Abe is a principal in our Singapore office. His main areas of practice include patents, trade secrets, copyright, and transactional IP for international and domestic clients. With over eleven 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 lawyer in 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.
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, biomedical technologies (including biomedical devices, surgical robotics, and surgical implants), networks, IT-related technologies, telecom, semiconductor devices and fabrication, data storage technologies, electrical circuits, electronics, optics, stereoscopic and autostereoscopic technologies, robotics, manufacturing systems, control systems, aerospace, automotive, alarm management systems and other land-based transportation technologies, oil and gas exploration technologies, regenerative and clean energy technologies and nanotechnology.
Representative Legal Matters
Advised a biotech company pertaining to potential patent infringement in several jurisdictions.
Advised a governmental entity pertaining to potential patent infringement.
Advised a Japanese computer hardware company pertaining to patent infringement.
Advised a global financial institution pertaining to potential patent infringement of blockchain-related and cryptocurrency-related technology.
Advised a global technology leader in a patent infringement case involving chemical processes and products.
Advised on a multi-faceted and multi-jurisdiction transactional deal with a significant focus on highly complex IP and technology; deal involved 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 a 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 multi-disciplinary considerations.
Advised a leading technology company on a transactional IP matter with a software company, including advising on open source software used by the software company and risks and dangers of such use of open source software.
Draft patent specifications, provide strategic patent and technology advice, provide strategic advice on filing and pursuing protection of innovations, perform substantive patent prosecution, and manage global patent portfolio for: leading fintech, insurtech, healthtech, govtech, artificial intelligence (AI), DLT (e.g., blockchain), location-based services, and cloud-computing companies; leading provider of voice and data communications, mobile software, and services thereof; leading computer hardware and software companies globally; leading global and regional financial institutions; leading sharing-economy-based provider of services; leading global semiconductor companies; leading biotech companies as well as leading oil and gas companies.
Advised on substantive patent, trade secret, and other IP matters, including performing multi-jurisdictional IP landscape analyses, freedom to operate (FTO), patentability analyses, validity analyses, infringement analyses, and IP valuation.
Advised 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; and alleviate the burden of the legal team from having to respond to all internal IP inquiries and requests for information.
- The Legal 500 Asia Pacific (2020) (Recognised as “Next Generation Partner”)
- Intellectual Asset Management (IAM) Patent 1000 (2016-2019) (Ranked)
- Managing Intellectual Property - Patent Star (2016) (Ranked)
- Managing Intellectual Property - IP Star (2015) (Ranked)
- The Legal 500 Asia Pacific (2020) - "Abe Sun is 'an exceptional patent lawyer' with 'strong experience in the technology industry'"; "Abe Sun is one of the best patent strategists regionally"; "Abe Sun is incredibly thorough in his explanations and is very business oriented"; " Abe Sun is an exceptional patent lawyer who has strong experience in the technology industry. He has very good communication skills and can work very well with the internal team to prepare the patent registration."
- 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) - "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"
- Intellectual Asset Management (IAM) Patent 1000 (2017) - “Abe provides clear and thorough advice on global patent strategies. He understands cutting-edge technology and drafts international-standard patent specifications.”
- Managing Intellectual Property - IP Star (2016) - "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."
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
- U.S. Patent and Trademark Office~United States
- Singapore (Registered Foreign Lawyer)~Singapore
- 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)