Intellectual Property

Consistently ranked among the leading IP practices in Singapore, our dedicated team of lawyers combine cutting edge legal expertise with in-depth understanding of the industries in which our clients operate, to provide a comprehensive service of the highest quality. We’re equally at home handling contentious and non-contentious aspects of intellectual property law, with a special focus on the IT, entertainment, sports and media industries.

We are a firm of choice for IP transactions and disputes cutting across different spectrums including the semiconductor, infocomm, software, gaming, fashion, computing, advertising, construction, logistics, health and wellness, and sports and media industries. Our lawyers are engaged in the following areas of IP work:

• transactional deals
• due diligence
• advisory & strategic consultancy work
• registration & prosecution of patents, trade mark and design rights
• regulatory advice
• IP litigation
• IP arbitration
• IP enforcement

Unparalleled client service

Our lawyers are well-positioned to provide value-added services to clients.

• Apart from possessing the legal expertise, we also have an intimate domain knowledge of relevant industries, thereby ensuring that our lawyers are able to deliver pragmatic advice and business oriented solutions to complex legal problems.
• The IP Practice draws its strengths from being part of a full-service firm with integrated specialist practices, and from its ability to tap into the vast resources offered by the Firm’s set up which allows us to leverage on its specialist practices and its geographical reach, which spans across China, Malaysia, Lao PDR, Vietnam, Thailand, Indonesia, Cambodia, Myanmar, Japan, South Asia and the Middle East. We are also the Singapore member firm of the Lex Mundi Network with access to excellent legal expertise in more than 100 countries.
• We are mindful of our clients’ resources and therefore place great importance on allocating the right lawyer(s) to the right tasks to ensure that seamless and cost-efficient services are always rendered to our clients. Our highest priority is understanding what our clients need, and responding efficiently, appropriately and creatively. For work that extends beyond Singapore, we only work with foreign associates who are known to us and who we believe have the relevant skill sets and experience to meet our clients’ needs.

WITHIN THIS PRACTICE

Practice areas

Dispute Resolution

Our IP disputes and enforcement lawyers are engaged in the following types of contentious work:

• Civil litigation for trade mark, copyright, design and patent infringement and invalidation, and for passing off
• Misuse of trade secrets, corporate espionage and employer-employee restraint of trade litigation
• Licensing disputes
• Commercial disputes involving IP issues
• Criminal prosecutions for trade mark and copyright offences
• WIPO domain name disputes

We work regularly with private investigators and computer forensic experts to secure evidence of infringement, and with damages analysts. We negotiate royalty payments with licensing societies, and assist our clients in obtaining pre-action discovery orders as well as pre-emptive remedies such as Anton Piller orders, criminal search warrants and injunctions.

Corporate

Our corporate Intellectual Property lawyers provide IP consultancy services, and advise on transactional deals involving the transfer and licensing of IP rights. We draft and negotiate various agreements, conduct IP audits, and provide support in corporate due diligence exercises. Some of the corporate IP work our lawyers undertake include the following:

• IP licensing and assignments
• Distributorship, franchising and agency agreements
• Commercial and employment agreements with provisions for use and ownership of IP
• Advising on product advertising, trade mark labelling and product regulatory requirements
• Media related agreements such as co-production, television rights, broadcasting, publishing, product endorsement, sponsorship and event hosting agreements
• Software licensing, software supply, hardware supply, services supply, and system integration, implementation and maintenance agreements
• Research collaboration agreements

IP Registration

Our IP registration lawyers handle various portfolios of trade marks, patents, registered designs and domain names.

We manage several active trade mark portfolios and advise our clients on a wide range of issues relating to the registration of trade marks, including the following:

• Suitability of marks for registration
• Prospects of obtaining registration of marks
• Selection and use of trademarks
• Oppositions to pending trademark applications.

We also file and prosecute domestic and international trade mark applications (under the Madrid Protocol), and advise on the documentation required for the assignment and licensing of trade mark rights.

Additionally, we handle design and patent filings, both locally, overseas as well as via the Patent Cooperation Treaty (PCT) route, and manage the registration of gTLD and ccTLD domain names (including multi-lingual domain names) on a global basis.

Finally, we also have an extensive range of in-house patent services such as patent watch services, patent validity searches based on keywords, inventors, applicants and international classifications, and freedom to operate searches. Our patent drafting capabilities and resources extend to the mechanical and electromechanical areas of technology, and include semiconductor packaging, bonding, testing and wafer fabrication technologies, patient tracking systems, surgical instruments, prosthetic implements, bio-chemical reaction chambers, helicopter landing pads and even oil rig platforms, to name a few.

Our IP Registration associates can be reached at the following emails:

• For trade mark and design matters: TM@rajahtann.com
• For patent matters: patents@rajahtann.com

Other Areas

Our practice group is also involved in complex international arbitration proceedings involving IT disputes, in particular those that relate to large-scale IT services implementation projects. In addition, our lawyers regularly advise the relevant local statutory board in relation to gaming matters, as well as act for a whole spectrum of clients in the sports industry.

Authored Publication

The team has recently penned the Singapore chapter in the Lex Mundi ASEAN Intellectual Property Guide: Overview of Regulatory Framework for Patent and Trademark Protection in the ASEAN Countries, a guide providing insightful reference when dealing with protection of intellectual property rights in the ASEAN region. Read the chapter here.