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Intellectual Property “It’s hard to dispute Kim & Chang’s position,
they are widely established and recognised as a leading firm.”
– Chambers Asia-Pacific 2022

Overview

In Korea’s fast-paced and constantly evolving business environment, Kim & Chang’s Intellectual Property (IP) Practice is uniquely qualified to provide comprehensive, high-quality and cost-effective legal services to our clients.

Our IP Practice is the largest in Korea, comprising more than 350 professionals, including IP litigators, patent attorneys and foreign IP attorneys, as well as over 550 patent engineers, trademark paralegals, and support staff.  Our Practice personnel work together to provide a full range of services including in relation to patent, trademark, design, copyright, unfair competition, e-commerce, trade secrets, computer and Internet law expertise in the areas of litigation, enforcement, dispute resolution, licensing, prosecution, transactions, due diligence, audits, asset management and general counseling. 

With unparalleled resources and expertise in Korea, the IP Practice provides comprehensive solutions to various IP-related challenges and issues that may be faced by companies and organizations conducting business in Korea — in all aspects of their business, involving the procurement, management, and protection of intellectual property rights, and in virtually every technology and product category.  The IP Practice is also well integrated with the firm’s general and corporate practices such as Mergers & Acquisitions, Antitrust & Competition, and Tax, which enables us to handle all potential legal issues, IP-related or otherwise, that our clients may encounter in Korea.

Many of our lawyers have been educated and trained abroad, mainly in Japan, China, Europe and the United States, and have practiced law abroad or worked at multinational companies in many of these countries.  Our lawyers are fluent in many languages such as Korean, English, Japanese, French, German and Chinese, and have a deep understanding of our clients’ needs.

Having handled more IP litigations involving foreign entities than any other law firm in Korea, our IP Practice is globally renowned for handling more complex IP litigations and disputes in Korea, and has expertise in all venues of dispute resolution and all varieties of domestic and international commercial arbitration.  Our litigation lawyers are widely considered by their peers to be the most respected and skilled litigators in the country.  Our ability to represent clients before the Korean Intellectual Property Office ("KIPO") and the courts is facilitated by the experience and knowhow of our firm’s members who previously served as former KIPO examiners, judges or prosecutors.  Some of our members are currently involved in various KIPO committees in connection with amendments of IP laws and regulations.

This depth of experience makes Kim & Chang’s IP Practice the leading provider of IP services in Korea.

Key Practices

Key Experienceshow

Our clients include major multinational companies, both domestic and foreign, across all industries in both cutting-edge and established technologies.  The countless successful outcomes we have achieved for our clients have placed us as a recognized leader in all areas of IP law in Korea.  As Korean companies continue to become leaders in technology and expand their presence worldwide, Korea is becoming an increasingly critical venue for multinational patent litigation.  Kim & Chang’s proven litigation expertise in multinational patent litigation and superior resources are highly sought after by multinational companies in high-profile patent litigations involving Korea and other jurisdictions including the US, European countries, Japan, China, and Taiwan.

 

The following is a representative list of our recent major cases:

 

Patent
  • Successfully defended Apple in dismissing Samsung Electronics’ infringement claims, in their entireties, against Apple’s iPhones and iPads based on multiple number of its user-interface patents.
  • In a case with broad implications for the pharmaceutical market, successfully obtained a ruling from the Supreme Court that the scope of Astellas’ patent on its Vesicare product during the patent term extension (“PTE”) period was not limited to the specific salt form of the approved product, but also covered generics using other conventional salt forms, rejecting the generics’ petitions to the contrary. 
  • Successfully defended against multiple invalidity attacks against several patents on window coverings, through strategic amendments to the claims.  Favorable settlement was achieved.   
  • Successfully represented Pfizer in numerous scope confirmation actions filed by over 20 generic companies against a key patent covering Champix, an aid for cessation of smoking, by obtaining winning decisions from the Patent Court holding that the generic products at issue (which used different salt forms than the Champix product) were within the scope of the challenged patent during the extended patent term.
  • Successfully obtained allowance of Genentech’s patent application covering Perjeta in combination with Herceptin and chemotherapy for early breast cancer.  The Patent Court found Genentech’s claimed combination to be novel and inventive and canceled the Intellectual Property Trial and Appeal Board’s original decision to uphold KIPO’s final rejection, which incorrectly cited to a posting on ClinicalTrials.gov merely disclosing a clinical trial protocol as prior art.
  • Represented Medytox against Daewong Pharmaceuticals in a trade secret misappropriation case, resulting in the ITC’s decision for Medytox.
  • Successfully represented a leading global IT company in a highly contentious patent dispute, where a Korean NPE sought to assert its patent against the IT company; and in the appeal of the invalidity action, faced with the Patent Court’s possible adverse findings, Kim & Chang was able to reopen the proceeding after close of proceeding to then introduce new prior art and new invalidity contentions, based on which the Patent Court ultimately found in favor of the IT company.  
  • Successfully defended the validity of a global lighting equipment manufacturer’s patent on vehicular headlamps, despite initially receiving an unfavorable decision from the Intellectual Property Trial and Appeal Board.  On appeal, Kim & Chang successfully persuaded the Patent Court (the appellate court) that the patent was valid by showing essential differences in the technical problems to be solved by the claimed invention and the prior art (which should be but often in practice are not substantially considered by courts in determining inventiveness).
  • In a case with broad implications for the pharmaceutical market, our firm succeeded in obtaining a ruling from the Intellectual Property Trial and Appeal Board that the scope of the originator's patent during the patent term extension (PTE) period was not limited only to the specific indication in the originator's product approval underlying the PTE, but also covered generic products for the same target disease or therapeutic effect.
  • Represented a Korean manufacturer and developer of 3D medical scanners in successful defense of a German patent infringement action filed by its foreign competitor.  Our team's comprehensive litigation support was key to the favorable decision, including coordinating the overall litigation work, collaborating with local counsel and the client's in-house team, and interviewing the client's engineers to develop effective non-infringement and invalidity arguments.
  • Successfully protected the client's market exclusivity defending invalidation actions against the patent covering the client's glaucoma treatment product.  This case was heavily disputed, and involved a particular priority claim issue for which there had been no direct prior case law or precedent in Korea.
  • Successfully represented a US  semiconductor equipment manufacturer in a cancellation action against the client’s patent on semiconductor equipment.  Although the IPTAB examiner tried to apply a strict standard based on his personal experience in this industry, Kim & Chang successfully persuaded the examiner that the invention was patentable by submitting a detailed affidavit with experimental data based on thorough discussions with the client.
  • Successfully represented a client in a patent cancellation action against the client's patent on automotive panes, by explaining the unexpected effect and the technical value of the patented invention, and thereby persuading the IPTAB to uphold the validity of the patent.
  • Successfully represented ISC in appeal of invalidation actions by arguing the prior art was misinterpreted to disclose embodiments lacking its essential features using hindsight, and further defended the patent on remand against new prior art by successfully arguing the new art actually taught away from the critical feature of the invention at issue.
  • Successfully argued a key case at the Patent Court which ruled that there was no legal basis to automatically exclude foreign clinical trial periods from the patent term extension (PTE) at issue, contrary to the Korea Intellectual Property Office's longstanding practice in examination.
  • Successfully represented the patentee BMS in a Supreme Court appeal of an invalidation action against BMS' selection invention patent, resulting in reversal of the lower court decision and redefining inventiveness criteria for selection inventions in Korea.
  • Successfully represented DASCO in invalidating a patent owned by DUCKSHIN HOUSING relating to a building constructional component after the Supreme Court previously ruled that DASCO was infringing the patent.
  • In a rare case of successful objection to an issued preliminary injunction, our firm was able to successfully stay enforcement of a preliminary injunction granted against infringement by a district court by quickly identifying strong new prior art, leading to withdrawal of the preliminary injunction petition by the petitioner.
  • The Patent Court confirmed that a generic's prodrug ester of AstraZeneca's Forxiga product was within the scope of equivalents of the Forxiga compound patent, despite the fact that "prodrug ester" had been deleted from the patent claims during prosecution, which is the first court decision in Korea to find infringement by a prodrug of a compound patent.

 

Trademark, Design & Unfair Competition
  • Successfully obtained the first Supreme Court decision recognizing protection for a store’s trade dress under the Unfair Competition Prevention and Trade Secret Protection Act (the “UCPA”), and affirming both injunction and damages for Seoul Lovers.
  • Successfully represented Hermès in a lengthy lawsuit against an accessories company selling lookalikes of their famous Kelly and Birkin handbags, marking the first time the Supreme Court applied the “catch-all” provision of the UCPA against the imitation of luxury products in recognition of the exploitive and economically damaging nature of the act.  
  • Successfully obtained famous mark recognition for two of Chanel’s iconic handbag designs and a permanent injunction from the Seoul District Court against the defendant who was selling copycat handbags which copied the designs but not the double C logo.  
  • Successfully represented Hermès in a landmark litigation against an individual offering workshops on how to make lookalikes of their famous handbags by asserting that the act of instruction amounted to a violation of the consumer confusion provision of the UCPA.
  • Working closely with local counsel before the Intellectual Property Court and the Supreme Court of the Russian Federation, Kim & Chang succeeded in registering Paldo Co., Ltd.’s “Доширак” (‘Doshirak’ in Cyrillic) mark as a well-known trademark, marking the very first time a Korean brand has been accorded such status in Russia.  
  • Successfully represented Alviero Martini in invalidation actions against trademark registrations for “Prima Classe,” which is a pronunciation of a famous map logo mark, and Alviero Martini 1A Classe, by proving the fame of their marks and that 1A Classe and the map logo are often pronounced as “Prima Classe.”
  • Successfully represented a trademark owner in appeals against the final rejections of the trademark owner’s position marks having three-color ribbon by proving that the trademark owner’s position marks had established secondary meaning in Korea and obtained registration of those position marks, thereby protecting the characteristic design element with source identifying function as a (registered) trademark.
  • Successfully canceled a Korean shoe company’s registrations for a Champion logo and a C logo, based on “improper use” on behalf of Hanesbrands.  This was the first time a court recognized that altering the color of a registered mark can constitute improper use.   
  • Successfully obtained a registration for a mark consisting mainly of a speech bubble in an appeal before the Patent Court which accepted Kim & Chang’s arguments that the mark met the strict standards for inherent distinctiveness.
  • On the grounds of consumer confusion and the registrant’s bad faith intent, successfully invalidated four trademark registrations for the name of a famous boy band which had been registered by the band’s former manager without authorization.  
  • Successfully represented a footwear manufacturer before the Supreme Court in an invalidation action against an imitation mark for handbags in which the court recognized that the mark had been registered in bad faith given the fame of our client’s mark in Germany.
  • Successfully represented a pharmaceutical client before the Patent Court in an invalidation action against a trademark for cosmetics by demonstrating that the targeted mark would remind consumers of our client’s well-known brand due to the close economic relationship between cosmetics and medical aesthetics.  
  • Successfully appealed a final rejection of the KIPO and registered the sonic logo of an automotive client as a sound trademark despite the fact that there had been less than three years of use.  
  • Successfully revoked a final rejection through an appeal to the IPTAB and obtained a related design registration for a paddy field machine by demonstrating that the design fell within the scope of the existing principle design despite dissimilarities in appearance due to the integration of accessory parts onto the principle design.
  • Through a demand letter, Kim & Chang successfully protected the rights of the client in their packaging for a popular beverage product by persuading a cosmetics company to change the labeling and color of their packaging which conceptually copied the client’s famous trade dress.
  • Successfully defended the client in a trademark infringement action on the grounds that the client’s use of the "NOVAK" mark on footwear was descriptive of "Novak Djokovic”, not trademark use.
  • Successfully represented the client before the Patent Court in a scope confirmation trial brought by an individual who had been selling imitations of the client’s iconic jewelry design. The client had sued him for trademark infringement and the Patent Court confirmed Kim & Chang's position that the design was a famous source identifier of the client, and not simply a design.
  • Represented the client on appeal before the Patent Court and successfully invalidated a trademark registration based on its similarity to the short form of the client’s famous trademark.   
  • Represented the client before the Patent Court and successfully invalidated a design registration for an ornament which was similar to the client's famous monogram. Kim & Chang won on the claim that the use of the design would cause confusion with the business of the client. 

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