Malaysia

Malaysia has been doing well on the innovation front – its ranking on the Global Innovation Index 2020 rose two spots to 33 and it is now the second most innovative among 37 upper middle-income economies, trailing behind China. The Malaysian Intellectual Property Office (MyIPO) also continues to record significant success with its patent prosecution highway programmes, which were first introduced in 2014 to expedite prosecution based on favourable examination results from four foreign patent offices (those of Japan, Europe, China and South Korea). The programmes have proved popular with foreign clients, given their ease of use and lower costs. However, local practitioners report that the patent scene has been hit hard by covid-19. Incoming filing volume has fallen and court proceedings have slowed. According to MyIPO’s statistics, foreign patent applications dropped by 20% to a little over 5,200 in 2020, even as there was a slight increase in PCT applications and the number of granted applications exploded by 75% to more than 7,300. Proposed amendments to patent laws have also taken a backseat as all attention is focused on the pandemic.

Firms: litigation

  • Shearn Delamore & Co
  • SKRINE 
  • Wong & Partners (member firm of Baker McKenzie International)
  • Shook Lin & Bok LLP
  • Tay & Partners
  • Wong Jin Nee & Teo
  • ZICO Law

Firms: prosecution

  • Highly recommended
  • Henry Goh & Co Sdn Bhd 
  • Marks & Clerk
  • Recommended
  • Adastra Intellectual Property Sdn Bhd
  • Adipven Sdn Bhd
  • Advanz Fidelis IP Sdn Bhd
  • KASS International
  • Mirandah Asia
  • Pintas IP Group
  • Rahmat Lim & Partners
  • Shearn Delamore & Co
  • SKRINE 
  • Tay & Partners
  • TEE IP SDN BHD
  • Wong & Partners (member firm of Baker McKenzie International)
  • ZICO Law

Adastra Intellectual Property Sdn Bhd

Established in 2004, Adastra Intellectual Property Sdn Bhd has drafted and filed over 2,000 patent applications in Malaysia and India for a largely domestic clientele. Not only does the IP boutique have a Chinese desk to facilitate client service, it is well versed in obtaining IP rights in Singapore and Indonesia. Throughout his two decades of experience in the IP field, founder Mohan K has mastered foreign prosecution procedures.

Adipven Sdn Bhd

For the past 20 years, ISO9001:2015 qualified Adipven Sdn Bhd has acted on behalf of domestic companies, meeting their patent prosecution needs from its office in Kuala Lumpur. Managing director Ramakrishna Damodharan enjoys the distinction of being the first registered Malaysian geographical indications agent.

Advanz Fidelis IP Sdn Bhd

Geared towards an international client base, Advanz Fidelis IP Sdn Bhd offers the full gamut of IP services from prosecution to dispute resolution, as well as IP commercialisation and education. Staffed by 25 IP professionals, the boutique is part of Australian holding company QANTM Intellectual Property Group. Aside from coming up with strategies to integrate intellectual property and business goals, CEO Jern Ern Chuah advises the Sarawak state government on IP issues. “Extremely client-focused and always attentive to client needs,” Debbie David captains the patent team with panache, ably supported by division head and biotech specialist Andrew Yee, who is comes into his own when drafting and prosecuting patents.

Henry Goh & Co Sdn Bhd 

The largest patent filing practice in town, Henry Goh & Co Sdn Bhd lays claim to the highest number of ranked individuals in the Malaysia chapter. Acknowledged by peers as “established IP specialists” who are “very good in what they do”, the patent prosecution powerhouse is often called upon by local law firms for its expert patent opinions, while clients increasingly seek it out for advice on contentious matters. Operating seamlessly across Malaysia, Singapore and Brunei, the firm drafts and prosecutes patents for a predominantly foreign clientele, holding steady with a significant market share despite the covid-19 pandemic. It recently added two newly registered patent agents to make a total of 13 in its ranks. Backed by in-house and private practice experience in London and Munich, Dave A Wyatt is a regular patent attorney expert witness in Malaysian courts. Patent supervisor Yen Yen Oon excels in the microbiology space, while electronic and electrical engineer Jason Cheah captains the industrial designs group. No stranger to drafting patent specifications, Alvin Boey specialises in mechanical engineering.

KASS International

KASS International provides a one-stop shop for IP services from offices across Southeast Asia – besides its headquarters in Kuala Lumpur, it has outposts in Singapore, Indonesia, Myanmar, Thailand and Vietnam manned by a diverse group of IP professionals. With over three decades of experience under his belt, founder P Kandiah has unparalleled knowledge of the local IP landscape.

Marks & Clerk

Since opening an outpost in Kuala Lumpur over a decade ago, the Malaysian branch of UK patent firm Marks & Clerk remains “strong in inbound patent filings”. The local team is backed by a wealth of patent drafting expertise – especially in the fields of life sciences, information technology and electronics – nestled in a diverse team that speaks more than 10 languages and dialects. A “hardcore patent prosecution lawyer”, Chris Hemingway is also a chartered UK and European patent attorney, as well as holding a PhD in microbiology. Gerald Samuel takes charge on the IP litigation and transactions front.

Mirandah Asia

Prosecuting applications for foreign companies across industries is bread and butter for Mirandah Asia. The regional IP firm boasts outposts scattered across Southeast Asia and one in India, with a team of eight on the ground in Malaysia that are receiving a rising number of instructions on patent drafting briefs by local research and academic institutions, particularly those specialising in nanotechnology. A registered patent attorney in Malaysia and Singapore, CEO Patrick Mirandah backs up his considerable experience with training in mechanical engineering.

Pintas IP Group

Through five offices dotted around Malaysia and offices overseas – including Singapore, Brunei and Myanmar, as well as outposts in the United States and China – Pintas IP Group makes it a point to work closely with its clients on the ground. Staffed by five patent agents and 10 patent engineers, the patent department is one of the around, drafting over 150 patent specifications annually and training local R&D teams on intellectual property. Since the firm set up a deep tech accelerator with venture capital management firm AIPO Capital LLP in 2020, it has been working closely with government-backed accelerators and university tech transfer offices on IP commercialisation. CEO Choon Hong Lok is the mastermind behind this new direction. Active in angel capital investment, he is also the founder of the Association of Intellectual Property Entrepreneurs and Organisations.

Rahmat Lim & Partners

A full range of IP services greet clients at Rahmat Lim & Partners. Whether it is IP portfolio management, IP commercialization or, more recently, freedom-to-operate opinion work, the Malaysian associate firm of Singapore’s Allen & Gledhill is no stranger to the patent needs of multinationals, including the likes of Tencent Technology, LG Chem and Taiho Pharmaceutical. Pauline Khor holds the reins of the IP and technology department. Presiding over a team of 15, she has been advising Sime Darby Plantation Berhad on its patent needs for many years, acting as point of contact for more than 100 patents in a group restructuring exercise.

Shearn Delamore & Co

Topping the patent litigation table, Shearn Delamore & Co has the wherewithal to establish, monetise and safeguard patent portfolios with alacrity. “A leading IP firm,” it boasts a cradle-to-grave IP offering, including a large and extensive patent prosecution practice staffed by an extensive IP team, and is known for attracting top pharmaceutical companies to its doors. Ever ready to provide “bespoke advice to a range of Asian clients seeking global IP protection”, Timothy Siaw straddles the contentious and non-contentious divide effortlessly by drawing upon nearly 30 years of experience. Making his debut in the IAM Patent 1000 this year, Indran Shanmuganathan is the person to call for complex patent litigation matters. Not only is he “bright, articulate, flexible and highly knowledgeable in Malaysian law”, the silver-tongued sharpshooter is “experienced and well-known for IP litigation”. A familiar face in local courts, he often acts on behalf of Malaysian entities such as Asia File Products Sdn Bhd and Sinowaja. For companies in the healthcare and life sciences industries, dual-qualified biochemist and lawyer Zaraihan Shaari is someone you want on speed dial. A foreign associate cannot help but sing her praises: “I really appreciate Zaraihan’s work and the final report she provides, which is comprehensive, detailed and pretty suggestive.” “Responsive and experts in their field, Zaraihan and her team played a very important part of a global strategic piece for a major international client.” Shaari recently teamed up with Shanmuganathan in a landmark patent infringement case for Merck Sharp and Dohme Corp against Hovid Bhd – the first time that the Federal Court overruled its own decision for an IP case. Michelle Loi is another “competent litigator who is growing in court experience”.

Shook Lin & Bok LLP

At full-service law firm Shook Lin & Bok LLP, managing partner Michael Soo runs a tight ship, with an IP, information technology and licensing department that focuses on licensing and franchising. Soo has a formidable presence in the local IP scene – he used to preside over the Malaysia Intellectual Property Association and now chairs the Malaysia country group of the Asian Patent Attorneys Association.

SKRINE 

Providing the full gamut of patent services to a host of domestic and foreign companies across industries, SKRINE sits comfortably at the apex of the litigation table. The only Malaysian law firm to be part of the Lex Mundi network, it has a well-staffed ensemble of seven IP partners ever ready to tackle all manners of patent problems with Charmayne Ong Poh Yin – a “competent and experienced” well-rounded IP practitioner – taking the wheel of the IP and technology, media and telecommunications departments. A peer cannot help but sing her praises: “Charmayne has been practising in the IP area for many years and has mastered different areas of IP practice, including litigation, IP commercialisation, and all facets of IP registration. She has the uncanny ability to pick out the most intricate transactional issues that come up in a technology project and present it in the most logical and persuasive manner.” Armed with over three decades of experience, an eye-popping track record and “good knowledge of the law”, Guan Huat Khoo enjoys a stellar reputation in the local IP community. “Guan Huat is a very respected litigator for intellectual property and patent matters.” “He is a well-known IP litigator with a very wide and prolific experience in other areas, such as arbitration and commercial litigation. Not only does he have a good grasp of complex issues in an IP dispute, he is well regarded in complicated cases and very pleasant to work with.” With Khoo leading the disputes team, fellow litigators such as Pei Yee Kuek are racking up wins in the courtroom. They are both representing Nuctech and Tsinghua University in a patent infringement dispute, while Kuek is also acting on behalf of Duopharma in a patent dispute against Novartis SA.

Tay & Partners

Commercial law firm Tay & Partners serves up an extensive menu of IP services to clients of all stripes. Foreign associates and multinational corporations – particularly blue-chip companies such as Guangdong Oppo, Suntory and Nuctech – rely on the compact team to prosecute patents, while others look to the firm to protect and enforce their IP rights. As its Chinese client base grows, the IP practice is expanding its life sciences and healthcare practice and attracting more technology clients. Versatile IP operator Lee Lin Li oversees the lively, nearly all-female IP department. Having resolved a patent dispute for Celltrion against F Hoffman La-Roche AG, she continues to represent Kingtime International Limited in a patent infringement suit against Petronas Carigali Sdn Bhd at the High Court.

TEE IP SDN BHD

A decade since being established, TEE IP SDN BHD has flourished into an IP boutique of six patent professionals stationed at two offices in Malaysia to serve the needs of domestic companies. Much of the firm’s success can be attributed to founder Lin Yik Tee, who is knowledgeable about every facet of intellectual property, from patents and industrial designs to trademarks and copyrights.

Wong & Partners (member firm of Baker McKenzie International)

Baker McKenzie member firm Wong & Partners is a top choice for foreign companies, particularly those in the technology and pharmaceutical industries, saddled with contentious patent problems in Malaysia. From registering patents or enforcing IP rights, the patent team always ensures that clients can find the best solution to meet their business needs. Commercially minded litigator Kherk Ying Chew helms the IP department with aplomb.

Wong Jin Nee & Teo

Compact and nimble best describe Wong Jin Nee & Teo, an IP boutique that thrives on patent dispute resolution and patent licensing. It is also equally adept when it comes to filing and prosecuting patents, working closely with external drafters to prepare specifications. Jin Nee Wong shines on the prosecution front, with Bong Kwang Teo leading the patent and litigation teams. Wong is described by a peer as “a leading light in the Malaysian IP scene and very vocal in IP associations”, while Teo is busy in the courtroom. Currently, he is representing YKL Engineering Sdn Bhd in a patent and copyright infringement case before the High Court.

ZICO Law

“Zico Law has a wide network of professionals, which allows them to assist their clients in their IP requirements in several jurisdictions. They are very responsive and helpful in answering queries and assisting their client’s needs.” Through offices in every Association of Southeast Asian Nation country and a nimble team of 13 patent professionals – including two technically patent attorneys – manning the Kuala Lumpur office, the full-service law firm is a one-stop shop for patent services. It can provide IP litigation support as easily as it drafts and prosecutes patents for a largely foreign clientele. Aside from managing Terumo Corporation’s patent portfolio, IP captain Linda Wang is advising Biocon in a patent invalidation action against Sanofi before the High Court.

Other recommended experts

“Very well-versed in patent laws,” Cindy Goh Joo Seong is recognised by peers as “a good litigator and very worthy opponent”. She operates out of Chooi & Company + Cheang & Ariff. At LAW Partnership, Brian Law and Suaran Singh Sidhu, together with the recent addition of Ameet Kaur Purba, make a formidable team, which covers all bases in contentious and non-contentious patent matters. While Law negotiates joint venture agreements and prosecutes patents all over the world for Mega Fortris Group, Sidhu protects the IP rights of companies across industries. Making her debut in the IAM Patent 1000 this year, Caroline Francis leads a substantial patent filing practice at Ram Caroline Sha & Syah, formerly known as RamRais & Partners. No list would be complete without Ambiga Sreenevasan of Sreenevasan Advocates & Solicitors, a senior counsel and human rights lawyer held in high regard by the local legal community.

Individuals: litigation

  • 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
  • Cindy Goh Joo Seong - Chooi & Company + Cheang & Ariff
  • Pei Yee Kuek - SKRINE
  • Lee Lin Li - Tay & Partners
  • Gerald Samuel - Marks & Clerk
  • 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

Individuals: prosecution

  • Alvin Boey - Henry Goh & Co Sdn Bhd 
  • Jason Cheah - Henry Goh & Co Sdn Bhd 
  • Jern Ern Chuah - Advanz Fidelis IP Sdn Bhd
  • Ramakrishna Damodharan - Adipven Sdn Bhd
  • Debbie David - Advanz Fidelis IP Sdn Bhd
  • Caroline Francis - Ram Caroline Sha & Syah
  • Chris Hemingway - Marks & Clerk
  • Mohan K - Adastra Intellectual Property Sdn Bhd
  • P Kandiah - KASS International
  • Pauline Khor - Rahmat Lim & Partners
  • Brian Law - LAW Partnership
  • 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 IP SDN BHD
  • Jin Nee Wong - Wong Jin Nee & Teo
  • Dave A Wyatt - Henry Goh & Co Sdn Bhd 
  • Andrew Yee - Advanz Fidelis IP Sdn Bhd