Firms To Watch: Intellectual property: local firms

DARAE Law & IP Group has a strong track record in IP-related lawsuits, handling both domestic and overseas IP rights. The group offers counseling, litigation and consulting services, specialising in the mechanical, electrical, chemical, biotechnology, trade mark and design fields.
Koreana Patent Firm (Patent Attorneys & Counselors At Law) provides a full-service IP offering. It advises on patents and utility models, designs, trademarks and service marks, and licence registrations and contracts. It also handles issues related to e-commerce and domain names.
Nam & Nam has a strong reputation in the Korean IP field, with a team that consists of patent and trademark attorneys and specialists, and technology consultants. It has an international outlook, representing overseas multinational corporate clients in Korea.

PI IP LAW (LEE, PARK & ASSOCIATES) specialises in patent prosecution and has a strong reputation for advising start-ups. The group is well known for its software and AI expertise, providing insight on AI-related IP policies to the government and handling AI patent cases; managing partner Daeho Lee serving as the executive director of the Korea Artificial Intelligence Association. The team is also well-equipped to handle trademark issues, with a former KIPO trademark judge in its ranks.

The sizeable team at Y.P. Lee, Mock & Partners advises clients on the full gamut of IP matters, including representing clients in trials concerning patents and trademarks. It also offers IP consulting services and IP portfolio management. The group advises a number of foreign clients, including Fortune 500 companies.

Firms in the Spotlight Intellectual property: local firms

Yoon & Lee

Yoon & Lee logo

Yoon & Lee is a specialist IP law firm with over 30 years of experiencing in providing the highest quality services to leading domestic and foreign companies. The firm provides a comprehensive range of IP services from prosecution and litigation for patents and trademarks to consultation services for management and enforcement of IP rights.

View Profile...

Intellectual property: local firms in South Korea

Kim & Chang

Kim & Chang’s sizeable team of intellectual property litigators, patent attorneys and patent engineers handle the full scope of IP matters for both domestic and international clients. Its expertise includes patent prosecution and enforcement, IP counselling and strategy, and trade secret litigation. The practice is led by Jay (Young-June) Yang who has over 30 years of experience in all areas of intellectual property and has handled several landmark copyright infringement and unfair competition cases. Patent law specialist Young Kim is an expert in infringement cases involving pharmaceuticals, biotech and various electronic materials and structures. Kim works closely with Man Gi Paik who has developed a practice specialising in patent monetisation as well as strategic IP management consulting for both the public and private sector. Duck Soon Chang and In Hwan Kim are also recommended, with Kim focusing on product liability matters.

Practice head(s):

Jay (Young-June) Yang 

Testimonials

‘Very perceptive and strategic, allowing for successful IP protection strategies.’

‘They care about their clients.’

‘K&C does our most important patent prosecution work for our commercial products. K&C has also advised on related regulatory, competition and patent prosecution work.’

‘K&C also has done licensing-related work and patent-related submissions concerning regulatory matters. Kim and his team are proactive, raising issues for our consideration and review beyond the immediate issue that we have presented. It is always a pleasure to work with In and his team. In and his team’s advice is insightful, proposing courses of action that address and seek to obtain the end we seek.’

‘Sang-Wook Han and Duck Soon are the best. SW is a suave internationalist, guiding clients through the Asian litigation landscape with panache. Duck Soon is a general who guides his troops to success.’

Key clients

Apple Inc.

DuPont

Intel Corporation

Canon Inc.

Robert Bosch GmbH

L’Oréal

Pfizer

Sony Corporation

Medytox Inc.

Hermès

Work highlights

  • Represented an innovator pharmaceutical company against a patent challenge brought by generics.
  • Represented Hermès in a landmark litigation against an individual offering workshops on how to make lookalikes of their famous handbags by asserting that the act of instruction amounted to a violation of the consumer confusion provision of the UCPA.
  • Represented an originator pharmaceutical company against a patent challenge brought by generic companies.

Lee & Ko

Lee & Ko’s team of partners, associates and patent attorneys work together at an ‘exceptional level of efficiency’. The team advises a wide range of clients in patent and technology-related matters; in the patent space, the group represents multinational companies from various sectors including pharmaceutical, chemical and mechanical. The group is particularly strong in trademark litigation and has set precedents in the Supreme Court. Un Ho Kim leads the team and is an expert in all areas of IP, with specific knowledge in patent infringement and invalidation cases. The team is ‘nothing short of exceptional’ and includes a number of key practitioners; Young Mo Kwon focuses on patent technology and licensing; Choong Jin Oh is well known for setting legal precedents that are applied to high-technology industries such as mobile game; Keum Nang Park is a licensed pharmacist and leverages this expertise in her practice; and Hui Jin Yang is a life science expert. Jae Hoon Kim is also recommended.

Practice head(s):

Un Ho Kim

Testimonials

‘Our experience with Lee & Ko has been nothing short of exceptional. In particular, we have been impressed with their round-the-clock responsiveness, sharp legal minds and strategic thinking.’

‘Lee & Ko’s team of partners, associates, and patent attorneys worked together as one body in a remarkably smooth, effective, and cost-saving way. This is an exceptional level of efficiency and seamless coordination. ‘

‘Lee & Ko has shown the utmost excellence among the global firms we have worked with when it comes to their efficient performance and high quality work.’

‘We highly appreciate and value the work of Jae Hoon Kim, the head partner who oversaw the entire litigation, and Hayoun Chan, the working-level partner in charge. John Kim is also a noted name. They focused on both the details and the big picture, whilst keeping in mind the commercial imperatives. Jae Hoon is a legendary figure in the Korean IP world – he makes himself available all the time and provides insightful inputs. John has the advantage of being fluent in English, which makes him an asset to the team. He is also well versed with US litigation and practice, and is able to explain Korean practice and concepts in terms that are familiar to common law lawyers.’

‘Hui Jin Yang – best patent litigator/counsel in Korea regarding pharmaceuticals, biotechnology and life sciences.’

‘Choong Jin Oh – highly experienced former judge of the Korean Patent Court and exceedingly knowledgeable of Korean patent law practice.’

Key clients

Ericsson-LG Co, Ltd.

Novartis International AG

JNC Corporation and JNC Petrochemical Corporation

Big Hit Entertainment Co., Ltd.

LG Chem Ltd.

Daewoong Pharmaceuticals Co., Ltd.

Bristol Myers Squibb

Bayer AG

Williams-Sonoma, Inc.

Actial Farmaceutica Srl

Giorgio Armani S.p.A.

YG Entertainment Inc.

LG Household & Health Care Ltd.

Coupang Corp.

Kakao Corp.

OCI, Inc.

Naver Corp.

Manda Fermentation Co., Ltd.

Samsung SDI Co., Ltd.

Hanwha Solutions Corp.

Marriott International, Inc.

PI Advanced Materials Co., Ltd.

Marriott International, Inc.

Celgene Corp.

LG Electronics Inc.

Simplot Plant Sciences

Kakao Page Corp.

KPX Chemical Co., Ltd.

Astellas Pharma Inc.

Work highlights

  • Represented Ericsson-LG Co., Ltd., a leading electronics company, in defending a patent infringement action filed by a university.
  • Represented and advised Big Hit Entertainment Co., Ltd., a Korean major entertainment company, in procuring the first-ever decision to recognize the right of entertainment companies against free-riding of artists’ fame and entertainment company’s effort and investment.
  • Assisted JNC Corporation and JNC Petrochemical Corporation, a leading chemical manufacturer, in upholding the validity of its patent that uprooted the long-standing standard for inventiveness.

Shin & Kim

Offering the full range of services in IP litigation, transaction and advisory work, Shin & Kim’s team of experts handle both domestic and cross-border mandates. It has extensive expertise in counterfeiting, cybersquatting and domain names in addition to copyright prosecution and other traditional IP issues. The team has seen an increase in major trade secret cases as well as domestic IT-based copyright disputes involving the Korean entertainment industry; an area in which the team is particularly strong. Practice head Ghyo-Sun Park primarily focuses on litigation in connection with IP and product liability, while Yong Ho Kim is an information and communications litigation expert. Registered patent attorney Bo Kyung Lim and Head of Copyright and Media Contents, Sang-Hyeok Im are other key practitioners at the firm.

Practice head(s):

Yong Ho Moon; Ghyo-Sun Park

Testimonials

‘Shin & Kim’s IP team boasts its analytical skills in cases and provides required services in a timely manner based on an accurate understanding of what companies need. In this sense, Shin & Kim has been widely known as a promising law firm in the pharmaceutical industry. The level of service fees charged by Shin & Kim is appropriate and considered rational compared to the quality of service provided by Shin & Kim.’

‘Shin & Kim’s IP team led by attorney Bo Kyung Lim is equipped with the technical expertise required for pharmaceutical patent as well as experience and capacity to understand and apply relevant IP legal principles. The team also has extensive knowledge in legal principles or cases in other countries which helps them to provide in-depth and sufficient defense for different level and types of litigations.’

‘Shin Kim lawyers are experts in copyright lawsuits, especially Sang Hyeok Im in Korea and Kyle Choi in the US. Their service was excellent and gave us very good results to settle the case.’

‘This team is excellent at aligning the needs of international clients with the realities of the local regulatory environment and commercial and legal practice. The internationally-facing and local-facing coordinate well to deliver a seamless product.’

Key clients

Samsung Display Co., Ltd.

Samsung SDI Co., Ltd.

Gilead Sciences, Inc.

Helixmith Co. Ltd.

KT&G Corp.

Seoul Semiconductor Co. Ltd.

Hanmi Pharm Co., Ltd.

Chong Kun Dang Pharmaceutical Corporation

Wemade Entertainment

Amosense Co., Ltd.

Binggrae Co., Ltd.

CJ CGV Co., Ltd. (CGV)

Seoul Broadcasting System (SBS)

POSCO

Hilton Grand Vacations Inc.

11 Street Co. Ltd

Hankook Technology Inc.

Work highlights

  • Represented Gilead Sciences, Inc in patent infringement and invalidation actions.
  • Acted for Hankook Technology Inc. in a preliminary injunction against unfair competition activity.
  • Assisted Hanmi Pharm Co., Ltd. in damage compensation for decrease in drug prices.

Yulchon

Specialists in contentious IP matters, Yulchon frequently represents clients in bet-the-company cases. Its wide-ranging client base includes players in the fashion, e-commerce, software and pharmaceutical industries and has seen increasing engagement with newly emerging technologies such as FinTech and nanotechnology; the IP practice’s subunit, the New Industry Team, handles complex transactions in this area. Jeong Yeol Choe acts for clients in civil, administrative and criminal cases relating to patents, and leverages his extensive experience as a former judge at the Patent Court of Korea in his role as head of the firm’s IP group. Samuel SungMok Lee specialises in IP law and due diligence in the electrical, chemical and software arts. Yong Min Lee and Hyeong Joo Lim are also recommended.

Practice head(s):

Jeong Yeol Choe

Testimonials

‘Good teamwork, proactive, reasonable billing, amazing performance.’

‘The team has great synergy; the leader designed the plan based on global IP strategy, and other team members provide various ideas on the plan. They communicated well with each other, and they deeply trusted their team members. That makes their IP strategy filled with innovative ideas. It is totally different from any other formulaic IP strategies of other firms.

‘Hyeong Joo Lim and Yong Min Lee are the best professionals I’ve ever met in legal industry. They have real-world insight on IP dispute area. And they provide practical advice to their clients, rather than just give theoretical legal analysis.’

‘Strong experience and excellent team members. ’

Key clients

Samsung Group, e.g., Samsung Electronics Co. Ltd., Samsung Display, Samsung C&T Corporation, Samsung SDS, Samsung Biologics, Samsung SDI Co. Ltd.

Corning Inc.

Seoul Semiconductor Co., Ltd.

SK Group, e.g., SK Chemicals Co. Ltd., SK Bioscience, SK Networks, SK Biopharm, SK TI, SK Siltron, SK C&C

Hanwha Group, e.g., Hanwha Machinery Division, Hanwha Chemical Co., Ltd., Hanwha Q Cells Co., Ltd., Hanwha Life Insurance Co., Ltd., Hanwha Hotels & Resorts Co., Ltd., Hanwha Estate

Hyundai Group, e.g., Hyundai Engineering and Construction Co., Ltd., Hyundai Motor Company, Hyundai Steel Co., Ltd., Hyundai Autoever

LG Group, e.g., LG CNS, LG Corp., LG Chem Ltd., LX Hausys

Daesang Corporation

Coupang Inc.

Pohang Iron and Steel Company (POSCO)

Work highlights

  • Represented Samsung Electronics and Qualcomm in a patent invalidation trial involving a patent that relates to FinFET technology filed against KAIST, and successfully settle the matter. The corresponding US case resulted in a jury verdict of $200m.
  • Represented ToolGen and one of its directors in a criminal trial involving CRISPR/Cas9 patents, the underlying technology of which is a new powerful tool for editing genes expressed in plants, animals, and even humans.
  • Advised Winia, a major Korean manufacturer of home appliances, with respect to criminal investigations and proceedings filed against its former employees and its competitor, Navien, for trade secret theft.

Bae, Kim & Lee LLC

Bae, Kim & Lee LLC’s intellectual property team is particularly strong in representing clients in the pharmaceutical and high-tech industries and on the non-contentious side, advises entertainment and sports sector clients in connection with IP licensing and technology transfers. IP transaction specialists Mun Ki Nam and Ingi Min are the key contacts in this area of work. The group also has a trade secret practice that encompasses all aspects of litigation, investigation and legal compliance involving trade secrets in both civil and criminal contexts; Jihyun Kim and Tae Uk Kang are key members of the team. Kijoong Kang oversees the department, with his practice focused on IP litigation, including domestic litigation as well as counselling and management of foreign IP litigation. Taeck Soo Kwon is well known for his expertise in intellectual property jurisprudence.

Practice head(s):

Kijoong Kang

Testimonials

‘BKL’s Intellectual Property team showed an excellent teamwork, expertise and professionalism throughout client’s project. BKL played a critical role to bring the dispute to a successful conclusion with a superb capability beyond IP matters and provdided comprehensive legal service to meet client’s needs. ’

‘Jihyun Kim presented great professionalism and expertise in resolving our dispute. Her service did not stop at just providing IP analysis, but covered broad matters beyond IP issues, oftentimes even helped the client come up with innovative business ideas in cases of making tough judgments. ’

‘BKL has an international presence and can work on IP cases globally. They support a big Korean multinational company against a big Japanese firm in well-known global IP litigation.

‘They maintain an excellent international legal network to provide the best supporting team for their client.’

‘I work with Hoodong Lee and Wonyoung Chung on big international litigation, and they support their client very well. They speak Japanese very well and support the client efficiently. They maintain excellent communication with the client.’

‘BKL lawyers have given their opinion very promptly. They find legal issues exactly and we are satisfied with their opinion. A specific stand-out partner is Jihyun Kim.’

‘BKL team handle technical disputes including patent infringement and invalidity cases with support of the patent prosecution division. They are very familiar with the Japanese practice of the court and the JPO. ’

Key clients

LG ENSOL(former LG Chem)

Starbucks Korea

Uber Technologies (“Uber”)

Hyosung TNS Inc.

Lotte Confectionery Co., Ltd.

Actoz Soft Co., Ltd.

The Korea Exchange

Celltrion

LG Uplus Corp, and KT

Watcha, Wavve, and Kakao TV

CJ CheilJedang, CJ Japan Corp.

Daewon Media Co., Ltd., and Futabasha Publishers Ltd.

GS Retail Co., Ltd.

HP Printing Korea

JW Holdings

Media Res Studio

Scatter Lab Co., Ltd.

Work highlights

  • Represented LG ENSOL(former LG Chem) for the dispute over infringement of trade secrets and other intellectual properties.
  • Represented Starbucks Korea Inc. in the lawsuit for patent infringement regarding an electronic payment system.
  • Advised Uber on the establishment of a joint venture in Korea.

Yoon & Yang LLC

Yoon & Yang LLC’s growing intellectual property practice has seen the arrival of senior foreign attorney Seung-Kook Synn , who has served as general counsel and senior vice president of major companies of SK Group, most notably, he was in charge of IP rights at SK Hynix. The team handles a wide range of matters relating to patents, trade secrets, copyright and trademark disputes and prosecution. Practice head Wonil Kim is the key contact for trade secret matters. Dongju Kwon is regularly instructed by clients for his patent expertise. Chang Woo Lee and Sejung Lee are experts in patent and trade secret issues. Noteworthy juniors in the team include Keun Woo Lee who acts on some of the firm’s most high-profile trade secret and copyrights litigations and retains major broadcasting companies in his clientele.

Practice head(s):

Wonil Kim 

Testimonials

‘The team works well with teams in the other countries who are working on related cases. The firm has also provided advice to my company’s local Korean in-house regulatory attorneys in providing responses to queries by the Korean Ministry of Health concerning the patent litigation matters that they are handling. I consider them one of the best firms that I have ever worked with.’

‘All members of Yoon & Yang team display a high level of professionalism and involvement in the matters that they represent. They are also client-centered and were able to meet the demanding workload during the US International Trade Commission investigations.’

‘Yoon & Yang operates a discovery center dedicated to US-style discovery procedures which is staffed by capable attorneys. Yoon & Yang’s effort was instrumental in successfully conducting the extensive discovery required of by the US International Trade Commission.’

‘With regard to billing, we felt that it was very reasonable. We never identified any superfluous work in the invoices and feel that Yoon & Yang IP team provides excellent “value for money”.’

‘Chang Woo Lee’s engineering background and his knowledge in both US/Korean laws was extremely helpful. He provided clear and insightful advice which helped with the company’s decision-making in the cases.’

Key clients

SK Innovation

Merck Sharp & Dohme Corp.

Kumho Petro Chemical Co., Ltd.

SK hynix, Inc.

Microsoft

Siemens AG

HITE Jinro

Hanmi Pharm

Kolon Life Science

W-Scope

SK Chemicals

SK bioscience

Meditox

SK ie technology

SK Shipping

STX Engine

SPC Group

Hanwha Compound

ST Unitas

Work highlights

  • Represented SK innovation in the Korean proceedings which were raised in parallel with the US proceedings before the US ITC and the Delaware District Court. Advised SK Innovation in connection with the US proceedings in collaboration with the local counsel.
  • Representing Merck in the proceedings where the validity of Pfizer/Wyeth’s patent concerning its 13-valent pneumococcal polysaccharide-protein conjugate vaccine (Prevenar 13).
  • Representing SK Chemicals in a patent infringement action brought by Novartis alleging that SK Chemicals infringed its patent relating to Exelon Patch.

Jipyong

The intellectual property team at Jipyong handles traditional IP matters such as patent disputes and trademark and design, but also tackles emerging issues in various industries, including trade secret, IP abuse and IP due diligence. Practice head Jeong Kyu Choe specialises in the TMT industry, advising major domestic media companies in civil and criminal cases. For ICT and R&D issues, So Young Lee advises on copyright, personal information and FinTech.

Practice head(s):

Jeong Kyu Choe

Key clients

Kakao Corp. and Kakao M Corp.

Aekyung Industrial Co., Ltd.

Dongkook Pharmaceutical Co., Ltd.

GC Company Corp.

Optical Manager

Korea Communications Commission

Line Games

Pharmabcine, a biotech company focusing on antibody drug discovery

Deargen, an AI platform provider for drug discovery

Miro Co., Ltd.

HITEJINRO Co., Ltd.

Work highlights

  • Represented Dongkook Pharmaceutical in a claim for injunction and damages related to trademark infringement against a company which used a “Madeca” mark without Dongkook’s permission.
  • Represented Aekyung Industrial Co., Ltd. in disputes over branding and designs and obtained rulings all in favor of the client.
  • Represented Aekyung Industrial Co., Ltd. in trademark infringement and compensatory damages actions regarding “Pumping Toothpaste”.

Yoon & Lee

Under the intellectual property umbrella, Yoon & Lee has five distinct sub-groups which focus on specific areas: Yong-Won Lee is head of the standard patent team; Sang-Yong Lee oversees all trademark and design matters; Ji-Man Park handles outbound and inbound TMT cases; Byeong-Ok Song specialises in mechanical engineering and managing partnerDong-Yol Yoon heads up the chemistry/biotech team. Yoon has extensive experience in the IP space and is president of the Intellectual Property Forum which was established in order to promote the protection and utilisation of intellectual property in Korea. The team represents a range of clients, from global corporations to medium-small sized enterprises.

Other key lawyers:

Ki-won Na; Seong-hee Lee; Sung-rock Choi

Testimonials

‘Yoon & Lee is very strong in its technical knowledge and abilities as well as its knowledge on patent prosecution practices. Its experts have an in-depth knowledge of their particular technical specialities with up-to-date and advanced knowledge in their fields.’

‘Yoon & Lee is very responsive to client demands and provides great feedback and detailed advice and explanations. Clients can expect them to be focused and work really hard on their behalf to produce the optimum outcome. They will not be better served by any other representative in Korea. ’

‘We deal mainly with the Telecommunication and Standard Patent teams of Yoon & Lee. The partners heading the teams, Mr. Ji-man Park and Mr. Yong-won Lee, both have great experience and knowledge in these technical areas as well as an excellent understanding of patent prosecution processes. Both are excellent communicators for explaining or presenting the issues. In addition.’

‘Mr. Lee is an expert in telecommunication standards. Other notable individuals include Ms. Ki-won Na, Mr. Seong-hee Lee, and Mr. Sung-rock Choi. Ms. Na is in great demand from clients for her ability to produce excellent work while operating on a tight time schedule. Both Mr. Lee and Mr. Choi have excellent abilities for drafting and prosecuting patent applications. ’

‘Yoon&Lee is one of those firms not only relying on Samsung but also serving other clients. That makes them a balanced firm.’

Key clients

Samsung Electronics

Sony Interactive Entertainment Inc.

Amore Pacific

Naraenano-Tech Co. Ltd.

Naeilhae Co. Ltd.

Wavelink Co. Ltd.

KMDP Co. Ltd.

Bandyco Co. Ltd.

Chrio Korea Co. Ltd.

Handu Korea Co., Ltd.

Trust & Communication Co., Ltd.

Homyung Eng. Co. Ltd.

Hon-ik Group

Gachon University

Security Zone, Co. Ltd.

Work highlights

  • Assisted Naeilhae Co., Ltd in a patent case related to “Apparatus and Method For Detecting Defects,”  appealing against a lack of inventive step rejection.
  • Conducted a search for BC Innovation to determine whether or not a trademark was likely to be registered.