Vivian Wei CHENG
Summary
Effective Intellectual Property professional with proven track record of successfully representing clients in patent offices, developing legal strategies and drafting and prosecuting high quality patents. Well-versed in principles of Intellectual Property law in Singapore and other jurisdictions. Adept at navigating legal systems, leveraging resources and communicating with clients and stakeholders. Works independently and collaboratively as part of team.
Overview
10
10
years of professional experience
Work History
Patent Attorney, Head of Patent and Industrial Design Department
JURISASIA LLC (EXCLUSIVE ASSOCIATION WITH GOWLING WLG (UK) LLP)
05.2021 - Current
- Drafted over 70 patent applications for research institutes/universities, MNCs, SMEs, and start-ups in Singapore and overseas.
- Successfully prosecuted over 1000 patent applications in a variety of industries, including Life Science & Biotechnology, Pharmaceuticals, Chemical & Healthcare, Consumer Care, Agriculture and Food Products, Bio-materials especially Nanomaterials, Immunology, Medical Devices, Mechanics, and Artificial Intelligence.
- Managed global patent and industrial design portfolios in United States, United Kingdom, Europe, Singapore, China, Japan, Korea, Australia, New Zealand, Brazil and India.
- Provided a one-stop IP hub to help clients protect and manage their IP assets in the greater ASEAN region, including Malaysia, Philippines, Thailand, Indonesia, Vietnam, Brunei, Cambodia, Bangladesh, etc.
- Conducted due diligence reviews of various patent portfolios, including prior art search and freedom to operate matters. Assisted in due diligence efforts during mergers or acquisitions, ensuring a smooth transition of intellectual property assets.
- Advised on patent validity and enforcement, and patent strategy including global and regional filing strategies.
- Developed anti-counterfeiting strategies to mitigate brand infringement, sent Cease-and-Desist letter to successfully take down a product from Singapore market which infringes design rights of a global tech provider.
- Led business development for the IP department, increased IP docket size by 2 times and increased IP revenue by 3 times over the course of three years.
- Delivered over 15 speeches, webinars, and masterclasses to local and overseas clients at various occasions including international IP conferences, in English and Mandarin.
- Wrote and contributed to over 20 IP insights and updates published by renowned publishers such as Lexology and IAM, covering topics including IP protection in ASEAN, Greenwashing, Artificial Intelligence, Employee inventor compensation, and IP transactions.
Patent Scientist and Associate
SPRUSON & FERGUSON (ASIA) PTE LTD
04.2018 - 05.2021
- Managed a docket of over 800 pending and granted patent cases worldwide; prepared, drafted, and prosecuted patent applications in the field of Life Science and Biotechnology, and Pharmaceuticals.
- Conducted prior art search and freedom to operate matters for research institutes/universities.
- Assisted lawyers in patent litigation, conducted validity and infringement analysis.
- Awarded the Book Prize for Patents Agent Qualifying Examinations Paper A (Preparation of a Patent Specification) and Paper D (Knowledge of Patent Law and Patent Practice in Singapore) by the Association of Singapore Patent Attorneys (ASPA)
Manager, Intellectual Property Management
Agency For Science, Technology And Research(A*STAR
02.2017 - 03.2018
- Evaluated technology disclosures for IP protection, and analyzed the IP with respect to the state of the art.
- Reviewed patenting actions and worked with inventors and patent agents throughout patent prosecution to resolve patenting matters to obtain and maintain granted patents.
- Built and managed IP portfolios of various technologies that support A*STAR in achieving research excellence and commercialization objectives.
- Performed Intellectual Property landscape and due diligence analyses to support technology commercialization, including studies for national initiatives and research strategies across the fields of Biotechnology, Pharmaceuticals, Healthcare, Consumer Care, Agriculture and Food Products
- Provided IP due diligence findings for licensing and spin-offs, including checking for potential IP encumbrances and any other IP-related issues
- Conducted seminars and training workshops to educate researchers and equip them with IP knowledge
- Conducted IP statistical data and trends analyses
Post-doctoral Fellow, Nanomedicine group
Institute of Bioengineering and Nanotechnology (IBN)
12.2013 - 01.2017
- Developed macromolecular anticancer therapeutics and antifouling contact lens coatings
- Collaborated with P&G to develop antimicrobial polymers as additives for consumer care products
- 10 Journal Publications, 5 Patent Applications/Granted Patents, 3 Conference Proceedings.
Education
Ph.D. - Clinical Medicine Research
IMPERIAL COLLEGE LONDON
LONDON, UK12.2013
Bachelor of Science - Biological Sciences
Nanyang Technological University
06.2009
Graduate Certificate in Intellectual Property Law programme (GCIP) -
IP ACADEMY & NATIONAL UNIVERSITY OF SINGAPORE
12.2015
Skills
- Intellectual Property Law
- Patent Strategy
- Patent Transactions
- Freedom to Operate Analysis
- Patentability Assessment
- Patent Drafting and Prosecution
- Trade secret law
- Patent infringement analysis
- Patent Due Diligence
- Patent Application Preparation
Professional Qualifications
- Qualified Singapore Patent Attorney
(REGISTRATION NO. SGPA/2007/0209)
- Qualified Chinese Patent Attorney
Honors And Awards
- 2022 & 2023 – Managing Intellectual Property (MIP), Rising Stars Award
- 2022 & 2023 – IAM Patent 1000, Singapore chapter for expertise in prosecution
- 2022 & 2023 – Asia IP, IP Experts in Singapore
Personal Information
Nationality: Singaporean
Languages
Bilingual professional fluency in Mandarin and English
Timeline
Patent Attorney, Head of Patent and Industrial Design Department
JURISASIA LLC (EXCLUSIVE ASSOCIATION WITH GOWLING WLG (UK) LLP)
05.2021 - Current
Patent Scientist and Associate
SPRUSON & FERGUSON (ASIA) PTE LTD
04.2018 - 05.2021
Manager, Intellectual Property Management
Agency For Science, Technology And Research(A*STAR
02.2017 - 03.2018
Post-doctoral Fellow, Nanomedicine group
Institute of Bioengineering and Nanotechnology (IBN)
12.2013 - 01.2017
Ph.D. - Clinical Medicine Research
IMPERIAL COLLEGE LONDON
Bachelor of Science - Biological Sciences
Nanyang Technological University
Graduate Certificate in Intellectual Property Law programme (GCIP) -
IP ACADEMY & NATIONAL UNIVERSITY OF SINGAPORE
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