Intellectual Property & ICT

 

We maximise clients’ IP portfolios to build a competitive edge in the marketplace.

 

Lee Hishammuddin Allen & Gledhill adopts a holistic approach to IP, where assisting its domestic and international clients in managing, protecting, exploiting and enforcing their IP rights is concerned. Our seasoned team of patent agents, litigators and commercial lawyers work closely with in-house counsel to deliver practical solutions to the most complex of IP issues.

Our services run the gamut of portfolio management, intellectual asset management, anti-counterfeiting programs, transactional and advisory work, and dispute resolution at all levels of the court system including the appellate courts.

Our clients include top-ranked local conglomerates and MNCs spanning industries such as IT, e-commerce, telecommunications, biotechnology, healthcare, entertainment and FMCG.

 

Our services

Brands and Marketing Property


We assist clients in developing and protecting the value of their marketing indicia through the following services:

      Selection

  • Assessment of the risk of any proposed new brands in brand selection.
  • Availability searches, registrability analysis and counselling.
  • Investigation of potentially conflicting marks.
  • Selecting protectable and effective names for new products, services and businesses.
  • Procurement of registration domestically and worldwide.


      Developing Brand Strategies

  • Domestic and international filing.
  • Trademark watching and policing.
  • Development of proper-use guidelines and standards.
  • Product literature, packaging, labelling and advertising review.
  • Developing and securing rights in copyrightable work.
  • Brand protection strategies.
  • Comparative advertising and use counselling.



Inventions and Technology

 

  • Filing and prosecuting patent and industrial design applications.
  • Counselling on strategies for use and management of patents and designs including competitive mapping.
  • Confidentiality and trade secret programs including negotiation and drafting of employment, consulting, non-competition and assignment of inventions agreements.
  • Audits of existing trade secret protection programs and the development of new programs to handle unsolicited ideas and inventions.



Transactional and Advisory

 

  • Corporate Transactions
    We provide strategic advice and critical due diligence reviews of the underlying IP rights that underpin deals such as mergers and acquisitions, divestitures, investments, joint ventures and initial public offerings (IPOs).
  • Exploitation
    In addition to advising clients on the commercial exploitation of their IP rights, we have also negotiated domestic and international technology transfers and licensing agreements ranging from agreements for exclusive sponsorship, licensing the manufacture of products and R&D efforts to music, film and television contracts including celebrity endorsements and character merchandising. We structure franchising, marketing, alliances, co-branding and distribution systems, not to mention prepare franchise disclosure documents and register franchise offerings.
  • Intellectual Asset Management
    Our holistic approach to harnessing the value of IP assets, we call for a comprehensive audit of the client’s operations in order to unearth hidden wealth within the intangible assets. By implementing a program of proper and effective diagnosis, record, documentation and management of the intangible assets, we extract the maximum value thereof by securing protection as trademarks, trade secrets, patents and copyright. We strategise licensing and revenue generation opportunities to gain the best possible leverage out of the newfound IP assets.



Biotechnology and Healthcare

 

We have worked with investors and fund houses in nurturing life sciences companies at every phase of their growth cycle, including the formation and financing aspects.

We assist investors in managing IP risks by evaluating the IP assets underlying the investment through due diligence and providing the freedom to operate assessments of the target’s proprietary technology position.

Our expertise lies in issues relating to regulatory approval as well as structuring and negotiating R&D collaborations, funding, technology transfer agreements, consulting agreements, licenses and material transfer.



Information Technology and E-Commerce

 

We regularly act for vendors and customers in software development, licensing and distribution arrangements, integration and implementation agreements, website development agreements, procurement contracts, e-commerce, Internet access and outsourcing arrangements.

We counsel clients on the selection, registration, protection, transfer and enforcement of domain names. We audit clients’ websites and advice on proper online usage, identification and protection of their trademarks and copyrighted materials and those of others.

We also advise clients on the following:

 
  • Notice and consent requirements, as well as issues of privacy and confidentiality;
  • Products and services liability, as well as corporate and service provider liability for materials posted by em­ployees or subscribers;
  • Interpretation of the provisions of the Communications and Multimedia Act 1998 and related cyber legislation;
  • Electronic signatures;
  • The liability related to employee privacy rights with regard to e-mail;
  • Protection of attorney-client privilege in electronic communications.



Media, Advertising and Entertainment

 

Our services extend to advising clients on issues in relation to:

  • licensing;
  • development and celebrity endorsement and exclusivity agreements;
  • reviewing advertising content for regulatory compliance issues; and
  • restrictions on advertising.



Dispute Resolution and Enforcement

 

We are adept at negotiating and providing business solutions to disputes involving licensing, cross-licensing or assignment. Our team includes skilled and experienced litigators who work with our patent and trademark agents across the entire gamut of contentious issues including:

 

  • prosecuting and defending infringement claims and passing off;
  • enforcing names and marks in Malaysia and other jurisdictions;
  • handling domain name disputes;
  • rectification/invalidation;
  • licensing;
  • breach of confidence.

 

We devise anti-counterfeiting programs including systematic raids, follow-up criminal and civil actions, publicity campaigns and public apologies to stamp out IP theft.

 

Anti-Counterfeiting Biotechnology & Healthcare Brands & Marketing Celebrity Endorsement & Exclusivity Agreements Copyright Dispute Resolution & Enforcement Domain Disputes Industrial Designs Information Technology & E-Commerce Intellectual Asset Management Inventions & Technology Life Sciences Patents Property Licensing Telecommunications Trademarks

 

Partners
Bahari Yeow Tien Hong  |  Adlin Abdul Majid