AbeSun

Abe Sun

Local Principal
Baker & McKenzie Wong & Leow
Not admitted to practice law in this jurisdiction

Biography

Abe is a partner in our Singapore office. His main areas of practice include patents, trade secrets, copyright, and transactional IP for international and domestic clients. With over nine years of legal experience as a lawyer and over ten years of technical experience as an engineer in the US and Canada, Abe is able to provide commercially oriented legal and technology-specific advice on a wide range of IP issues. Before joining our Singapore office in 2016, Abe was a member of our Baker McKenzie offices in the US (where he passed the US patent bar examination and qualified as a US Registered Patent Attorney (limited recognition)) and Thailand.

Practice Focus

Abe provides substantive legal and technology-specific advice on the entire life cycle of patents, including patent prosecution, patentability, validity, infringement, freedom to operate (FTO) and due diligence. On the prosecution side, Abe regularly drafts patent specifications, provides various legal opinions, performs IP due diligence, and prosecutes patent applications in various jurisdictions, including the US, Canada, Singapore and other countries. He also provides strategic, tailored and practical advice on how and where to best pursue IP protection and best practices for IP management, policies and playbooks. Abe has a particular passion for highly complex technologies. On the contentious side, Abe has an impeccable record in patent, trade secret and copyright infringement cases.

Abe's practice further includes commercial and transactional IP matters, including IP licensing, IP assignments and ownership transfers, research and development agreements, confidentiality, non-competition, software and hardware development, and open-source software-related agreements.

Abe advises clients on a variety of technologies and industries, including those pertaining to computer hardware and software, e-commerce, open source, business methods, fintech, insurtech, healthtech, location-based technologies, artificial intelligence (AI), distributed ledger technology (DLT)/blockchain, cryptocurrencies, healthcare technologies and regulations, biomedical technologies (including biomedical devices, surgical robotics, and surgical implants), networks, IT-related technologies, telecom, semiconductor devices and fabrication, data storage technologies, electronics, optics, stereoscopic and autostereoscopic technologies, robotics, control systems, aerospace, automotive and other land-based transportation technologies, regenerative and clean energy technologies and nanotechnology.

Representative Legal Matters

Patents

  • Draft patent specifications, provide strategic advice on filing and pursuing protection of innovations, perform substantive patent prosecution, and manage global patent portfolio for:
    • leading fintech, insurtech, healthtechh, blockchain, artificial intelligence (AI), location-based services, and cloud-computing companies
    • leading providers of voice and data communications, mobile software, and communication services
    • leading computer hardware and software companies based in the US, Japan, and other Asian countries
    • leading global and regional financial institutions
    • leading sharing-economy-based provider of services
    • leading global semiconductor fabrication companies
    • leading bio-medical technology companies, including surgical robotics, medical devices, and surgical implant-related companies
    • leading oil and gas companies, including those in petroleum, petrochemical, and exploration
    • fintech, insurtech, healthtech, and other cutting-edge technology start-up companies
  • Advise on substantive patent, trade secret, and other IP matters, including performing multijurisdictional IP landscape analyses, freedom to operate (FTO), patentability analyses, validity analyses, infringement analyses, and IP valuation
  • Advise on creating internal IP policies, guidelines, references, and playbooks so as to, among other things, ensure uniformity of IP policies and practices globally; improve IP knowledge and literacy among legal, technical, and management teams
  • Advise on various strategies and best practices, including identifying commercially valuable innovations, pursuing the most suitable form of protection, filing strategies, and expediting issuance of pending patent applications in various jurisdictions

Contentious

  • Advised a leading regional sharing-economy-based provider of transportation and other services pertaining to potential patent infringement in several Asian jurisdictions
  • Advised a leading international manufacturing company pertaining to potential patent infringement in several jurisdictions
  • Advised a bio-medical device company pertaining to potential patent infringement in several jurisdictions
  • Advised a European-based mobile software provider pertaining to patent infringement in the US
  • Advised a governmental entity pertaining to potential patent infringement
  • Advised a leading financial institution pertaining to potential patent infringement
  • Advised leading Japanese computer hardware company pertaining to patent infringement
  • Advised leading Japanese software company pertaining to infringement of a highly complex computer hardware and software-related patent in the US.
  • Advised global computer hardware and software leader in a civil IP infringement case involving software applications
  • Advised global computer hardware and software leader in a criminal IP infringement case involving software applications
  • Advised global computer software and services leader in two separate criminal IP infringement cases
  • Advised global technology leader in respect to enforcement of a highly complex computer hardware, software, computer-readable medium, and signal processing-related patent
  • Advised global technology leader in a patent infringement case involving chemical processes and products

Commercial and transactional

  • Advised on multifaceted and multijurisdiction transactional deal with a significant focus on highly complex IP and technology, which included negotiating licensing of and ownership rights to various forms of existing and future IP; formulating purposively customized royalty structures and fee reduction provisions based on future devaluation or loss of IP; transitional survivability rights to pertinent IP use; formation of JV for collaborative R&D, manufacturing, licensing, and service offerings; and advising on and structuring of all aspects of the deal based on a variety of multidisciplinary considerations 
  • Advised leading technology company on a transactional IP matter, including advising on open source software and risks and dangers of such use of open source software
  • Advised leading technology company on its acquisition of a PRC-based AI company, including advice pertaining to prohibited, restricted, and freely tradeable technologies of the target company
  • Advised leading multinational food and chemicals-related company with a multijurisdictional patent licensing transaction with a Singapore-based corporation
  • Advised multinational automotive company in a multifaceted and highly complex intellectual property licensing transaction
  • Advised leading petrochemicals company regarding various legal and technology issues in a commercial IP transaction with a foreign manufacturer, including potential breach by the foreign manufacturer
  • Advised leading petrochemicals conglomerate in respect to existing commercial IP agreements, including the re-drafting of several existing commercial agreements and closing potential gaps thereof 
  • Advised telecommunications company on the formation of a JV with a leading Japanese technology company, which included due diligence of patents and trade secrets, negotiating terms and conditions for ongoing R&D and continued services and support, and substantive IP advice in respect to certain patents and patent applications from an enforceability, validity, patentability, and valuation perspective
  • Advised leading provider of medical and healthcare-related services seeking to improve customer service offerings via software-related services provided by various providers and developers of mobile apps and cloud computing; deal involved software licensing, software development and customization, data privacy and protection, and considerations regarding open source-related issues and risks
  • Advised several companies on software-related inventions and open source software, as well as the benefits, risks, and dangers of using and allowing use of open source software
  • Drafted agreements pertaining to licensing, assignments, ownership transfers, research & development, confidentiality, non- competition, licensing, assigning/ownership transfer, manufacturing, open source, etc.

Professional Honors

  • Intellectual Asset Management (IAM) Patent 1000 (2019) (Ranked for "Patent Prosecution")
  • Intellectual Asset Management (IAM) Patent 1000 (2019) (Ranked for "Patent Transactions")
  • Intellectual Asset Management (IAM) Patent 1000 (2019) - "All-sector pro Abe Sun garners the most effusive market praise . . . you'd be hard pressed to find another patent lawyer in Asia with technical expertise and patent experience remotely comparable . . . takes a holistic approach and offers pragmatic, commercial strategies . . . strongly recommend Abe for all patent matters, especially those pertaining to highly complex technologies."
  • The Legal 500 (2019) - "Abe Sun is a key name for patent work and is highly recommended . . . for his engineering background which is invaluable for complex patent applications." 
  • Intellectual Asset Management (IAM) Patent 1000 (2018) (Ranked) 
  • Intellectual Asset Management (IAM) Patent 1000 (2018) - "With his deep understanding of complex technologies, Sun has obtained patents for our most valuable and important inventions…[he] distinguishes himself through his commercially oriented, tailored solutions"
  • Managing Intellectual Property - IP Star (2018) - "Sun has experience as both a patent lawyer and an engineer. Sun performs patent specification drafting, provides legal advice and prosecutes patent applications for clients in the IT, telecommunications, and pharmaceutical industries."
  • Intellectual Asset Management (IAM) Patent 1000 (2017) (Ranked)
  • Intellectual Asset Management (IAM) Patent 1000 (2016) (Ranked)
  • Managing Intellectual Property - Patent Star (2016) (Ranked)
  • Managing Intellectual Property - IP Star (2015) (Ranked)

Professional Associations and Memberships

  • Association of Singapore Patent Attorneys (ASPA)
  • Asian Patent Attorneys Association (APAA)
  • Intellectual Property Association of Thailand (IPAT)
  • Law Society of Ontario

Admissions

  • Ontario~Canada
  • U.S. Patent and Trademark Office~United States
  • Singapore (Registered Foreign Lawyer)~Singapore

Education

  • Rochester Institute of Technology (Post Graduate Studies Electrical Engineering)
  • Notary Public
  • University of Western Ontario (J.D.)
  • University of Toronto, Faculty of Applied Science and Engineering (B.Sc. Electrical Engineering)

Languages

  • English
  • Thai

Previous Offices

  • Bangkok 
  • Dallas