Yusarn Audrey LLC

Yusarn Audrey LLC is a boutique intellectual property and corporate commercial law firm that focuses on all aspects of intellectual property and how it can be used as a strategic tool for businesses and transactional support to monetise intellectual property.  Here, the firm’s corporate and intellectual property lawyers, as well as in-house patent agents and technical specialists, work together for seamless delivery of intellectual property and legal services around the single objective – creating, protecting and realising value from our clients’ IP assets.

We organise our firm and services around this central idea: that intellectual property is a powerful business asset and must be managed strategically. Everything that we do for our clients must help them create, protect and harness this valuable resource – intellectual property.

In addition to this, we have developed new intellectual property strategic advisory services as tools to ensure that our clients’ IP activities support and enhance their business strategies and objectives. By helping them to begin managing their IP in alignment with their business and mission, our clients have changed the way they look at IP. No longer just an expense, they now see IP as an asset and an investment for the future growth of their organisations.

This is what we live for at Yusarn Audrey, and what makes us excited and passionate about our work: igniting possibilities for our clients using IP.

Our clients: Over the years, the firm has successfully counselled and implemented IP strategies for local and international small and medium enterprises, multinational corporations, universities and government agencies.  A list of our clients is available upon enquiry.

Our services
Intellectual property: We take a strategic-planning approach to intellectual property practice.  We help organisations establish internal policies and design systems to facilitate the creation, ownership, protection, management and exploitation of intellectual property; and provide advice to businesses and their investors on their intellectual property strategy to protect and enhance the value of their intellectual assets, which are key business assets in the new economy.

Our intellectual property practice is closely integrated with our other practice areas, including our corporate department.  We provide patent specification drafting services and have a technical team of associates working with us to understand and assist in protecting our clients’ innovations and inventions.  This enables us to provide a total intellectual property solution for our clients, including planning, protection, commercialisation and enforcement of our clients’ valuable intellectual property.

Examples of our IP services include (both nationally and internationally):

• • Intellectual property due diligence
  • Intellectual property audits
  • Intellectual property planning advice
  • Intellectual property policy advice and drafting
  • Patents and trademark searches
  • Preparing, drafting and filing patent applications
  • Trademarks registrability advice and registration
  • Design registrability advice and registration
  • Copyright advice
  • Maintaining and renewing patent, trademark and design registrations
  • Preparing and recording assignments of intellectual property rights
  • Licensing of intellectual property
  • Commercial exploitation of your intellectual assets
  • Enforcement of copyright, patents, design, trademark rights (including common law passing-off actions)

As intellectual property often needs to be protected in various jurisdictions, we have associates all over the world with whom we work to provide for our clients’ needs.

Corporate and commercial transactions: Our commercial transactional practice supports a range of business activities and relationships which include mergers and acquisitions, joint ventures, strategic alliances, project consortia, and other forms of business partnering, agency and distributorship agreements, and other commercial transactions. We have been involved in large scale projects, including engineering, procurement and construction (EPC) contracts.

We also advise on diverse matters of corporate law including corporate organization, corporate restructuring, shareholders’ agreements, executive compensation (including employee share incentive plans), sales and issuances of company shares and other securities, corporate filings with the Accounting and Corporate Regulatory Authority of Singapore. We have advised on corporate issues such as voting rights, directors’ duties, director appointment and removal, pre-emptive rights, interpretation of company constitutional provisions, and minority rights.

Corporate – finance and securities: Our lawyers have experience in acting for issuers/borrowers and managers/investors/lenders in various types of capital raising activities, including venture capital and private equity investment transactions, convertible loans, cross-border and domestic syndicated loans, project lending, multi-currency facilities, guarantee and standby letter of credit facilities, debt restructuring, ship financing, and trade financing. We have also advised in innovative finance, including initial coin offerings and initial exchange offerings of digital tokens.

Technology law: We represent clients in transactions involving technology and intellectual property, including joint development projects, collaboration arrangements, IP licensing, and manufacturing, distribution, and strategic sourcing agreements. Transactions we have advised on include those relating to information technology, cloud computing, data analytics, IoT, communications, software development, online commerce platforms, logistics, financial technology (including mobile payments, blockchain and cryptocurrency), agriculture technology, medical technology, biotechnology, materials technology, construction, marine, oil and gas, among others. Our technology law practice also involves conducting due diligence investigations and negotiating terms regarding IP ownership and technology dependencies in connection with internal IP audits, mergers and acquisitions, public offerings, and other strategic transactions.

We have also acted as “outsourced general counsel” for technology companies. Our business acumen allows us to assist our clients in establishing core business terms of important deals, and even designing business models that leverage on their IP assets, and advising on intellectual property rights allocation, licensing terms, warranties, indemnities, and the like.

Dispute resolution/litigation: Our dispute resolution and litigation professionals combine a good understanding of the law with the realities of the commercial world to create innovative and appropriate solutions to our clients’ legal and intellectual property disputes. In particular, we assist our clients to take steps to enforce and defend their IP rights, thus protecting and maintaining the value of their intellectual property portfolio.

Our lawyers are experienced in all aspects of litigation and arbitration, including international arbitration. We have also worked as part of an international team for multi-jurisdictional litigation matters, providing local legal expertise as part of a coordinated dispute resolution strategy.

Our directors
Audrey Yap Su Ming (regional managing director); LL.B. (Hons), LL.M.
advocate and solicitor, High Court of Malaya; advocate and solicitor, Supreme Court of Singapore; solicitor, England and Wales; registered patent attorney, Singapore; certified patent valuation analyst; TÜV SÜD professional Singapore certified management consultant; commissioner for oaths, Singapore; notary public, Singapore

Audrey Yap is regional managing director and co-founder of the ASEAN regional law firm Yusarn Audrey LLC. Established in 1999, the firm is an intellectual property and commercial law practice offering legal and intellectual capital management as part of an integrated suite of intellectual property solutions which includes establishing robust intellectual property portfolios such as patent drafting and filing support as well as transactional expertise to monetise intellectual property.

Professional qualifications
Audrey has been admitted to the Malaysian Bar and the Singapore Bar. She was also enrolled as a solicitor of England and Wales in September 1999 and is a registered patent attorney in Singapore.

She is a certified patent valuation analyst (CPVA) and a TÜV SÜD professional Singapore certified management consultant (PMC).

Audrey’s thesis for her LL.M., which focused on a specific area involving life sciences and the law, completed in 1990, was based on a comparative analysis of the position in various countries including United Kingdom, Australia, Singapore and Malaysia and was considered an outstanding effort of an inter-disciplinary study by professor John Wade, who was then acting Dean for Bond University Australia and her external examiner.

Audrey was awarded book prizes for Administrative Law and for best project paper on “Blood tests in paternity proceedings” in her undergraduate studies. She was in the top 20 of her cohort for the Practice Law course in Singapore administered by the then Board of Legal Education (now Singapore Institute of Legal education).

Key appointments
Audrey was appointed as a board member of Enterprise Singapore on 1 April 2018 by the Ministry of Trade and industry. Audrey also served as board member of Intellectual Property Office of Singapore (“IPOS”) from 2015 to March 2022.

She is a notary public and an independent director of a Singapore listed company.

Audrey is a member of the World Intellectual Property Organization (“WIPO”) – World Economic Forum International Steering Committee for the Inventor Assistance Programme. In May 2022, she was appointed to the joint China Council for the Promotion of International Trade / China Chamber of International Commerce Intellectual Property Committee.

Audrey is the chairman of the Singapore Innovation and Productivity Institute Pte. Ltd. (SIPI). Audrey is honorary treasurer of the Singapore Manufacturing Federation (“SMF”) and elected council member. She chairs the Finance Management Committee of SMF. She is also council member of the Workforce Advancement Federation.

Audrey was previously a Law Lecturer at the University of Malaya, Malaysia, prior to moving to Singapore in 1993.

Audrey was appointed an Adjunct Fellow of the Intellectual Property Academy of Singapore in 2004. She served on the IPOS Patent Agents Qualifying Examination Committee from 2002 to 2006 as an examiner for the Singapore Patent Agent Qualifying Examinations and tutored trainee patent agents sitting for the procedural paper.

Sample projects completed
Audrey was selected by WIPO to serve on a high-level expert panel in 2015 on International Technology Transfer in Geneva under the WIPO Development Agenda Framework.

WIPO appointed Audrey as their regional consultant (intellectual property) to head up a study conducted from 2004 to 2006 involving a team of national experts for ASEAN to report on the feasibility of establishing intellectual property business development hubs in ASEAN and the economic use of intellectual property. She provided expert advice and support to the ASEAN Secretariat and the ASEAN Working Group on intellectual property cooperation in this role.

The European Patent Office (EPO) invited Audrey to serve as an external expert under the European Communities (EC) – ASEAN Intellectual Property Cooperation Programme in 2004. As part of her duties as external expert, she delivered papers on “Commercialisation and Valuation of Intellectual Property” at conferences held in Manila and Bangkok jointly organised by ECAP together with the Intellectual Property Office of Philippines and the Department of Intellectual Property, Thailand respectively.

Audrey was also appointed in 2011 under a trade related project funded by the European Union as the Expert assisting IPO Philippines in a national project in developing the model for Innovation and Tech Support Offices throughout the country and providing training for 28 Philippines universities involved.

In 2012, Audrey served on the IPOS Steering Committee on a National Intellectual Property Competency Framework as well as on the Intellectual Property Sub Committee on “Developing a vibrant marketplace for intellectual property transactions and commercialisation” for the purpose of the Intellectual Property Hub Master Plan for Singapore, launched in March 2013. She was on the IPOS board in the updated version 2017 and in its most recent reiteration as Singapore Intellectual Property Strategy (SIPS) 2030 launched in 2021.

Audrey served on the Innovation and Enterprise Industry Expert Panel for the National Research Foundation under Prime Minister’s office of Singapore 2014 and 2015.

Audrey continues to serve as intellectual property expert and consultant for various European Union trade related technical assistance programmes and WIPO supported initiatives in China, Vietnam, Philippines, Brunei and Thailand.

She was a member of the SMEC Council and chaired the SMEC Innovation Sub-committee, Singapore Business Federation for several years.

Audrey was also a council member of the Association of Small and Medium Enterprises (“ASME”) from 2011 to 2013 and the chairperson of Singapore Prestige Brand Awards, a jointly organised event by Singapore Press Holdings’ Lianhe Zaobao and ASME in 2012 and 2013.

Practice area
Audrey’s area of practice includes trademark advice, filing and prosecuting trademark applications both nationally and internationally, preparing and filing patent applications, advising on the management, protection and enforcement of intellectual property rights, intellectual property licensing and assignment, franchising and copyright advice. She has worked with and maintains professional relationships with an international network of associate professionals and firms so as to ensure protection of her clients’ rights regionally. This requires familiarisation with the different protection regimes in each country and understanding the local terrain so as to better guide her clients as they go international, as Audrey’s work involves advising her clients on intellectual capital management and aligning a company’s intellectual property portfolio with its commercialisation strategy.

Audrey has acted for listed and private companies, multinational corporations, government linked companies, hospitals, research institutes, pharmaceutical and medical apparatus companies, large public cooperatives, technology companies, venture capitalists, foreign and local law firms and individuals.

Awards
Audrey was most recently awarded “Partner of the Year” in 2022 by the Ministry of Law, Singapore for her outstanding services to the intellectual property sector.

Audrey was the only lawyer from South East Asia named in 2009 inaugural list of the top 250 World’s Leading Intellectual Property Strategists (IAM 250) in a London based survey conducted by IAM magazine. To date she is the only intellectual property strategist listed in the (now) IAM 300 magazine for the 14 consecutive years including for year 2022.

Audrey and her firm received “Quality Partners Award” from the Housing Development Board (“HDB”) of Singapore in December 2018 for services rendered in building up HDB’s intellectual property infrastructure for intellectual property management.

Over the years, Audrey has received many accolades including being named as:

● one of Singapore’s leading lawyers in Who’s Who Legal;
● in Euro money as one of the top Women Business Lawyers in Singapore;
● recommended Individual for the World’s Leading Trademark Professional; and
● a market-leading lawyer in Asia law Leading Lawyers 2018 for Intellectual Property.

Publications
Audrey has authored many intellectual property related articles over the years, including those published in Les Nouvelle (a specialist journal for LES International), Advancing the Business of Intellectual Property and WIPO magazine.
See https://www.wipo.int/wipo_magazine/en/2021/01/article_0002.html.

Audrey was also contributor to various chapters in the following books:

● Winning with IP: Realizing IP’s Potential for High Growth (2020);
● Winning with IP: Managing Intellectual Property Today (2022); and
● Franchising & Licensing Asia

In her early years, Audrey contributed articles to the Annual Survey of Malaysian Law in 1988 and 1989.

Speakers circuit
She has been an invited speaker at business and legal seminars, locally and regionally throughout her career.

Sampling of engagements

She was a guest lecturer at Beijing University in 2005 on intellectual property management.

She also presented at Fordham University, New York, USA on Intellectual Property Day in 2006.

Audrey presented at the WIPO regional symposium in Hong Kong on 29 and 30 October 2009, and at PCT Asia at Biopolis Singapore on filing strategies for PCT applications (21 to 22 April 2008). She was a speaker at the ASEAN IPA annual conference in Manila Philippines (13 to 15 March 2008) on Biotechnology and conducted a two-day WIPO workshop at MyBiotech Corporation, Kuala Lumpur, Malaysia in the same year.

Audrey was a plenary speaker for Europe Asia Patent Information Conference held in Singapore in March 2004. She was a guest lecturer on intellectual property for the in-house training programme at the Nanyang Technological University. She was also guest speaker presenting on the topic Technology and the Entrepreneur at a seminar jointly organised by the Institute of Engineers Singapore, the Licensing Executives Society Singapore, and the NUS Engineering Faculty (Technopreneurship Programme).

Audrey was a speaker at a series of seminars jointly organised by NSTB (as it was then known) and Arcasia Land on Biotechnology Patents in 1999 and 2000. She also spoke on building a valuable intellectual property portfolio in the life sciences at the Life Sciences: Protection and Funding conference organised in conjunction with Singapore Society for Microbiology & Biotechnology and Centre for Life Sciences & Chemical Technology, Ngee Ann Polytechnic.

She also spoke at the HDB Prefab Technology Centre 6th Anniversary Forum 2001 on “Creating Value: Harnessing Intellectual Assets for Business Growth'', conducted a full-day intellectual property workshop for the Building and Construction Authority of Singapore, and was a plenary speaker at the Global Franchising 2002 and 2003 Conferences in Singapore.

Audrey was a regular expert speaker and/or moderator at the Global IP Forum (GFIP), IPOS flagship annual intellectual property event for many years between 2014 to 2020.

Professional memberships and positions held
She is a member of a number of professional associations.

She was the first ever delegate from Singapore to be appointed president of Licensing Executives Society International (“LESI”) from 2020 to 2021 after serving as Vice President for several terms.

Prior to her election, Audrey served as the chairperson of the Education and Training Committee and Exco member of the Licensing Executives Society Singapore for five terms, from 1999 to 2004 and held this position again in 2009. She was elected the president of the Licensing Executives Society Singapore for 2011 to 2013. Audrey has served as co-chair of the Asia Pacific Committee as well as legal counsel to the LESI Board over the years.

She served as treasurer and exco member for several years until 2009 in the Association of Singapore Patent Agents (ASPA).

In the Asian Patent Attorneys Association (Singapore Group), Audrey was the representative of Singapore to the Asian Patent Attorneys Association (APAA) Designs Committee for four years where she presented the country report on developments in law in this area.

She has been legal advisor to the Franchising and Licensing Association (FLA) Singapore since 2020.

She is a member of Innovation and Trademarks Committee, International Trademark Association (INTA).

She previously was engaged with / member of the ASEAN Intellectual Property Association (AIPA), and International Association of the Protection of Industrial Property (AIPPI).

Chiew Yu Sarn (co-managing director); LL.B (Hons)
advocate and solicitor, Supreme Court of Singapore; solicitor of England and Wales; certified licensing professional

Chiew Yu Sarn is a founding director and head of the corporate and commercial department of Yusarn Audrey LLC. Yu Sarn is an advocate and solicitor of the Supreme Court of Singapore, and is also entered into the rolls as a solicitor, England and Wales.

Experience / areas of practice
Yu Sarn’s areas of practice include corporate and commercial law and IP, with a specific focus on the commercialisation of IP. His experience includes the following:

● Venture capital and private equity investments
● Mergers and acquisitions
● IP acquisition and sale
● Joint ventures and strategic alliances
● Licensing
● Franchising
● Research collaborations and sponsored research
● Biomedical research and regulatory advice
● Manufacturing, agency, distribution and supply chain management
● Technology law
● Financial regulatory advice
● Corporate and commercial law

In the area of financial technology, including blockchain and cryptocurrency, Yu Sarn has advised clients in their applications to the Monetary Authority of Singapore (MAS) for payment institution licences under the Payment Services Act in Singapore. In addition, he has advised on regulatory issues relating to payment facilitation platforms, e-sports and online games, insurance technology, cryptocurrency exchanges, and stablecoins. He has also advised on several digital payment token sales in the fields of supply chain assurance, online games, healthcare, and mobile payments, among others.

In his strategic IP consultancy work, Yu Sarn advises companies, institutions and government agencies on IP strategic planning and IP governance and policy, and helps his clients enhance their in-house IP management capabilities through training and coaching. He also advises companies on raising capital and financing using their IP. This work includes preparing companies for capital raising through IP audits. He has also performed pre-investment IP due diligence investigations on behalf of private equity investors.

In the area of franchising and licensing, Yu Sarn’s practice includes assisting Singapore and international franchisors and IP owners in franchising and licensing transactions all over Asia and other markets. As regional legal counsel for international franchisors and IP owners from various countries and fields, he has been instrumental in helping a number of them enter into markets in Asia and beyond, including Malaysia, Indonesia, Vietnam, Philippines, Thailand, Cambodia, Brunei, China, Taiwan, Hong Kong, Japan, Korea, India, Kuwait, UAE, Saudi Arabia, Australia and, of course, Singapore.

The clients he has served include technology companies in areas such as Web3, software, wireless technology, robotics, and healthcare, as well as venture capital and private equity fund managers, statutory boards, hospitals, multinational corporations, foreign and local law firms and internationally renowned authors and speakers.

In recognition of his experience and expertise in the field of IP licensing and commercialisation, Yu Sarn was accredited as a certified licensing professional (CLP) by Certified Licensing Professionals, Inc., an independent, worldwide non-profit organization tasked with maintaining internationally applicable standards, ethics, and excellence in the field of licensing.

In 2019, 2020 and 2021, Yu Sarn was recognised in the IAM 300 list of the world’s leading IP strategists. IAM says: “When it comes to developing IP business models for expansion into China and globally, few do it better than Yu Sarn Chiew. Creative and thorough, he is a brilliant strategist who excels at innovating ways to raise capital using IP rights.”

Yu Sarn has served as an independent director of a SGX-listed company for five years and is a member of the Singapore Institute of Directors.

Appointments/membership

● Board member, SEEDS Capital
● Board member, ACCESS (Association of Cryptocurrency Enterprises and Start-ups, Singapore)
● Past co-chair, Asia-Pacific Committee of the Licensing Executives Society International (2020 to 2021)
● Past president, Licensing Executives Society (Singapore) (2009 to 2011)
● Member, Law Society of Singapore
● Member, Singapore Academy of Law
● Member, the Law Society of England and Wales
● Member, Singapore Institute of Directors
● Associate member, Franchising and Licensing Association Singapore (FLA)

May Tan (director) LL.B (Hons); advocate and solicitor, Supreme Court of Singapore; barrister of England and Wales

May is a director and head of the trade marks practice of the intellectual property department of Yusarn Audrey LLC. May commenced practice in Singapore in the corporate and litigation department of a mid-size law firm where she handled litigation and other contentious matters before joining Yusarn Audrey in May 2000 as a partner.

Her areas of practice include contentious and non-contentious intellectual property matters as well as trademarks and design registration, copyright infringement and passing off cases. May handles various intellectual property related litigation, including obtaining injunctions preventing importation of infringing materials, copyright infringement actions etc.

In the area of trademarks, May’s practice includes advising and prosecution of trade marks, both nationally and internationally for clients in the area of pharmaceuticals, information technology and telecommunication, food and beverage, manufacturing, fashion, wellness and beauty. May is also involved in assisting clients in maintaining, protecting and enforcing trademark rights which includes conducting trade mark oppositions, revocation and invalidation actions and drafting of IP-related agreements including assignment agreements for trademarks.

May’s area of practice also includes design prosecution and registration, both nationally and internationally and providing general advice to clients as regards issues relating to copyright and passing off matters.

She is also experienced in the various forms of execution proceedings for example, companies winding-up, bankruptcy, writs of seizure and sale (for both movable and immovable properties), and Garnishee proceedings.

May is a member of the Law Society of Singapore and the Singapore Academy of Law. She is also a member of the Asian Patent Attorneys Association (APAA) Singapore Group, Franchising and Licensing Singapore (FLA) and the International Association for the Protection of Industrial Property (Singapore Group).

May is also an accredited SCOPE IP consultant for the Scope IP programme of the Intellectual Property Office of Singapore (IPOS).