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Intellectual Property

"Offers a high level of technical expertise with approximately 250 IP practitioners
alongside a sizeable group of patent scientists and support members."
– Chambers Asia-Pacific 2019

Overview

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

Please click here to visit our Intellectual Property website.

Our Intellectual Property Practice is the largest in Korea, comprising more than 300 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 Intellectual Property 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 Intellectual Property 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 attorneys 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 attorneys are fluent in many languages such as Korean, Japanese, English, French, German and Chinese, and have a deep understanding of our client’s needs.

Having handled more IP litigations involving foreign entities than any other law firm in Korea, our Intellectual Property 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 attorneys 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 are facilitated by members of our firm 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 Intellectual Property Practice the leading provider of IP services in Korea.

Key Practices

Key Experiencesshow

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.

  • Successfully defended a patent covering a particular dosage form and administration regimen for Allergan’s Lastacaft product, despite the fact that the prior art broadly disclosed medicinal uses for treating the same diseases as Lastacaft, by convincingly arguing that there was no pharmacological data in the prior art showing the effects of the patented invention nor disclosure of the specific dosage form or administration to reach such effects.

  • 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 Astellas Pharma in the first Patent Court case attempting to invalidate the Patent Term Extension (PTE) by generic drug companies.

  • Successfully represented AstraZeneca against numerous invalidation challenges against a patent on the Brilinta active ingredient, despite various issues being raised for the first time under Korean law, including whether there was double patenting between the subject compound (species) patent and the corresponding genus compound patent.

  • Successfully defended Daum Kakao in a patent dispute against DideoNET involving a video encoding-related patent and obtained a decision that DideoNET’s patent was invalid and unenforceable by locating strong new prior art references.

  • Successfully obtained grant of PTE for patent covering Alitoc in a case that clarified that an IMD approval can constitute a “first product approval” for PTE purposes.

  • Successfully defended the validity of HCT’s patent on a dispenser with thermal storage tip despite an unfavorable decision by the Patent Court (intermediate appellate court).  On remand from the Supreme Court, despite several new prior art references from the invalidation petitioner, the Patent Court found all claims valid, and the decision was affirmed by the Supreme Court.

  • Successfully obtained allowance of Kimberly-Clark’s patent application for a mechanical fastener invention at the Patent Court, after a final rejection and rejected appeal from the Korean Intellectual Property Office.

  • Represented LG Display against Samsung Display in a trade secret action and patent infringement litigation, which was successfully resolved in a settlement.

  • Successfully represented Mitsubishi Chemical in patent litigation against Intematix Corporation, in which the District Court held that a petition for correction qualifies as a potential counter defense in response to the defendant (alleged infringer)’s patent invalidity defense, i.e., abuse of rights defense.

  • Represented Nippon Micrometal and Nippon Steel in a patent infringement suit against MK Electron (MKE) after MKE rejected a license to the plaintiffs’ patents, which were determined to have “numerical limitation” inventive features.  After successfully defending MKE’s invalidation attack despite the high threshold for numerical limitation inventiveness in Korea, Nippon Micrometal and Nippon Steel were able to force MKE to ultimately accept the plaintiffs’ licensing proposal.

  • Represented Pfizer in numerous patent actions against various generic companies in relation to Pfizer’s Lyrica product, which were comprehensively decided in Pfizer’s favor.  As a result of these various actions, a preliminary injunction was granted even though Pfizer’s claims were undergoing post-grant amendment, the validity of Pfizer’s patent on a second medicinal use was upheld as well as damages awarded, and the generics were found infringing despite “skinny labeling” their generic products, all of which were the first such judgments in Korea.

  • Successfully represented Wyeth in infringement litigation that was the first to confirm a stay of generic drug sales under the new Korean patent-drug approval linkage system.  Due to this litigation, it was clarified in Korea that a generic notice alone was sufficient basis for a patent infringement action as well as for granting an injunction against the generic sales. 

 

Trademark, Design & Unfair Competition
  • Successfully represented Acushnet in a trademark infringement case against the use of Acushnet’s trademarks on “refinished” golf balls, resulting in a meaningful victory in the golf ball industry in Korea.

  • Successfully obtained a preliminary injunction for Binggrae against a product that copied the appearance of Binggrae’s well-known banana flavored milk beverage under the UCPA.

  • Successfully invalidated two registrations for the mark of a Korean pharmaceutical company, based on their similarity to the CIALIS mark of Eli Lilly and Company.  As generic companies often succeed in registering trademarks which will remind consumers of the original drug, this was a significant win for Elli Lilly and Company.

  • Successfully represented Ezaki Glico, the company behind the famous Pepero cookie sticks, in obtaining an injunction against a  consumer goods company's use of a similar packaging design on the basis of not only design infringement, but also unfair competition even though Ezaki Glico’s product had not yet been released in Korea.

  • Successfully represented General Electric Company in an opposition against an application for a mark by demonstrating that the GE logo enjoys a high level of fame in Korea and that there was a likelihood of confusion between the marks.

  • Successfully represented Hermès before the Seoul High Court in obtaining damages and a permanent injunction against the manufacturer of polyester bags on which images of the iconic BIRKIN and KELLY bags were printed. The fact that the products were made of different materials (polyester vs. leather) and sold at vastly different price points were deemed irrelevant by the Court, as the act of copying the appearance of Hermes’ famous bags was held to be against fair commercial practices. 

  • Successfully represented a medical clinic before the Supreme Court in obtaining the invalidation of a trademark registration of a competitor who had adopted a similar brand for its own clinic, after the Intellectual Property Trial and Appeal Board and the Patent Court both had found in favor of the trademark registrant.

  • Successfully represented NUPL, the owner of ice cream dessert café chain, in its lawsuit against Mcostar, the franchisor of a similar chain, for unfair competition where the court interpreted the newly introduced “catch-all” provision of the UCPA for the first time in Korean history.

  • Successfully obtained the first Supreme Court decision recognizing protection for a store’s trade dress under the UCPA, and affirming both injunction and damages for Seoul Lovers.

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