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30 RAFFLES PLACE #14-01, CHEVRON HOUSE, SINGAPORE 048622, SINGAPORE
Tel:
Work +65 6303 6210
Fax:
Fax +65 6303 6222
Email:
Web:
www.amicalaw.com

Winnie Tham

Tel:
Work (65) 6303 6217
Email:
Amica Law LLC

Work Department

Patents and Technology, Trade Marks and Designs

Position

Winnie Tham is a Director of Amica Law LLC, and heads the firm's Patents Practice. She has been practising in the Intellectual Property (IP) field since 1993, specialising in Intellectual Property (IP) and in particular, patent and regulatory matters. She is also a registered patent attorney in Singapore.

Winnie has a multi-disciplinary background, encompassing both legal and technical expertise.  She has a particular specialisation in life sciences and pharmaceuticals as she holds a Bachelor of Science (Pharmacology & Biochemistry) in addition to her law degree, and regularly advises on patent and regulatory matters. However, her experience in intellectual property spans various industries including retail and fashion, hotels and the food and beverage industry.

She has great expertise in IP protection and management and is a go-to adviser for countless clients, helping them to craft IP strategies for the protection of new trade marks, inventions and designs, managing their IP portfolios, and coordinating global IP filing programs for them. Additionally, she conducts freedom to operate analyses, carries out IP audits and due diligence and takes care of searches, filing, prosecution and maintenance of patents, trademarks and designs for clients. 

She also handles contentious matters, and undertakes trade mark opposition matters and trade mark and patent invalidation and revocation actions. Prominent cases she has been involved in are a landmark patent infringement case in the life sciences field involving the HIV-2 virus, a patent infringement case involving emergency lift systems, and patent revocation actions in the chemical field.

Winnie has been listed consistently and recommended as a leading IP lawyer in Singapore in many regional and international legal publications. The World Trademark Review described her as "someone who cuts through swiftly to identify the best practice and commercial avenues to take, Tham is another deft portfolio strategist."

She has also been named as a leading lawyer by Asia Pacific Legal 500 for 15 years (2001/2002 - 2015), a leading practitioner by the World Trademark Review for 4 years (2013, 2015 - 2017), one of the world's leading patent law practitioners by Legal Media Guide (2007), a star by IP Stars World IP Survey (2014 - 2016) and has been listed as one of the world's leading patent professionals by IAM 1000 (2015 - 2017).

Winnie also has a sterling reputation amongst her clients who praise her dedication. A testimonial published in the Chambers Asia-Pacific Guide 2018 affirmed: "Winnie gets difficult and tough-to-handle trade mark applications and trade mark cases from us because she is willing to think through legal and commercial issues, to find legal avenues which work and are also practical."

Her finger is certainly on the pulse of IP law and this is clearly exemplified through her active participation in the IP and legal profession. Currenty, she is the Vice-President of the Asian Patent Attorneys Association (Singapore Group), an organisation that plays an influential role in promoting and enhancing intellectual property protection in the Asian Region. Together with other leading Asian practitioners of IP law, they meet annually to network and exchange views and information concerning intellectual property protection in the Region. She also sits as a Vice-Chair of the Harmonization of Trade Mark Law and Practice Committee of the International Trade Mark Association (INTA), a 131-year-old organization with more than 5,600 members in over 90 countries. She is also an examiner for the Patent Agents Qualifying Examinations, and a facilitator for the patents module in Part B of the Singapore Bar Examinations.

Languages

English

Member

• Vice Chairperson, Harmonization of Trade Mark Law and Practice Committee of the International Trade Mark Association (INTA)
• Council Member, Asian Patent Attorneys Association
• Vice President, Asian Patent Attorneys Association (Singapore Group)
• Treasurer,  International Association for the Protection of Intellectual Property (AIPPI) Singapore Group
• Examiner, Patent Agents Qualifying Examinations
• Facilitator, Part B Singapore Bar Examinations

Education

• LL.B. (Hons)
• B.Sc. Pharmacology & Biochemistry
• Admitted to the Singapore Bar
• Admitted to the Australian Bar


Singapore: Intellectual property

Intellectual property – Local firms

Within: Intellectual property – Local firms

Specialist Amica Law LLC is recommended for the breath of its IP expertise, serving both international and local clients that include ExxonMobil, Huawei Technologies and the National University of Singapore. The team is acting for M1, the telecoms service provider in an application brought in the High Court by Disney Enterprises, 20th Century Fox and others for a Copyright Blocking Order. The case concerns a novel point in Singapore concerning whether the order remains binding if pirate websites change their IP address. It is also acting for Sun Pharmaceutical Industries, which applied for a product licence in Singapore to distribute a generic pharmaceutical product. This was blocked by Millennium Pharmaceutical under the patent declaration regime of the Health Products Act and the team is now acting for Sun in defence of a patent infringement action. Jo-Ann See handles all aspects of patent clearances and protection of IP rights, including opposition and revocation proceedings. Other key team members include head of litigation Jason Chan, who has expertise in biotechnology, computer electronics and telecoms matters; Winnie Tham, who is acting for Guangzhou Pharmaceutical in a trade mark invalidation action, and Wilson Wong whose practice centers on transactional matters including patent licences and technology transfers.

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