8 Jan

Jae Hoon Kim

What has been the key to your success as a patent litigator?

The key to my success has been in managing the firm’s professionals so that they collaborate as one body and are able to clearly grasp the legal and technical issues of a particular case and explain them in a way that can be easily understood. More specifically, when putting together a team for a patent litigation case, I carefully choose attorneys with the relevant engineering or science backgrounds and those who have served as former judges. In this way, technical issues are accurately discerned and analysed while arguments are prepared taking into consideration the perspective of a judge. As such, my team can put together an effective argument and well-prepared presentation, which break down the key issues in a way that can be easily understood by the court.

What has been the highlight of your professional career so far and why?

The highlights of my career have been to serve as head of the Lee & Ko IP practice group, managing partner of Lee & Ko and vice chair of the International Bar Association’s licensing and franchising committee. I have also been involved in a number of landmark patent litigation cases in South Korea and have won many leading cases, including the country’s first DNA re-combinant case (bobine growth hormone case), its first vaccine patent litigation case, its first software patent case (Microsoft Eng-Kor conversion patent case) and a diaper patent case, which involved the largest ever damages award in South Korea.

What would you say are the top three requirements for a successful global IP strategy?

A successful global IP strategy requires:

  • comprehensive understanding of the relevant patent and technology;
  • strong delivery skills in court; and
  • effective and productive communication with the client.

How have client demands changed over the past five years and what impact has this had on your practice?

While patent suits have made more of a local impact in the past, there has been an increase in the number of patent litigations taking place globally across multiple jurisdictions. This has created the need for legal issues to be dealt with in a more consistent manner across different countries. Clients have also become more fee-sensitive, which has prompted us to deliver top-quality work according to global standards, with which our clients are highly satisfied. We continue to fine-tune our work based on a meticulous understanding of the relevant technology, comprehensive knowledge of patent jurisprudence and smooth and effective communication skills with our international clients.

Finally, what do you see as the biggest challenges facing IP practitioners in South Korea in the next few years, and how can companies prepare for these?

Five to 10 years ago, the IP litigation scene involved more IT-related suits; however, recently, there has been a rise in the number of bio/pharma lawsuits. Therefore, there is a need to understand the industry and the technical issues involved according to the nature of each case. There has also been an increasing number of international patent litigation cases in which much of a company’s fate will depend on the outcome of the case. To reduce this risk, companies should establish an in-house patent team that can analyse patent infringement and invalidity in advance at the product development stage and when faced with the possibility of a patent dispute.

Jae Hoon Kim

Steering Committee Member
[email protected]

Jae Hoon Kim joined Lee & Ko in 1986, has served as former managing partner and is currently head of the IP practice group. He has an LLB from Seoul National University and an LLM from Cornell Law School. Throughout his career, Mr Kim has earned a reputation as a brilliant IP litigation strategist and has been involved in a number of landmark cases. His practice includes patent, trademark, copyright, design, licensing and franchising matters.