Asialaw Profiles
The Guide to the legal markets of the Asia-Pacific

The top-quality intellectual property practice at Kim & Chang handles all aspects of prosecution, litigation, patent, trade mark, design, copyright and trade secret infringement. Key members of the team include patent attorney and chemical practice specialist Young Kim, Sang-Wook Han and US patent expert Jay Kim. One case the team took on this year was representing Carrier Korea as its litigation counsel in two patent infringement actions and six patent invalidation actions against LG Electronics. The firm’s lawyers made strong arguments based on prior art references throughout the case and obtained a rapid decision in favour of Carrier.

Another significant matter saw the firm acting as litigation counsel to Sanofi-Aventis in confirmation-of-scope trials against five domestic pharmaceutical companies before the Patent Court. The Intellectual Property Tribunal ruled in favour of Kim & Chang’s client, agreeing that the domestic companies’ products fell within the scope of the Sanofi-Aventis’ patent.

Lee & Ko has a broad based intellectual property practice that boasts a full range of services including litigation, IP application, copyright, international licensing and franchising and other related practices. Lee & Ko has been busy successfully defending the blue-chip company Microsoft against a patent infringement case brought by an individual who claimed that Microsoft’s Silverlight programme had infringed his patent.

Another notable case saw Lee & Ko represent Seiko Epson Corporation in its preliminary injunction against various internet retailers for infringement of Seiko Epson’s patent for refilling ink cartridges. The case resulted in some retailers settling, while others have criminal charges pending. Samsung Heavy Industries used Lee & Ko’s services in a patent infringement brought by Transocean Offshore Deepwater Drilling. The case related to a patent for a drill ship. Lee & Ko was successful in its argument. Jack Daniel’s Properties, producer of the famous bourbon, used the firm in its successful case for trade mark cancellation and invalidation actions against individuals who registered marks similar to Jack Daniel’s.

Jae Hoon Kim is Lee & Ko’s main partner responsible for the IP department. Young-Mo Kwon is considered one of the best litigators in the country, with an international reputation. Kyong So Cha and Hwan Sung Park are two other respected names.

Lee International IP & Law Group is one of the country’s largest specialist IP firms. It truly offers a full range of services for trade marks and patents, providing IP management strategy, strong litigation and negotiating experience, and expertise in the natural sciences including chemistry, biology, pharmaceutical products and genetically-altered life forms. Specifically it provides counsel and litigation at the civil, criminal, and administrative level related to patents, trade marks, copyrights, computer programs, unfair competition and domain name disputes.

The firm has 49 patent attorneys and seven trade mark attorneys. A unique service is the practice’s breadth of knowledge handling matters related to publicity rights, defamation matters and counterfeit goods. Among its staff are highly-qualified legal and technical professionals, many formerly employed by the Kipo like ex-commissioners and examiners. The team includes IP specialists Young Kwan Na and Sang Hyoek Im.

Yoon Yang Kim Shin & Yu (YYKS&Y) is a full-service intellectual property firm taking in patent, trade marks, copyrights, litigation and arbitration. The firm has a particular reputation for patent work, and employs two former chief judges from the Korean Patent Court, giving it an edge over rivals. YYKS&Y managed to successfully appeal a decision in front of the Supreme Court on a previous case that had awarded Kimberly-Clark W120 billion. The firm represented LG Household Care and Procter & Gamble.

Another successful litigation saw the firm represent the SK Corporation in a patent litigation brought by Tonen, a Japanese affiliate of Exxon Mobile Corporation. One case still pending sees YYKS&Y represent SKC in litigation against Rohm and Haas. The firm was successful in the original case, but is now defending the company in an appeal. Wonil Kim is the department head and he can call on Duck-Soon Chang, an expert in patent enforcement.

Bae Kim & Lee’s full-service IP group includes the Bae Kim & Lee Patent Law Firm and the IP department of the related practice groups at the firm. This highly-specialised and focused group offers advice on IP matters to foreign and domestic clients, particularly in the areas of IP litigation, consulting, and patent prosecution in all the major fields of industrial technology. The practice last year gained further expertise by hiring Ki Dong Joo as an of counsel from the Seoul High Court of Appeals, where he was formerly a judge.

As a core area of the firm, its IP practitioners handle all types of patent and trade mark applications, registrations and related processes before the Korean Intellectual Property Office (Kipo). A first-tier litigation firm, Bae Kim & Lee brings this strength across to its IP practice and has a strong track record of experience litigating at both the trial and appellate levels on Kipo findings. Other IP-linked matters are frequently dealt with by the group such as data privacy, broadcasting, entertainment and unfair trade. Top lawyers Hoo Dong Lee, Eui In Hwang and Boh Young Hwang form a portion of the practice.

Founded in 2002, Cho & Partners has worked hard to gain a foothold in the IP legal market in Korea. Its core areas of service include patent, trade marks, related disputes and administrative proceedings. Its practice is divided into prosecution, anti-counterfeiting, internet matters, licensing, and litigation. The team is well-regarded for its litigation expertise, particularly in domain name cases, and consists of 12 lawyers. Top clients include Wal-Mart, KPMG International and Wells Fargo Bank, and its leading lawyers are founder Tae Yeon Cho and Ik-Hyun Seo.

Darae Law & Patent is a boutique IP firm that houses lawyers and patent attorneys who have held a range of posts as judges, examiners, technical officials in many IP governmental agencies. Its clients include foreign investors and domestic corporates. Areas of expertise include patent litigations in the fields of biotechnology, materials, electronics and telecommunications.

Central International Law Firm has one of the largest IP practices in Korea with an enviable history as an IP legal pioneer. Its services span the entire range of IP issues such as patent, trade secret, trade mark, copyright, domain-name disputes and unfair competition among others. Its contentious practice is established and well-regarded, particularly on international patent litigation. Clients include Philips, Johnson & Johnson, NTT DoComo and Motorola. A leading lawyer on the team is Dong Oh Hong.

Young-Chol Kim heads up the IP practice at Kim Choi & Lim. The established attorneys offer a comprehensive range of IP services such as prosecution, litigation, licensing and counselling in core IP areas of patent, trade marks, copyrights, domain names, trade secrets and other related issues. Clients such as Starbucks, Pantech, Battell, Amore Pacific, Bank of Korea and Samsung Electronics count on the firm for its IP advice. The attorneys and lawyers in this practice have expertise in a range of advanced sciences and engineering from biotechnology to mechanical engineering.

Shin & Kim’s IP practice is led by Ghyo Sun Park and clients include Tyco, KT&G, Hynix and Organon. It offers legal advice, negotiation and contract review agency services in trade marks, patents, trade secrets and product liability. The group concentrates on information technology fields such as e-commerce and software development.