Janet Toh Yoong San

Practice Areas

Personal Data Protection & Privacy Laws

Intellectual Property

Technology, Media & Telco

Career

Janet Toh has close to 20 years’ experience in intellectual property and technology related legal matters. Janet Toh represents clients in a variety of intellectual property (IP) and technology matters ranging from IP protection and ownership, advertising, consumer protection, domain names, e-commerce, franchise, gaming, regulatory approvals for food, cosmetics and drugs to telecommunications. She regularly represents clients in a range of technology and commercial transactions, including collaboration, outsourcing, development and licensing of hardware, software and IT systems for users of IT within the software, retail, media, consumer products, financial services, telecommunications and a broad range of other industries.

She also advises a broad range of clients on data protection, privacy and cybersecurity issues. Janet’s practice also includes representing companies in connection with the IP due diligence review in the context of licensing, mergers and acquisition projects and commercial corporation transactions.

Professional Memberships

• Former president, Licensing Executives Society Malaysian chapter

• Committee member of Commercialization of Brands Committee, INTA (2020-2021, 2022-2023)

• Committee member, Bar Council Cyber Law Committee

• Member, International Bar Association (IBA)

• Member, Intellectual Property Committee of the ITechLaw Association

Publications

• OneTrust Data Guidance: Third Country Assessment (Malaysia) on Personal Data Protection Laws

• Intellectual Property Magazine September 2020: Focus on AI – Taking ownership

• Chambers Global Practice Guide 2019 Malaysia Pharmaceutical Advertising: Q&A [co-author]

• Chambers Global Practice Guide 2019 Malaysia Trends and Developments: The Rise of the Machines – Artificial Intelligence & Copyright Law – the Malaysian Landscape [co-author]

• Malaysian section of the International Comparative Legal Guide to Telecoms, Media & Internet Law & Regulations 2019

• Malaysian section of the International Comparative Legal Guide to Trade Marks 2018 & 2019 [co-author]

• Malaysian section of the World Trademark Review Anti-Counterfeiting Guide (2010-2017) [co-author]

Languages Spoken

English, Malay (Spoken, Proficient), Cantonese (Spoken, Conversational), Chinese (Spoken, Basic)

Experience

Janet advises clients on issues relating to intellectual property (IP) protection and ownership, advertising, consumer protection, personal data protection, domain names, e-commerce, franchise, gaming, regulatory approvals for food, cosmetics and drugs and telecommunications. Janet also carries out IP due diligence for licensing, mergers and acquisition projects and e-commerce related transactions.

Technology

• Advised and negotiated a services agreement for the implementation of a South-east Asian regional core banking platform for one of Malaysia’s largest banking groups.

• Assisted a Malaysian Money Transfer Company in the business of remittance and money changing in respect of the review of a Share Purchase Agreement for the sale of its shares to one of the largest international money transfer companies in the world, and Software Assignment Agreement between the parties.

• Assisted one of the largest foreign-owned banks in Malaysia in respect of the drafting of an Agreement in respect of the transfer of source codes pursuant to an outsourcing services agreement.

• Advised and reviewed the terms and conditions for the setting up and operation of a sport news portal for a mobile devices website platform in which subscribers of mobile services may have access upon payment of the subscription fees.

• Advised a startup on its acquisition of AI technology to process and analyse raw satellite images, and drafting of agreements to enable the client to acquire technology from a satellite remote sensing technology and application company to leverage the integration and convergence of computer science, artificial intelligence and satellite imagery technology;

• Rendered regulatory advice to a Japanese telecommunications operator, on the implementation of its IoT platform in Malaysia and the regulations in relation to both cross-border and domestic business (i.e. cloud service, data transfer and telecommunications). We also advised on requirements pursuant to the Communications & Multimedia Act 1998, financial services, and personal data protection laws, in relation to the provision of cloud services in Malaysia. We also rendered advice to the same client on the licensing and regulatory requirements for the implementation of a Global Communication Platform in Malaysia.

• Acted for a Malaysian digital wallet and online payment platform in relation to its collaboration with an energy and petrochemical company on the rollout of a payment system which utilises radio frequency identification (RFID) technology at the counterparty’s fuel stations in Malaysia. We assisted with the drafting of various agreements required as part of the collaboration, as well as the ongoing negotiations between the parties.

• Advised a leading fertilizer company and a provider of environmental solutions on its launch and implementation of mobile applications in Malaysia in respect of digital farming and e-solutions in Malaysia.

• Advised a client in the capital market sector on the regulatory aspects relating to the launch of an online platform to assist with connecting potential investors with potential target companies, and to facilitate potential merger and acquisition opportunities through an algorithm.

• Assisted and advised clients on the licensing and regulatory requirements under MCMC. We also assisted clients to obtain an Application Service Provider (ASP) class license for the provision of telecommunication services in Malaysia. In particular, we advised clients on the regulatory and licensing requirements with MCMC for the provision of internet access/ connectivity directly to the car manufacturer/owner in Malaysia as well as involvement of data roaming.

• Advised a global cyber-security and privacy company in the business of providing cybersecurity solutions to both general consumers and business clients in relation to laws granting public authorities access to personal data held by the client’s Malaysian entity for purposes of surveillance. We advised the client on the regulatory framework in Malaysia, which permitted authorities to access the premises of the client’s Malaysian entity to conduct searches and investigations, including anti-money laundering, anti-corruption, personal data protection, taxation and cybersecurity.

• Advised an American private security and protection company in the business of carrying money and valuable goods for its customers in relation to its proposed a new business model.

• Advised a consulting services and solutions provider in relation to its provision of cloud-based managed session border controller services in Malaysia.

• Advised a Chinese multinational technology client on the provision of its cloud services from offshore Malaysia.

Education

Awards