South Korea: Domestic
As a hotbed of innovation in the tech space, South Korea naturally has a lively litigation scene. The Korea Advanced Institute of Science and Technology and Samsung are sparring again, as a high-stakes patent validity battle between them spills over from the United States, and many other important cases have hit the courts over the past year. On the legislative side, the Korean Intellectual Property Office has been actively pushing forward new legislation to enhance its regional competitiveness. It revised the Patent Act to reinforce the obligation for parties to submit key evidence at the start of patent infringement suits, when the alleged infringer used to resist by claiming that it contains trade secrets. The office will also introduce punitive damages in the case of intentional patent or trade secret infringement from June 2019, as part of the Unfair Competition Prevention and Trade Secret Prevention Act. This could potentially treble the damages awarded in some instances. However, some concerns remain surrounding the efficacy of the Patent Court’s international tribunal, given local lawyers’ difficulty with the English language and reluctance to use the forum.
AIP Patent and Law Offices
AIP’s deep IP wisdom belies its relatively modest size. The firm is home to a formidable team of senior talent, with former officials from the Korean Intellectual Property Office (KIPO) and the Supreme Prosecutor’s Office ensuring that patrons’ IP needs are well met. With founder Soowan Lee at the wheel, AIP prosecutes adroitly in all technical fields and can hold its own in the courtroom against some of the country’s toughest litigators. As a former Korean Patent Court and Supreme Court judge, Lee knows the inner workings of Korean IP machinery like few others; clients that choose him get a behind-the-scenes view.
Bae, Kim & Lee LLC
Firmly planted at the apex of the litigation table and a highly recommended choice for transactions to boot, Bae, Kim & Lee LLC started out as a pure litigation firm before diversifying its offering with great success. The partnership has morphed into a trusted full-service outfit that is “well known for offering optimal service” to clients in the pharmaceutical and high-tech industries. With three former IP judges – including Taeck Soo Kwon and IAM Patent 1000 debutant Myung-Kyu Lee – in its ranks, the 76-person team has the resources and expertise to provide “top-class guidance and practical, timely advice that is founded in experience”. Currently serving as president of the Korean Intellectual Property Lawyers’ Association (KIPLA), Kwon is the set’s trump card for contentious matters, having spent more than 28 years on the bench. He chalked up his most recent win on behalf of Celltrion against Biogen, in a matter concerning the company’s bestselling antibody medicine, Rituximab. Lee is no stranger to complex and novel litigation cases either; having recently obtained W3.5 billion in damages on behalf of Cuckoo Electronics, he is firmly established as a go-to name for companies that are serious about protecting their IP rights. On the non-contentious side of the practice, patent attorney Catherine Eunkyeong Lee prosecutes in the chemical, biotechnology and pharmaceutical fields with consummate skill, while also serving as vice president of the Asian Patent Attorneys Association Korea and as an arbitrator for WIPO. For global transactions, clients should seek out Mun Ki Nam and Susan Park, who recently clinched a sensational licensing deal for JW Pharmaceutical Corporation, which stipulates upfront payments of up to $402 million from LEO Pharma A/S.
Darae Law & IP Firm
Darae Law & IP Firm is an IP boutique that provides effective, dynamic solutions to patent issues on both sides of the contentious divide. The firm’s strength is built on its personnel, many of whom are former patent court judges, technical examiners and tribunal adjudicators. Patent prosecution, prior art searching and strategic R&D work all fall within the group’s sphere of expertise – as does litigation, at which it particularly excels. Managing partner Seung-Moon Park leads the team; his knack for securing critical injunctions against patent infringers has been put to good use by many innovative Korean corporations, including Daewon Semiconductor Packaging and Samjin Corporation.
FirstLaw PC may have been feeling the lack of esteemed IP veteran Eun-Hwa Choi since she retired in 2018, but standards have not slipped among the 60 patent attorneys that call the firm’s chemical, electronics and mechanical groups home. The outfit delivers the full spectrum of IP services to a predominantly multinational client base, while maintaining an excellent line in detailed patent drafting for its stable of domestic patrons, which includes government-run research organisations. There are two standout names on the non-contentious side of the practice. Seong Ku Jang has extensive experience in the field, having spent over a decade examining patents at the KIPO before moving to private practice. His mechanical engineering acuity is well respected in the industry. US-licensed lawyer and Korean patent attorney Hyoun Ja Park makes an appearance in this year’s guide for serving Chinese, US and EU businesses in the IT and electronics sectors. Despite its modest size, the firm’s tenacious litigation team comprising six technically versatile trial lawyers is not to be under-estimated. Its leading light is Young Sun Jung, a biotech and chemistry maven whose strong advocacy in court often turns heads.
Kim & Chang
The “number one law firm in Korea for foreign companies with IP issues” needs no introduction. Sitting comfortably at the pinnacle of the market, Kim & Chang is the primary choice for all things patent-related. The firm’s claim to fame is its sheer size and unparalleled success in courtrooms and patent offices up and down the country. No other outfit showcases as many ranked individuals in our litigation table – a fact which comes as no surprise, given that the firm’s glittering roster of clients is always keen to extol its virtues. According to one, Kim & Chang is “always reliable, delivers high-quality results, has a good understanding of our needs and gets to the heart of problems”. Not only has the partnership been involved in the Korean Patent Court’s first English hearing, but it has also been busy setting precedents at the Supreme Court. In the pharmaceutical field, the team’s successful defence of Astellas Pharma Inc led the court to issue specific guidance on how to properly calculate the correct length of patent term extensions. Many of the firm’s triumphs can be credited to acclaimed leaders Jay (Young-June) Yang and Duck Soon Chang. While they could be forgiven for resting on their laurels and reputations as market-leading litigators, they continue to drive the firm forward by putting in extensive shifts in the courtroom and inspiring others in the field. Kim & Chang’s meticulous team is brimming with diverse expertise. Former judge Young Sun You spent 16 years on the bench and obtained a doctorate in intellectual property from Seoul National University before joining the ensemble. Armed with a bachelor’s in physics and law from Harvard University, foreign legal counsel Chun Yang effortlessly facilitates cross-border negotiations in contentious and transactional matters. In the chemical practice group, Jay Kim and Young Kim have the technical breadth to work on life sciences matters of all hues. The former recently succeeded in an appeal regarding a patent term extension on behalf of Glaxo Group Limited, while the latter continues to offer her finely judged advocacy to a variety of clients. When they enlist In Hwan Kim, companies invariably find “a reliable partner for the most important patent prosecution work” and “a formulator of strategies to strengthen any patent portfolio”. Kim & Chang’s patent prosecution practice regularly manoeuvres through the most difficult cases with skill and precision. The team satisfies multinationals in almost all industries, with one recent highlight being the rare successful appeal of a final KIPO rejection on behalf of Kimberly-Clark. With over three decades of experience in intellectual property, including key positions in the civil service, Man-Gi Paik has developed a unique insight into the government’s inner workings. He is a member of the policy advisory board to the KIPO commissioner and president of the Ministry of Trade, Industry and Energy’s office of strategic R&D planning.
Koreana Patent Firm (Patent Attorneys & Counselors At Law)
The distinguished drafters and filers at Koreana Patent Firm never take their eye off the latest global IP developments. The firm’s 60-strong team of Korean and US patent attorneys covers all technical fields and issues expert advice on both domestic and international patent issues. Koreana’s contentious strength is built on its 2011 strategic partnership with domestic law firm Shin & Kim, which enables it to provide the full range of litigation services under one banner. Senior managing partner Hae-Sun Park is the man at the heart of this success story.
An outstanding name for big-ticket disputes, Lee & Ko is a top contender for conglomerates seeking representation in crucial contentious matters and high-stakes deals in Korea and around the world. The full-service firm is teeming with talent; its IP department houses “the best IP lawyers and litigators in Korea” according to one market source. With the second-highest number of ranked individuals in our guide, the ensemble is revered for its “outstanding performance and excellent service”, which regularly exceeds even its own high standards. The team has been busy operating in the Supreme Court on behalf of an enviable list of blue-chip clients, including pharmaceutical kingpin Novartis AG. Jae Hoon Kim and Young Mo Kwon have been at the top of the tree for some years now. Cornell-educated Kim is a multifaceted litigator who has enjoyed success in nearly every technical arena throughout his career, while Kwon is a chemical engineer and lawyer with a specialty in technology licensing and an impressive record in major patent infringement suits. Un Ho Kim has over a decade of valuable judicial experience – as does Choong Jin Oh, who makes a well-deserved inaugural appearance in this year’s guide. Both have been exceptionally busy in the courtroom of late, with Kim successfully defending SK Broadband in three infringement suits and Oh litigating on behalf of LG Hausys against 3M Innovative Properties Company in a complex and wide-ranging action. Hwan Sung Park bolsters the team’s combined experience in US legal proceedings. Well versed in US IP litigation, he “provides excellent, speedy and accurate legal advice” and garners high praise from an overseas peer for his work ethic. “We work together for US cases and refer cases to each other, because I know that he will produce great results with no mistakes.” Ex-Samsung in-house counsel John Kim oversees cross-border litigation and international disputes, having been a partner in Quinn Emanuel Urquhart & Sullivan’s Silicon Valley office. However, the courtroom is not Lee & Ko’s only bastion of strength. Armed with an abundance of cutting-edge technical knowledge, the group also drafts and prosecutes patents across a variety of industries on behalf of market-leading companies including Alibaba and Celgene. As honorary president of the International Association for the Protection of Intellectual Property (AIPPI) in Korea and co-chair of the firm, Seong-Ki Kim is an inspired and well-connected choice for clients in all technology sectors and localities. As one peer attests, “he is well known in IP circles for his broad knowledge and the length of his experience in the field”.
Lee International thrives on the strength of its renowned prosecution practice. With more than 70 patent attorneys, 15 foreign attorneys, a former Supreme Court justice and a former senior judge of the Seoul Central District Court covering all technical fields in four languages, the firm consistently delivers quality and prompt services to its clients. The practice specialises in representing EU, US and Japanese rights holders before the KIPO, but also drafts crystalline biotech, pharmaceutical and mechanical patents for local customers. Foreign clients include Materion Advanced Materials Germany GmbH, US concern PharmaIN Corporation and global oil and gas player Lummus Technology Inc. Former aeronautical engineer Terry Taehong Kim heads up the patent department. He prosecutes key electronic and mechanical patents with aplomb, leveraging the experience that he has gained from advising global corporations such as 3M and IBM to great effect. In the decade since the firm expanded its practice into litigation, he has successfully branched out into complex patent opposition and infringement cases. His colleague, biotech specialist Yoon Suk Shin, makes her first appearance in the guide this year. Not only has she recently secured patent protection for the likes of the Virginia Commonwealth University and the Children’s Hospital of Philadelphia, but she also expertly advises on technology transfers, licensing agreements and patent invalidity suits.
NAM & NAM
NAM & NAM is the oldest law firm in the country and a pioneer in the field of Korean IP rights. However, that is not to say that the venerable outfit is resistant to change; the current partnership keeps up to date by implementing meticulous and sophisticated systems to fully safeguard the rights of IP owners. The firm is ISO 9001 certified, with strict pre-filing review processes and self-developed translation review software. NAM & NAM enjoys an abundance of long-standing international clients, including plenty of Fortune 500 patrons attracted by the outfit’s glittering record of reversing final patent application rejections at a reasonable cost. After a 15-year stint at Qualcomm and Samsung Electronics, managing partner Ben Yuu returns to NAM & NAM as a highly experienced practitioner with a fervour for ironclad IP rights protection. He is qualified to practise at the California Bar in addition to his status as a US and Korean patent attorney, which puts him in pole position to advise on both sides of the contentious divide. Electronics and semiconductor expert Sung-wook Kim’s international technology transfer prowess is first-rate.
Shin & Kim
Shin & Kim has been making headlines in Korea lately for its top-notch patent litigation work, especially in the pharmaceuticals space. By way of example, the team recently represented Korean generic Chong Kun Dang Pharmaceutical Corporation against originators Novartis and Merck Sharp & Dohme in two groundbreaking courtroom battles, paving the way for market entry in both cases and reinforcing the firm’s reputation as an outstanding choice for litigation of this type. Dynamic duo Ghyo-Sun Park and Bo Kyung Lim command the courtroom. Park not only takes charge of pharmaceutical patent lawsuits, but he also finds time to serve on the Korea Trade Commission’s Advisory Committee on Intellectual Property Rights. London School of Economics-educated patent attorney, lawyer and IP expert Lim also brings a sophisticated, international perspective to briefs. On the non-contentious side, Shin & Kim benefits from a strategic alliance with Koreana Patent Firm, which enables clients to consult technically adroit patent attorneys while staying safely underneath the firm’s umbrella.
Yoon & Lee’s relatively modest size does not prevent the Seoul-based boutique from receiving effusive praise from other top Korean firms. One respondent states: “The firm is a leader in patent prosecution, especially in the electronics sector. As the team is very professional, effective and efficient, clients can be assured of the highest level of commitment, excellent technical knowledge and ability, and responsiveness to their questions and requests.” Yoon & Lee’s long relationships with major Korean clients mark it out as a trusted ally in IP rights protection. Founder Dong Yol Yoon has been “a respected leader of the Korean IP community for years”. One peer who has known and worked with Yoon for three decades describes his “genuine passion for his work and devotion to improving the Korean IP system”. Byeong-Ok Song is an electronics and physics patent attorney with special acumen in the field of optics, within which he boasts some platinum clients. Former nuclear industrial process analyst Ji-man Park is described as an “energetic and goal-oriented patent attorney in the electronics division with a keen eye for detail”.
Yoon & Yang LLC
Yoon & Yang is a firm going from strength to strength. The team constantly asserts IP rights on behalf of domestic heavyweights in a plethora of pharmaceutical patent disputes and invalidation trials in arenas including the Supreme Court. Technology, media and telecoms maven Wonil Kim anchors the group’s litigation practice. As vice chair of KIPLA, he is extremely well connected in the country’s IP scene. His current docket includes a patent dispute for LG Chem against 3M, alongside other high-profile confidential matters. Moreover, Yoon & Yang’s strength is not confined to the courtroom, with the practice also prosecuting patents across a range of hot industry sectors and jurisdictions for clients of the same standing as the Otis Elevator Company.
YOU ME Patent & Law Firm
Although the two original founders of YOU ME Patent & Law Firm retired this year after a remarkable 40 years at the helm, the IP boutique’s legendary dedication to high-quality patent drafting remains strong. The Gangnam-based outfit continues to work wonders for its predominantly domestic clientele, reinforcing its reputation as an elite patent prosecution firm and an assured choice for litigation. Life sciences guru Sukheum Kwon brings years spent as a US patent attorney to bear on every portfolio that she manages. She heads up the inbound patent division of the firm, ensuring that overseas filers receive top-notch care and outstanding all-around service. Another practitioner with international experience is California-qualified attorney at law David Hunjoon Kim. Travelling between YOU ME’s headquarters in Seoul and a liaison office in Washington DC, the electrical engineer is adept at coordinating multi-jurisdictional litigation strategy and tackling enforcement proceedings head on, wherever they may arise.
Good work does not go unnoticed by peers, which is why YP Lee, Mock & Partners has established such a prominent reputation for its prolific prosecution practice. As a team of 150 patent attorneys covering all technical fields, its practitioners form the largest IP law firm in Korea. The partnership serves primarily domestic clients, which unfailingly appreciate its time-honoured commitment to quality patent drafting and filing. YP Lee, Mock & Partners does not lag behind in its contentious capabilities either; it possesses a small but mighty litigation department capable of putting together consistently persuasive, formidable arguments. Aerospace engineer and president of AIPPI’s Korean chapter Jehyun Kim is an excellent first port of call. As one foreign counsel enthuses, Kim is “very proactive and understands the subject matter of a case extremely quickly”.
Yulchon LLC is an IP litigation firm rich in legal prowess. Its partners have a combined 66 years’ service on the bench, which means that the practice’s clients receive not only access to a deep well of litigation expertise, but also unique insight into how judges perceive the issues at hand. Comprising 22 lawyers and seven patent attorneys, Yulchon is “the best of the best” – a firm capable of “understanding clients’ exact needs and providing totally optimised services”. Its litigators pinpoint the commercial aspects of technical issues quickly and accurately, especially in the pharmaceutical, semiconductor and mechanical fields. The ensemble remains engaged in multiple high-value courtroom battles and is often tasked with huge multi-jurisdictional infringement disputes for an enviable rollcall of clientele including Celltrion Inc, Daewoong Pharmaceutical Co, Ltd and Hyundai Mobis. The firm’s lawyers also manage licensing agreements, technology transfer and other types of IP transaction with a sure hand. Jeong Yeol Choe recently ascended to the presidency of KIPLA; meaning that he now leads both the firm’s IP group and the wider Korean IP community. His two decades of experience on the judiciary ensure that he has seen it all in the courtroom. Like Choe, Dong Soo Han and Cheol Hwan Kim served as judges for over a decade and now lecture on IP law in universities. Replete with in-house experience at Shell Oil, Samsung and Proctor & Gamble, US attorney Samuel SungMok Lee “understands and sees the bigger picture, shares his experience generously and always gives proper guidance for patent-based licensing agreements”. One client notes that “we enjoy working with him as if he was our own in-house team member, because of his pleasant character and professional expertise”.
Other recommended expertsTae-Yeon Cho of Cho & Partners is a celebrity in the trademark world and no stranger to patent battles either. His trilingual IP litigation is the stuff of Korean legend. Holding over 30 years of experience in IP prosecution, this list would not be complete without the pioneering Eun-sub Jung at AJU Kim Chang & Lee, the first Korean patent attorney to pass the national bar exam.
- 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
- Jeong Yeol Choe - Yulchon LLC
- Dong Soo Han - Yulchon LLC
- Cheol Hwan Kim - Yulchon LLC
- Young Sun Jung - FirstLaw PC
- David Hunjoon Kim - YOU ME Patent & Law Firm
- In Hwan Kim - Kim & Chang
- Jay J Kim - Kim & Chang
- John Kim - Lee & Ko
- Un Ho Kim - Lee & Ko
- Wonil Kim - Yoon & Yang LLC
- Young Kim - Kim & Chang
- Taeck Soo Kwon - Bae, Kim & Lee LLC
- Myung-Kyu Lee - Bae, Kim & Lee LLC
- Samuel SungMok Lee - Yulchon LLC
- Soowan Lee - AIP Patent and Law Offices
- Bo Kyung Lim - Shin & Kim
- Choong Jin OH - Lee & Ko
- Ghyo-Sun Park - Shin & Kim
- Hwan Sung Park - Lee & Ko
- Seung-Moon Park - Darae Law & IP Firm
- Chun Y Yang - Kim & Chang
- Young Sun You - Kim & Chang
- Hyoun Ja Park - FirstLaw PC
- Eun-sub Jung - Aju Kim Chang & Lee
- Jehyun Kim - YP Lee, Mock & Partners
- Seong-Ki Kim - Lee & Ko
- Sung-wook Kim - NAM & NAM
- 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
- Yoon Suk Shin - Lee International IP & Law Group
- Byeong-Ok Song - Yoon & Lee International Patent & Law Firm
- Dong Yol Yoon - Yoon & Lee International Patent & Law Firm
- Ben Yuu - NAM & NAM