South Korea

South Korea’s patent scene has typically been dominated by a handful of conglomerates and revolved around electrical engineering and consumer goods matters. However, there has been a gradual but noticeable broadening of the market in recent years. While work in the pharmaceutical and biotechnology areas is gathering steam, the government has also taken steps to give start-ups a boost, which has further diversified the playing field. The IP enforcement environment is also undergoing change: the judiciary continues to look to other competitive jurisdictions – especially the United States – to see how the positions of South Korean patentees could be further strengthened. Rights holders are now benefiting from enhanced protection and a wider range of options for enforcing their rights; consequently, there has been an uptick in litigation among small and medium-sized enterprises.

Firms: litigation and transactions

Bae, Kim & Lee LLC
AIP Patent and Law Offices
Darae Law & IP Firm
Shin & Kim
Yoon & Yang LLC
YOU ME Patent & Law Firm

Firms: prosecution

Highly recommended
YOU ME Patent & Law Firm
YP Lee Mock & Partners
Bae, Kim & Lee LLC
Darae Law & IP Firm
Koreana Patent Firm (Patent Attorneys & Counselors At Law)
Yoon & Lee International Patent & Law Firm
AIP Patent and Law Offices
AIP Patent and Law Offices is teeming with talent: its crack squad of technical experts includes former examiners and judges, as well as individuals with international and in-house experience in abundance. This depth of knowledge proves invaluable for those looking to procure and protect vital assets; the set is equally proficient on sophisticated contentious and non-contentious mandates. Founding partner Soowan Lee has three decades of IP know-how to draw upon and has held many prestigious positions over a lengthy career, including stints at the Korean Patent Court and the Supreme Court.
Bae, Kim & Lee LLC
Commercial outfit Bae, Kim & Lee casts a long shadow on the Korean legal market, not least thanks to its commanding IP practice. “The team consists of intelligent and experienced patent attorneys. It is absolutely responsive and communicates in a smooth, efficient manner. It also performs excellently in mediation.” With support from a phalanx of in-house translators, the patent division wins special praise for the results it hammers out in hard-fought disputes and intense transactional negotiations. In the closing months of 2015, it hit the headlines representing Hanmi in a €3.9 billion deal – the most profitable export of technology to date for a Korean pharmaceutical firm. Adroit counsellor Catherine Eunkyeong Lee is a managing partner of the IP practice who tackles chemistry-related instructions with verve. Elder statesman Taeck Soo Kwon “is a former judge with a wealth of experience and extensive knowledge of patent law”.
Darae Law & IP Firm
“Famed for its litigation services”, Darae Law & IP impresses across the spectrum of patent and corporate work. It marries refined IP advice with a holistic take on commercial concerns and can always get right to the heart of clients’ quandaries. The IP practice is home to a team of consummate professionals with rich and diverse backgrounds. For example, joint managing partners Yong-Sig Cho and Seung-Moon Park have chalked up a wealth of judicial experience between them; both are first-rate patent litigators and corporate advisers. “FirstLaw is among the best IP firms – especially for patents – in the country. Its staff are very professional and have a rigorous understanding of Korean and international laws. They are technically competent and quick learners. Their advice is insightful and practical, and they offer tailored solutions that efficiently meet business needs.” It recently bolstered its ranks with a number of smart hires, including PhD holders and a former examiner of the Korean Intellectual Property Office (KIPO). Founding partner Seong Ku Jang is another ex-KIPO examiner; today, he directs the mechanical practice group with a sure hand. Taking charge of the chemical/biotechnology group is Eun Hwa Choi, whose precision prosecution has won over many heavyweights in the field. “Leading IP law firm” Kim & Chang “offers outstanding services and guides you to the best solutions”. “The team fully understands your needs and has a solid grasp of foreign legal systems – its advice is second to none.” Peers are equally impressed by its “top-notch abilities in the IP space”. “The best for both prosecution and litigation”, “it is the firm you go to when a matter involves really important and innovative technology”. IP head Jay (Young-June) Yang “is a highly experienced and respected lawyer and leader. He is an expert of patent litigation and extremely skilled at handling multi-jurisdictional challenges and strategies”. Fellow contentious sharpshooters Duck Soon Chang and Jay Kim recently secured a string of victories for Bristol-Myers Squibb in relation to Baraclude, a top-selling drug in Korea; notably, the wins were achieved in spite of the counterpart US patent being declared invalid by the Court of Appeals for the Federal Circuit. Stints in-house have given Chun Yang first-hand insight into how the client mind set works. The electronics and software dynamo handles disputes and transactions with finesse; as does Kenneth Cho, who likewise gained invaluable in-house knowledge during spells at Philips and AT&T. Man-Gi Paik makes his debut in the IAM Patent 1000 this year. The patent prosecution chief is a former KIPO examiner in the electronics field and is also an authority on government policy-related issues.
Koreana Patent Firm (Patent Attorneys & Counselors At Law)
Koreana Patent Firm has been safeguarding the interests of domestic and international rights holders alike for almost half a century. Backed by a team of highly qualified engineers, its 50-strong crew of patent attorneys leaves no stone unturned. Prosecution is its metier, but it also executes on licensing, searching and enforcement instructions with poise and assurance. It has partnered with corporate heavyweight Shin & Kim on a business alliance agreement that ensures both firms can operate to their full potential. Senior managing partner Hae-Sun Park is the name to keep in mind. With “a large and significant IP practice”, Lee & Ko “has built a reputation as a firm that can really handle critical, high-value technological matters”. “It juggles a lot of litigation cases, but also has a sizeable – and growing – prosecution practice.” “The team provides solid legal and technical analyses, thorough strategies and prompt status reports.” This “premier firm” frequently acts on behalf of some of the world’s largest multinationals and makes light work of international infringement and invalidation proceedings. On several occasions it has broken new ground in landmark cases at the Korean Supreme Court. This is familiar territory for chemical engineer Young-Mo Kwon, one of the country’s most esteemed IP trial lawyers. He has been busy assisting Samsung Heavy Industries in a crucial invalidation trial against Daewoo. Un Ho Kim has been providing invaluable support to this endeavour; he draws on over 15 years of experience as a former judge of the Seoul High Court’s IP Division. Another standout practitioner with stellar credentials, Seong-Ki Kim has spent more than a decade serving the government as a patent examiner and negotiator on numerous international treaties; he fully comprehends all the nuances of patent prosecution. Having led over 100 worldwide contentious matters while serving as in-house counsel at Samsung Electronics – as well as being a former partner at a leading US law firm – John Kim has unparalleled international expertise. Overseeing the firm is Jae Hoon Kim, “an eminent figure in this field” who has masterminded several milestone patent suits over a glittering career. Famed for its prodigious prosecution practice, Lee International deftly processes thousands of patent applications each year. Its tightly packed team of professionals includes over 110 attorneys and more than 200 technical experts and paralegals; while complex cross-border transactions are meat and drink to its dedicated foreign attorney squad. A laser focus on client relationships and cost-efficient solutions keeps rights holders coming back for more. Patent practice head Terry Taehong Kim has advised many world-leading names; he is a dab hand in the electronic and mechanics domains.
Shin & Kim
Shin & Kim has a striking line-up of seasoned lawyers, many of which hail from impressive scientific and technical backgrounds. The IP offering of this commercial outfit cuts across the board, while a professional working collaboration with Koreana Patent Firm further augments its prowess in the patent space. It has been in the limelight of late for its performances in a string of high-profile battles in the pharmaceutical space; these include a Korean Supreme Court suit to determine the patent requirements of invention for second medical uses, a dispute addressing whether generic drugs should be allowed entry prior to patent expiration under Korea’s patent approval linkage system, and the country’s first case on whether a generic drug’s entry into the market constitutes patent infringement if it causes a reduction in the price of an original drug. Bo Kyung Lim played an instrumental role in all of these actions – and more. Well versed in patent, trademark and copyright law, he exudes authority at the crossroads of intellectual property and information technology.
Yoon & Lee International Patent & Law Firm
Staffed by a mix of patent attorneys, former KIPO examiners and technical advisers with advanced qualifications, Yoon & Lee is a force to be reckoned with on the IP scene. Its technically and geographically diverse clients benefit from a savvy approach that places business goals at the forefront of its thinking. As testament to its enduring quality, it maintains 20-plus year relationships with several major Korean companies and was also recently selected by the government as a recommended firm for venture companies. Firm founder and president Dong Yol Yoon is the current president of the Intellectual Property Forum, which promotes the protection and utilisation of intellectual property in Korea. A master of all things chemistry, he has cultivated a keen understanding of both the US and Korean patent systems.
Yoon & Yang LLC
With outposts scattered across Asia, Yoon & Yang boasts considerable regional clout and is a reliable partner for outward-looking patent owners keen to expand their international influence. Adept in IP matters across the contentious/non-contentious boundary, it has a particular flair for the IT and entertainment sectors. Vigorous corporate divisions provide additional muscle on patent monetisation and commercialisation briefs. Dong Oh Hong is a name worth remembering here.
YOU ME Patent & Law Firm
YOU ME Patent & Law Firm is one of the largest IP outfits in South Korea and a prolific filer. Meticulous translation services, comprehensive searches, airtight IP protection and a cutting-edge internal infrastructure are just some of the many selling points of this esteemed boutique. It has captured a sizeable share of the domestic patent market, but is also a growing presence on the international stage. It strikes a chord with Chinese clients in particular; a burgeoning China-dedicated practice handles almost one-fifth of all incoming applications from the country. Sukheum Kwon takes charge of the busy inbound patent prosecution group, which files in excess of 1,000 patent applications each year. Enforcement dynamo David Hunjoon Kim has “excellent legal knowledge coupled with a strong commercial understanding and great communication skills”. “He is one of the finest Korean patent attorneys I have come across,” enthuses one client. “He is not only legally and technically sound, but also an extremely dynamic leader. Trustworthy and extremely responsive, he provides wise and practical advice.”
YP Lee Mock & Partners
YP Lee Mock & Partners is a reliable ally to modest start-ups and sprawling Fortune 500s alike. Technically proficient with an in-depth understanding of international IP laws, it effortlessly manages a raft of sweeping portfolios, which are consistently enhanced by its pinpoint advice and astute protection strategies. The firm spares no expense in ensuring the finest-quality output – an approach which translates into maximum marks for client satisfaction. Aerospace engineer Jehyun Kim dispenses sage advice on both contentious and non-contentious matters. He finds elegant solutions to all manner of patent problems in the mechanical, automotive and communications fields. The courtroom is home turf for Yulchon’s IP group. Its practitioners have almost 50 years’ worth of collective judicial experience and are formidable performers in bet-the-company patent suits. No technical discipline is beyond its grasp, although the electronics and pharmaceutical sectors are particular fortes. Its proactive, assertive approach to enforcement is tempered by a commercial, pragmatic outlook. As a prime example, it recently helped POSCO – one of the world’s largest steelmakers – to defend its patent rights in an invalidation action before the Korean Patent Court and subsequently obtained a favourable settlement while the case was pending before the Supreme Court. Jeong Yeol Choe and Dong Soo Han both played a key role on this suit. The former fronts the IP practice and is a former judge who has taught many of those currently on the bench; the latter has also spent some 16 years serving in a variety of courts. A prolific writer and tenacious litigator, Cheol Hwan Kim recently prevailed for AmorePacific in a widely publicised patent invalidation proceeding that affected the entire cosmetics industry. US attorney Samuel SungMok Lee rounds off the troop; he was previously senior in-house legal counsel to Samsung Electronics, where he directed its global contentious activity.

Individuals: prosecution

Eun Hwa Choi - FirstLaw PC
Jehyun Kim - YP Lee Mock & Partners
Seong-Ki Kim - Lee & Ko
Terry Taehong Kim - Lee International IP & Law Group
Seong Ku Jang - FirstLaw PC
Sukheum Kwon - YOU ME Patent & Law Firm
Catherine Eunkyeong Lee - Bae, Kim & Lee LLC
Man-Gi Paik - Kim & Chang
Dong Yol Yoon - Yoon & Lee International Patent & Law Firm

Individuals: litigation

Duck Soon Chang - Kim & Chang
Jae Hoon Kim - Lee & Ko
Young-Mo Kwon - Lee & Ko
Jay (Young-June) Yang - Kim & Chang
Kenneth K Cho - Kim & Chang
Tae-Yeon Cho - Cho & Partners
Yong-Sig Cho - Darae Law & IP Firm
Jeong Yeol Choe - Yulchon LLC
Dong Soo Han - Yulchon LLC
Cheol Hwan Kim - Yulchon LLC
David Hunjoon Kim - YOU ME Patent & Law Firm
Jay J Kim - Kim & Chang
John Kim - Lee & Ko
Un Ho Kim - Lee & Ko
Taeck Soo Kwon - Bae, Kim & Lee LLC
Samuel SungMok Lee - Yulchon LLC
Soowan Lee - AIP Patent and Law Offices
Bo Kyung Lim - Shin & Kim
Ho-Hyun Nahm - Barun IP & Law
Seung-Moon Park - Darae Law & IP Firm
Chun Y Yang - Kim & Chang

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Issue 89