, Kherk Ying Chew comes highly recommended as an eloquent litigator respected for her ability to prevail in the most challenging cases.
Wong Jin Nee & Teo
Assiduous and flexible, Wong Jin Nee & Teo has experienced a significant surge in the number of complex patent litigation instructions being thrown its way. The esteemed set has kicked its prosecution practice into a higher gear too, offering a new patent drafting service. Providing a multi-faceted service, the firm is routinely commissioned to lobby the government on issues relating to intellectual property – a task that falls to Jin Nee Wong. Responsible for the non-contentious side, Wong is an astute portfolio manager. Heading the litigation and patent teams is Bong Kwang Teo, a fierce advocate who fights tooth and nail for courtroom victories.
Malaysia’s largest IP firm and one of the few to maintain an outpost in every ASEAN member state, ZICO delivers an A-to-Z patent service. Its regional focus makes the firm a discerning choice for both domestic concerns and international companies; it manages a number of major national and regional patent portfolios, most notably that of Colgate-Palmolive. The team brings a keen commercial outlook to every encounter and has recently concluded a number of major technology transfer and commercialisation agreements. Linda Wang runs the ZICO show with confidence; the patent practice head is widely revered for her incisive counsel and stellar courtroom performances.
Other recommended expertsThose on the look-out for a comprehensive and cost-effective patent service would struggle to do better than Adastra Intellectual Property’s director Mohan K. Now a co-director of KDJLaw’s IP and technology practice, ex-Wong & Partners man Brian Law is quickly developing a strong regional practice. Active in both Malaysia and Singapore, he represents the interests of major rights holders in the electronics and engineering industries. A former partner at one of Malaysia’s biggest law firms, Ambiga Sreenevasan is well known on the national IP scene for her impressive litigation talents. Qualified to practise as a barrister in the United Kingdom and as a solicitor in Malaysia, she is a sought-after counsel at eponymous firm Sreenevasan Advocates & Solicitors.
Individuals: litigation and transactions
- Kherk Ying Chew - Wong & Partners (member firm of Baker McKenzie International)
- Guan Huat Khoo - SKRINE
- Michael Soo - Shook Lin & Bok LLP
- Karen Abraham - Shearn Delamore & Co
- Pauline Khor - Rahmat Lim & Partners
- Pei Yee Kuek - SKRINE
- Brian Law - KDJLaw
- 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
- 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
- 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