our Consultant

 

Gerald Koh

Introduction

An advocate & solicitor of the Supreme Court, Gerald graduated from the University of Buckingham in 1994 with an LLB (Hons) and has been called to the bar in Singapore, England and Wales. He is an intellectual property (IP) lawyer with over 17 years’ experience at a leading Singapore law firm before joining Thomson Legal as a consultant in 2016. Gerald is also a qualified Singapore Patent Attorney and holds a specialist diploma in molecular biotechnology. He has particular experience in the pharma/biotech/life sciences sectors.

Main Areas Of Practice

Intellectual Property

  1. Patents, Copyright, Design, Trade Secret and Trademark litigation
  2. Intellectual Property acquisition, licensing, due diligence and general advisory work
  3. Freedom to operate and validity opinions

Experience

Gerald has on behalf of Fortune 500 companies and small to medium sized enterprises, filed, prosecuted and managed patent portfolios in Singapore and the Southeast Asia region. Gerald has also been active in the advisory/transactional aspects of IP work and has among other cases, has assisted a Singapore listed company in the IP aspects of its reverse takeover of another listed company holding IP rights over certain drug delivery systems.

Examples of Gerald’s work in contentious IP matters include:

  1. Successfully acting for a French biotechnology research institute in the Singapore High Court and Court of Appeal to enforce its patent for the Human Immunodeficiency Virus (HIV-2) against a Singapore company;
  2. Defending a Finland headquartered biofuel producer against patent infringement proceedings in Singapore brought by a US company;
  3. Taking patent infringement action on behalf of a leader in the field of smart card technology;
  4. Defending a real estate management company against claims of breach of confidence and passing off;
  5. Assisting a global pharmaceutical company in the defence of its patent for vaccines against revocation at the Patent Office;
  6. Assisting another global pharmaceutical company to resist product licence applications by generics manufacturers by initiating infringement patent infringement proceedings;
  7. Defending a local company in the construction industry against claims for patent and registered design infringement, leading to the revocation of the plaintiff’s registered design;
  8. Assisting a local listed company in the back end semiconductor industry to defend a claim for patent infringement

According to IAM Patent 1000, Gerald is “one of the few litigators in Singapore who also brings to the table a thorough technical background. He truly understands the science behind the arguments”. He is listed as a recommended IP lawyer in Legal 500 (2015) and was voted by readers of Managing Intellectual Property as an IP Star (2014 and 2015).

Appointments / Memberships

  1. Examination Committee for the Singapore Qualifying Examination for Singapore Patent Attorneys
  2. Executive committee member of The International Association for the Protection of Intellectual Property Singapore (AIPPI Singapore)
  3. Association of Singapore Patent Attorneys