Alvin Lim

Member of team advising Nokia Corporation in a complex and multi-jurisdictional patent and licensing dispute in the telecommunications field involving complex issues such as standard essential patents and FRAND licensing. This was a major project involving extensive investigation field work around mobile chipsets and providing validity and infringement opinions in respect of assertable patents in Singapore covering a wide range of technologies.

Member of team acting for AstraZeneca in patent linkage proceedings commenced against Sanofi-Aventis Singapore Pte Ltd for infringement of patents covering a cholesterol drug. Although the matter was eventually settled, this case involved the previously novel issues of whether section 12A of the (old) Medicines Act contemplated an independent cause of action from a patent infringement action under the Patents Act (reported at Astra Zeneca AB (SE) v Sanofi-Aventis Singapore Pte Ltd [2012] SGHC 16), and the extent to which the Plaintiff must provide further and better particulars of the Defendant’s alleged infringement (reported as Astra Zeneca AB (SE) v Sanofi-Aventis Singapore [2013] SGHCR 7).

One of the team leaders in team appointed by a global pulp and paper manufacturing giant to carry out a major IP audit project for tax restructuring purposes. This was a two year project requiring team leaders to travel to the client’s various international offices, manufacturing plants, plantations, power plants and various business units to interview the client’s business leaders, engineers, R&D personnel and other employees for the purpose of the IP audit and recommending follow up action required.

Member of team structuring and executing a global trade secret audit and protection program for a global travel technology company across its various international offices. This project included reviewing trade secrets laws across multiple jurisdictions including UK, USA, Australia, China, Japan, Singapore, Thailand, Philippines, India, France, Germany, Russia, Spain, and Brazil.

Acted for the founder of the local soya bean dessert brand "Lao Ban Dou Hua" in trademark infringement and passing off proceedings filed in the Singapore High Court which resulted in a positive settlement for client.

Acted for a Singapore licensed solar energy retailer in patent infringement proceedings relating to inventions in respect of a power grid system and method of determining power consumption. Judgments in relation to interlocutory applications filed for this case are reported as Sun Electric Pte Ltd v Sunseap Group Pte Ltd and Ors [2020] SGHCR 1 and Sun Electric Pte Ltd v Sunseap Group Pte Ltd and Ors [2019] SGHCR 11.

Advised a multinational pharmaceutical company in respect of the reporting requirements by various industry stakeholders in respect of falsified medicinal products and medical devices under Singapore regulatory laws.

Prepared a comprehensive legal memorandum for a multinational pharmaceutical company advising on all legal issues affecting the conduct of private investigations in Singapore, including criminal law issues, tort laws, personal data protection laws, breach of confidentiality laws, rules of evidence, and laws in respect of specific methods of conducting private investigations. The memorandum was to be used as a guide and brief to private investigators hired for various purposes.

Acted for a leading Japanese fermented drink manufacturer, Kabushiki Kaisha Honsha in a successful trademark opposition filed in Brunei against Societe des Produits Nestle S.A.

Acted for an international manufacturer of fibres and textiles used in FMCG products in successfully enforcing their trademark rights against multiple infringers in Singapore and Malaysia.

Member of team that successfully defended two local SMEs in a High Court action against claims of infringement of trade secrets and copyright by a Malaysian technology company. The High Court’s decision is reported as Invenpro (M) Sdn Bhd v JC Automation Pte Ltd [2014] 2 SLR 1045.

Member of team that defended an American technology company against claims of patent infringement by an international manufacturer of chemical products relating to chemical mechanical polishing technology. The High Court Judgment was reported as Rohm & Haas Electronic Materials CMP Holdings Inc v NexPlanar Corp [2017] SGHC 310.

Member of team that acted for a German technology company enforcing its Singapore patents covering semiconductor technology against a leading service provider of semiconductor packaging design, assembly, test and distribution solutions in Singapore. This "David vs Goliath" action lead to a licensing deal being agreed by parties.

Member of team acting for a German manufacturer of ship container lashing equipment in patent infringement proceedings in Singapore and Japan. Although the dispute settled, the Singapore High Court’s Judgment in respect of an application to amend the patent in suit was reported as Ship’s Equipment Centre Bremen GmbH v Fuji Trading (Jiangsu) Pte Ltd [2015] 4 SLR 781.

Member of team that defended a local map maker against claims of breach of copyright in digital maps. The decision was reported as Virtual Map (Jiangsu) Pte Ltd v Singapore Land Authority [2007] SGDC.

Member of team acting for a hotel group in trademark invalidation proceedings commenced by another leading international hotel group. The decision is reported as Starwood Hotels & Resorts Worldwide Inc and Sheraton International IP LLC v Staywell Hospitality Pty Limited [2018] SGIPOS 11.

Served as de facto "in-house" external counsel over a three(3) year period for a local SME whose founders had invested millions in cutting edge technologies in areas such as medical devices, energy and water desalination. I provided legal services to support the incorporation of the company, the hiring of its first local management and operation teams, acquiring of office premises, negotiations of agreements with contract manufacturers, reviewing of marketing materials to comply with advertising laws, negotiating of distribution agreements, reviewing clinical research agreements and providing other general legal advice to the managing director, operations, human resource director and marketing director until the client had expanded its operations sufficiently to hire its own in-house counsel.

Advised various participants at the Intellectual Property Office of Singapore (IPOS) since 2018.