Abe provides substantive legal and technology-specific advice for domestic and international clients. He advises clients on a variety of technology and IP matters, including formation of joint ventures involving IP; IP asset acquisitions; IP licensing; and advice on substantive technical issues relevant to the technical value and soundness of IP portfolios as a key asset class of any technology company. These include IP protection coverage, IP ownership and inventorship issues, and open source risks for software-related technologies. As clients are not only protecting but also transferring their proprietary technologies across multiple jurisdictions globally, technology transfer regimes and export controls have become a critically important issue for such clients. With his extensive technical background and experience, Abe possesses the rare technical expertise and experience to understand underlying technologies being transferred so as to advise on any proposed cross-border IP exploitation, be it through outright assignment, licensing, and/or inter-group technology sharing. Knowing the issues, risks and traps pursuant to conducting substantive IP due diligence, Abe is then able to advise on contractual safeguards and, where feasible, suggest suitable risk mitigating measures. Abe also advises various clients on other IP-related matters, including drafting of IP policies, standards, and guides to enable clients to quickly build out and properly maintain a suitable IP portfolio.
On the patent side, Abe advises clients on the entire lifecycle of patents, including prosecution, patentability, validity, infringement, FTO, landscapes, and due diligence. He regularly drafts patent specifications, provides various legal opinions, and prosecutes patent applications in various jurisdictions, including the US, Europe, China, Thailand, Singapore, and other jurisdictions. 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 advises clients on a variety of technologies and industries, including those pertaining to computer hardware/software, e-commerce, business methods, Fintech, health tech, location-based technologies, AI, DLT, blockchain, cryptocurrencies, bio-medical technologies (including bio-medical devices, surgical robotics, and surgical implants), networks, telecom, semiconductor devices and fabrication, data storage technologies, electrical circuits, electronics, optics, stereoscopic and autostereoscopic technologies, robotics, manufacturing systems, control systems, aerospace, automotive and other land-based transportation technologies, oil and gas exploration technologies, regenerative and clean energy technologies, and nano-technology.
Representative Legal Matters
- Advised on a large transactional matter involving the acquisition of a large patent portfolio and licensing of several key patent assets.
- Advised on a multifaceted and multijurisdiction 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 multidisciplinary 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.
- Advised a leading technology company on its acquisition of a PRC-based AI company, including advice pertaining to PRC technology transfers and export controls.
- Advised a leading multinational food and chemicals-related company with a multijurisdictional patent licensing transaction.
- Advised a multinational automotive company in a multifaceted and highly complex intellectual property licensing transaction.
- Advised a 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.
- Drafted 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 a variety of clients.
- Advised 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.
- Advised a global financial institution pertaining to potential patent infringement of blockchain-related and cryptocurrency-related technology.
- The Legal 500 Asia Pacific (2022) - Recognized as “Next Generation Partner”
- IAM Patent 1000 (2022) - Ranked as Recommended for Patent Prosecution
- IAM Patent 1000 (2022) - Ranked as Recommended for Transactions
- IAM Patent 1000 (2022) - "Abe Sun . . . has a flair for AI, fintech and computer software", "One of his service users regards him as one of the best patent practitioners he has worked with", "He quickly gains the rapport with technical inventors and lawyers alike. His ability to explain complex legal matters in simple language, while providing relevant examples from different jurisdictions is simply unparalleled."
- The Legal 500 Asia Pacific (2021) - Recognized as “Next Generation Partner”
- IAM Patent 1000 (2021) - Ranked "Silver" for Patent Prosecution
- IAM Patent 1000 (2021) - Ranked for Transactions
- IAM Patent 1000 (2021) - "Abe Sun has subject matter expertise across a wide range of technologies including hardware, software, AI and blockchain. Sun also prosecutes applications not just in Singapore but in the United States, Europe and various Asian jurisdictions."
- The Legal 500 Asia Pacific (2020) - Recognized as “Next Generation Partner”
- 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."
- Intellectual Asset Management (IAM) Global Leaders (2021) - Ranked as a Global Leader in Patents (IAM Global Leaders Guide 2021)
- IAM Patent 1000 (2020) - Ranked "Gold" for Patent Prosecution
- IAM Patent 1000 (2020) - Ranked for Transactions
- IAM Patent 1000 (2020) - "A fan favourite, Sun is the go-to for global patent protection and filing strategies. 'His passion for patents, together with his continued effort to obtain the best protection for our innovations in the most cost-effective manner and with only our best interests in mind, is why we continue to instruct the firm for patent matters. Abe is always reachable at any time of the day, and he can speak the same language as our researchers because of his extensive experience in AI and software.'"
- 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."
- IAM Patent 1000 (2019) - Ranked "Silver" for Patent Prosecution
- IAM Patent 1000 (2019) - Ranked for Transactions
- 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."
- 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."
- IAM Patent 1000 (2018) - Ranked
- 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."
- IAM Patent 1000 (2017) - Ranked
- 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."
- IAM Patent 1000 (2016) - Ranked
- Managing Intellectual Property - Patent Star (2016) - Ranked
- Managing Intellectual Property - IP Star (2015) - Ranked
Professional Associations and Memberships
- Asian Patent Attorneys Association (APAA)
- Law Society of Ontario
- U.S. Patent and Trademark Office~United States
- Ontario~Canada (Barrister & Solicitor)
- Rochester Institute of Technology (Post-Graduate Studies in Electrical Engineering)
- University of Western Ontario (J.D.)
- University of Toronto, Faculty of Applied Science and Engineering (B.A.Sc., Electrical Engineering)