Intellectual property: local firms in South Korea

Bae, Kim & Lee LLC

The 'well-organised' IP practice group at Bae, Kim & Lee LLC is renowned for its contentious capabilities in this space, which cover general IP litigation and dispute resolution in addition to patent prosecution and trade secret-related matters. A particular strength in representing major players in the pharmaceutical and high-tech industries distinguishes the practice. Elsewhere, the team also handles IP licensing and technology transfers and advises on data protection and privacy issues. Practice heads Taeck Soo Kwon, Jihyun KIM and Jong Wook Lee are all recommended. Also noteworthy is Tae Uk Kang, who boasts five years' prior experience as a judge including his two-year-long service at the IP department of Suwon District Court.

Practice head(s):

Taeck Soo Kwon; Jihyun Kim; Jong Wook Lee

Other key lawyers:

Tae Uk Kang

Testimonials

In my opinion, this law firm is number one for IP. Their works has always been not just satisfactory, but impressive. This is because they have a high level of man-power to respond to effectively to a range of IP issues‘.

I strongly recommend Jihyun Kim and Jaegyu Yoo for their high levels of professionalism, excellent responsiveness and resourcefulness‘.

Key clients

Seoul National University R&DB Foundation

LG Electronics

Tovis Co. Ltd.

STARBUCKS KOREA Inc.

Samsung Electronics

Actoz Soft

UMG Recordings, Inc

Seoul Media Group

MTG Co., Ltd.

HP Korea Co., Ltd.

Work highlights

  • Representing Seoul National University in an infringement case and an invalidation case pertaining to the SNU R&DB Foundation’s patents Nos. 910,178 and 830,415 for mobile communication systems.
  • Represented LG Electronics as a supplementary participant to Qualcomm’s administrative litigation for the cancellation of a fine imposed by the KFTC for abuse of dominant market position and unfair trading practices.
  • Representing Starbucks in the civil lawsuit regarding a the patent relating to its electronic receipt system.
  • Advising Actoz Soft on the disputes between Actoz and Wemade Entertainment.  Actoz and Wemade are the joint copyright holders of an online PC game, which is well-known in both Korea and China.
  • Represents UMG Recordings and its Korean subsidiary, Universal Music Korea, in connection with a copyright infringement action against Mediascope’s Internet radio service called “Dinga Radio.”  UMG Recordings is the publisher and copyright owner of many of world famous music.

Kim & Chang

'Highly knowledgeable, responsive and accurate', the IP department at Kim & Chang is led by Jay (Young-June) Yang. The department comprises several sub-practices which liaise seamlessly to cover the full range of IP work; these are the patent practice, the trade mark practice, the IP litigation practice and the IP transactional practice. Key areas of operation include patent infringement litigation, domestic and foreign patent prosecution, patent due diligence for transactions and support on US-based IP litigation (including pre-trial discovery document review and deposition support). Senior patent attorney Young Kim boasts a track record of handling numerous landmark cases at the supreme court. Also recommended on this front is Man Gi Paik.

Practice head(s):

Jay (Young-June) Yang

Other key lawyers:

Young Kim; Man Gi Paik

Testimonials

Without Kim & Chang’s strong argumentation skills and persuasiveness, our case wouldn’t have been a success. The team’s deep understanding of the recent Unfair Competition Prevention and Trade Secret Protection Act 2. Ka-mok, which currently has few precedents, was indispensable in our arguments‘.

Youngsun You and Deahyun Seo quickly got up to speed with our business and our long-term commercial strategy, forming strong arguments with these goals in mind. They service was excellent and consistent‘.

In-Hwan Kim and Jung-Ho Yoon are highly knowledgeable and experienced IP professionals with great communication and technical skills‘.

They have a very strong legal expertise and at the same time are able to understand the client’s needs and consider the pragmatic view. They also took the time to get to know our business and thoroughly understand the trade environment in which we functioned‘.

We are extremely happy with the work carried out by Ann Kwon and Alexandra Belec; they are prompt and agile experts‘.

Key clients

Apple Inc.

L’oreal

Intel Corporation

Canon Inc.

Robert Bosch GmbH

Carl Zeiss Co. Ltd.

Bayer

Sony Corporation

Saint-Gobain

Amazon Inc.

Work highlights

  • Successfully represented Astellas (plaintiff) in an infringement action filed during the patent term extension (PTE) of Astellas’ patent covering various novel compounds including solifenacin.
  • Successfully represented Bunchang ENG in its Supreme Court appeal of a scope confirmation action concerning a device for lifting a “gang form” – a type of external scaffolding used in construction to allow the building of high walls in stages.
  • Successfully represented Novartis in an administrative action concerning the patent term extension (PTE) related to Exelon® Patch for treating dementia associated with Alzheimer’s disease.
  • Successfully represented a printer manufacturing company in a patent infringement action involving two patents related to a printer cartridge neck coupling.
  • Represented the CATIA software maker (Dassault Systèmes) who accused Hanall of copyright infringement on the basis that use of Hanall’s software tool created multiple copies of the CATIA software in excess of the licensed concurrent-user limits.  

Lee & Ko

Un Ho Kim leads the IP department at Lee & Ko, which comprises IP trial lawyers and patent attorneys who possess expertise across a broad range of sectors including pharmaceuticals, biotechnology, telecommunications and software. Besides patent and trade mark prosecution, the group also acts for clients in cases pertaining to trade secrets and unfair competition and copyright enforcement. The firm's dedication to further developing its offering was evinced by the 18 new clients who recently instructed it on IP matters, including Korean media giant BigHit Entertainment. Choong Jin Oh and Hui Jin Yang are both highly recommended. Also of note is Young Mo Kwon, whose practice in this area spans over 30 years.

Practice head(s):

Un Ho Kim

Key clients

Microsoft

LG Electronics

LG Chemical

Samsung Electronics

eBay

Novartis International

Bristol Myers Squibb

King.com

JNC Corporation / JNC Petrochemical Corporation

Silicon Mitus

Robert Bosch GmbH

JJGC Industria E Comercio de Materiais Dentarios S.A

The Face Shop

Actial Farmaceutica S.R.L.

Epic Games Inc.

Celgene Corporation

Giorgio Armani S.p.A.

Ericsson-LG Co., Ltd.

ITS Games Co., Ltd.

Hyungji I&C Corp.

Aptiv PLC

Hilton

Hanwha Q Cells Co., Ltd.

Daewoong Pharmaceutical Co., Ltd.

Big Hit Entertainment

Work highlights

  • Represented Ericsson-LG in a patent infringement suit filed by the Seoul National University involving standard essential patents on cutting-edge wireless communication technology.
  • Represented Novartis International AG in a patent invalidation challenge by Chong Kun Dang, a Korean pharmaceutical company concerning patents covering a blockbuster drug.
  • Represented Bristol Myers Squibb Company in patent invalidation actions against the listed patent filed by seven domestic pharmaceutical companies for a patent covering a blockbuster prescription blood thinner.
  • Represented ITS Games in the litigation and the negotiation for the terms of the settlement with one of the largest Korean game developers that implemented several elements of a popular MMORPG, “Aden.”
  • Represented Big Hit Entertainment in a preliminary injunction action against a media company for copyright infringement involving the worldwide boy band sensation, BTS.

Shin & Kim

Highly respected practitioners Yong-Ho Moon and Ghyo-Sun Park head up the IP practice group at Shin & Kim. The offering is especially reputed for its contentious IP capabilities, often working on complex litigation (including patent prosecution) and arbitration cases in addition to disputes related to unfair competition and trade secrets. Elsewhere, the firm also advises on the registration and licensing of trade marks, designs and copyrights. Bo Kyung Lim boasts niche expertise in the area of drug patents and pharmaceutical trade secrets. Shortly after the departure of Changsu Park in February 2019, Jong Woo Lee joined from the judicial bench at Seoul Central District Court March 2019.

Practice head(s):

Yong-Ho Moon; Ghyo-Sun Park

Other key lawyers:

Bo Kyung Lim; Jong Woo Lee

Key clients

Samsung Display Co., Ltd.

Samsung SDI Co., Ltd.

Cosmax Co., Ltd.

Viromed Co., Ltd.

LMS Co. Ltd

Seoul Semiconductor Co. Ltd.

Hanmi Pharm Co., Ltd.

Chong Kun Dang Pharmaceutical Corporation

Gilead Sciences, Inc.

Korea United Pharm. INC

Binggrae Co., Ltd.

Wemade Entertainment

Seoul Broadcasting System (SBS)

Korea Development Bank (Crayon IP)

Work highlights

  • Represented Cosmax and 5 other cosmetic manufacturers on a patent infringement and invalidation of patent right case.
  • Represented ViroMed in an arbitration case for the transfer of patent rights.
  • Representing Seoul Semiconductor in a damage claim for a third party patent infringement against Japanese BLUE lens supplier Enplas Display Device.
  • Successfully obtained the cancellation of a patent invalidation decision for Chong Kun Dang Pharmaceutical.
  • Represented Chong Kun Dang Pharmaceutical on the the filing of a patent invalidation claim against Bristol-Myers Squibb Company regarding the patent for Eliquis, the worldwide successful blockbuster oral anticoagulant.

Yulchon

A significant uptick in trade secret matters is evident at Yulchon's IP department. In order to meet this demand, the firm has developed a devoted trade secrets subgroup which is headed by Hyeong Joo Lim. Lim boasts a track record of representing clients in patent infringement cases before the supreme court. The group is reputed for fostering strong relationships with major players in the healthcare and pharmaceutical sectors, although it also regularly services clients in the consumer electronics, software, specialty chemicals and steel sectors. Jeong Yeol Choe acts as overarching practice head. Cheol Hwan Kim, Yong Min Lee and foreign attorney Sung Mok Lee are also highly recommended.

Practice head(s):

Jeong Yeol Choe

Other key lawyers:

Hyeong Joo Lim; Cheol Hwan Kim; Sung Mok Lee; Young Min Lee

Key clients

Samsung Group

Qualcomm Incorporated

Seoul Semiconductor Co., Ltd.

SK Group

Hanwha Group

Hyundai Group

LG Group

Amorepacific Corporation

Glaxo Group, GSK Korea

KB Financial Group Inc.

Work highlights

  • Represented Daeyou in assisting prosecutors with the criminal investigation of a competitor and two former employees for violating the Unfair Competition Prevention and Trade Secret Protection Act.
  • Represented Celltrion against Roche Diagnostics AG in a patent infringement lawsuit and patent invalidation lawsuit for a biosimilar of Herceptin, which is used to treat breast cancer.
  • Represented Samsung Electronics in a patent invalidation proceeding against a non-practicing entity.
  • Represented Kumkang Shoes in a lawsuit involving trademark infringement claims and acts of unfair competition claims raised by Regal Corporation.
  • Representing Glaxo Group in a preliminary injunction proceeding filed against Daewon.

Cho & Partners

Besides 'excellent levels of responsiveness', the IP team at Cho & Partners 'consistently offers prompt, concise and practical advice'. The firm is noted for representing multinational household-name clients across a wide range of industry sectors including technology, luxury goods, fashion, retail, automotive and pharmaceuticals. With a client roster fielding the likes of Burberry, LVMH and Apple, the firm continues to develop a robust reputation in this field.  Tae-Yeon Cho, Ik Hyun Seo and Miro Hong are joint practice heads. Kathryn Lee is also highlighted by clients as a key practitioner.

Practice head(s):

Tae-Yeon; Cho Ik Hyun; Seo Miro Hong

Other key lawyers:

Kathryn Lee

Testimonials

Ik Hyun Seo and Kathryn Lee have been a pleasure to work with. We value their practical, user-friendly advice and the quick, effective solutions‘.

Key clients

Wal-Mart Stores

Microsoft

LVMH

Burberry

Philip Morris International

The Motion Picture Association of America

Danone Group

adidas

Intel

Hasbro, Inc.

Molson Coors Brewing Company

Apple

BMW

Work highlights

  • Representing Louis Vuitton in litigation against LG Household & Health Care Ltd. for trademark infringement based on a product from its subsidiary The Face Shop.
  • Actively engaged in enforcement actions for Apple.
  • Began representing Crocs in enforcement matters in Korea that started couple of years ago (transferred from a large general practice firm) and already filed two civil complaints and sent a number of C&Ds to sellers of shoes infringing on Crocs’ 3D trademark registration.
  • Engaged in a long term strategy against a registrant of a mark similar to the famous TRANSFORMERS mark.
  • Representing our client in patent litigation against KT&G, a Korean tobacco company, for using our client’s technology in the breakable capsule within the filter portion of a cigarette.

Jipyong

At Jipyong, the nine partner-strong IP practice group is jointly headed up by Chang Ik Sung, So Young Lee and Mun Hui Kim. The firm handles an impressive breadth of contentious and non-contentious work in this area, from the registration of copyrights and trade marks to representation in litigation arising from trade secrets and unfair competition issues. Identifying and preventing the entry of goods that infringe clients' IP rights through customs is another key area of operation. Sung is especially noted, having previously served as a judge at the patent court.

Practice head(s):

Chang Ik Sung; So Young Lee; Mun Hui Kim

Key clients

Hyundai Motor Company

Reno ENG Co., Ltd.

Aekyung Industrial Co., Ltd.

Dongkook Pharmaceutical Co., Ltd.

Electronic parts manufacturer

Former work-for-hire inventors of an e-payment certification service provider

Computer programmer

Work highlights

  • Successfully defended Hyundai Motor Company in a claim for damages.
  • Successfully represented Reno ENG Co., Ltd. in an action involving the amendment of a patent application, obtaining a Supreme Court decision which vacated the lower court decision and remanded the case.
  • Defended an electronic parts manufacturer’s action related to compensation for work-for-hire inventions before the Supreme Court.
  • Compensation claim for work-for-hire inventions relating to mobile certification brought by former employees of an e-payment certification provider.
  • Successfully defended a computer programmer in a criminal action where he was charged with copyright infringement and occupational breach of trust in connection with the development of computer programs.

Yoon & Lee

Mid-sized IP boutique Yoon & Lee provides a comprehensive range of services regarding both the management and enforcement of IP rights. With a high number of patent attorneys on its bench, the team is particularly well-known for successful patent prosecution. Trade marks are another area of specialist expertise with key practitioner Sang-yong Lee particularly noted on this front. Lee heads up the offering, alongside Ji-man Park, Yong-won Lee, Byeong-ok Song and recently made-up partner Seong-hwan Park (promoted in January 2019). The firm most often acts for clients active in the electronics, pharmaceuticals, cosmetics, as well as mechanical and mechatronics sectors.

Practice head(s):

Ji-Man Park; Yong-Won Lee; Byeong-Ok Song; Sang-Yong Lee; Mr. Seong-Hwan Park

Key clients

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.

Work highlights

  • Represented a mechanics client in a Trial-Decision cancellation litigation before the Patent Court.
  • Represented an electronics client in a Trial against the 2nd Final Office Action before the Patent Trial & Appeal Board (PTAB).
  • Represented a telecommunications client in a Trial against a 2nd Final Office Action before the Patent Trial & Appeal Board (PTAB).
  • Represented an electronics in a Trial against the Final Office Action before the Patent Trial & Appeal Board (PTAB).
  • Represented a pharmaceutical client in an Office Action before the United States Patent and Trademark Office (USPTO).

Yoon & Yang LLC

Yoon & Yang LLC regularly represents clients in both prosecuting and defending claims of patent infringement. The firm is particularly well known for its role in IP dispute resolution cases with a cross-border element. Trade mark litigation and trade secret disputes are some other core areas of work. The group recently worked on a number of matters involving clients in the industrial and manufacturing industry, in addition to those regarding the pharmaceuticals and life sciences, aviation and shipping, as well as media and entertainment sectors. Practice head Wonil Kim is recommended, as is Dongju Kwon, who splits his time evenly between IP and broader corporate litigation. Kwon boasts prior experience at the Patent Court of Korea.

Practice head(s):

Wonil Kim

Other key lawyers:

Dongju Kwon

Key clients

Microsoft Corporation

Intel Corporation

Cathay Pacific Airways Ltd.

Oriental Brewery Company (Korean subsidiary of Anheuser-Busch InBev)

Merck & Co., Inc.

United Technologies Corporation

British America Tobacco

Qualcomm Corporation

LG Electronics

MAN Bus & Truck

Work highlights

  • Representing KT Corporation in two appeals at the Supreme Court concerning the client’s patents.
  • Representing Hanmi Pharm in a patent infringement action brought by Pfizer, seeking provisional injunction.
  • Represented a former researcher of Samsung Electronics in an action brought by the researcher claiming fair compensation regarding inventions concerning NAND flash memory technology which he developed during his employment with Samsung Electronics.
  • Successfully defended SK Innovation in a preliminary injunction action brought by a company which owns a patent concerning boxes used to transport secondary batteries, claiming that the boxes used by SK Innovation for the export of secondary batteries to Mercedes-Benz infringes its patent.
  • Representing Sungjin Semitech in a patent infringement action against a competitor, seeking injunctive relief and damages concerning the competitor’s infringement of its patent directed to mask cassette used for the manufacturing of organic light emitting diode (OLED).