Intellectual Property

"This law firm is number one for IP. Their works has always been not just satisfactory, but impressive."

- The Asia Pacific Legal 500

Overview

BKL’s IP Practice Group is well-equipped to serve our clients to their satisfaction by prioritizing the client’s business interests, innovation, growth and success. Drawing upon our extensive experience in protection of intellectual property rights, we provide creative and effective solutions to meet the needs of our clients that are unparalleled in quality.

Trusted Partner for IP Protection and Monetization

In the age of digital information, a company’s business data, knowledge, technology and content are the company’s key proprietary assets and important sources of new revenue. In today’s highly competitive business world, the success of a business depends on the ability to maximize the monetization of such IP assets, and disputes abound both within and outside Korea involving various cutting-edge technologies that are subject to multiple layers of regulatory environment.

BKL’s advice is based on our in-depth understanding of the client’s business and IP assets, including such assets’ economic and social impact, and we strive to provide creative and innovative solutions for our clients while setting new legal precedents along the way. We take great pride in being an integral part of our clients’ future business success.

One-Stop Legal Service

BKL provides a fully integrated, one-stop legal service on all aspects of intellectual property, including patent and trademark prosecution, copyright, trade secrets, data protection and privacy, and enforcement and transactions involving intellectual property. In today’s highly competitive technology environment, we provide strategic advice to ensure timely and proactive procurement and protection of the client’s IP assets.

Customized Legal Service based on Unparalleled Experience and Seamless Integration of Expertise

BKL’s IP Practice Group is comprised of experts with various legal and technical backgrounds, including attorneys-at-law, foreign-qualified attorneys, patent and trademark prosecution attorneys, of counsel consultants, and ex-regulatory officers, allowing us to call upon a specialized team of experts for any matter we handle. Our access to such a wide range of IP expertise enables us to provide a seamlessly integrated expertise-based legal advice, as evidenced by our unparalleled experience in handling IP matters, including administrative trial cases before KIPO’s Intellectual Property Tribunal and the Patent Court, as well as complex IP infringement litigations and our advice on IP transactions and licensing. We have been recognized for our expertise by the leading practice publications such as Chambers & Partners, Managing Intellectual Property, and Asian Legal Business.

Key Services

IP Litigation and Counseling
Advise on civil/criminal disputes involving infringement of intellectual property rights (Patent, Utility Model, Design, Trademark, Copyright, etc.).
Represent clients in inter partes trials, including invalidation trials, confirmation trials for the scope of industrial property rights, and litigation for cancellation of trial decisions, etc.
Advise on Korean Trade Commission’s unfair trade practice investigations.
Advise in connection with disputes involving compensation for employee inventions.
IP enforcement work involving monitoring of potential IP rights infringement activities, including trademark and copyright infringement.
Advise in connection with investigation by KIPO’s Special Investigation Police (for IP infringement cases).
Advise on devising litigation strategies for and handling of overseas IP disputes (including discovery procedure such as document production, deposition, and selection and management of e-discovery service vendor).
Trade Secrets & Corporate Information Protection
Assist clients with analysis and implementation of systemic protection of their trade secrets.
Provide representation in criminal and civil trade secret misappropriation litigation.
Provide representation in enforcement of non-compete agreements.
Advising clients with protection of trade secrets involving hiring and termination of employees.
Advising client with various contractual issues as well as disputes regarding trade secret protection.
IP Transactions, Licensing and Strategy
Advise in connection with technology transfer, joint development and transactions involving technology, trademarks and know-how and the related documentation and negotiation.
Advise on regulatory requirements applicable to technology exports
Inter-company IP transactions.
IP due diligence and analysis in connection with M&As.
Advise on IP acquisition and IP monetization strategy.
Advise on joint ventures involving IP as the key asset.
Advise on strategies for investment in IP assets.
FTO_(Freedom to Operate) analysis and advice.

Representative Cases

Represented a domestic pharmaceuticals company in an invalidity trial against a foreign pharmaceutical company involving gastrointesrinal stromal tumor and Sorafenib, among others.
Advising a rechargeable battery maker in its trade secret misappropriation claims against a competitor.
Representing domestic chemical company in a trade secret misappropriation and breach of contract case initiated by a foreign company.
IP Litigation and Counseling
Represented a domestic chemical company against a foreign patentee in an infringement case as well as invalidity trial of the asserted patent.
Represented a domestic pharmaceuticals company in an invalidity trial against a foreign pharmaceutical company involving gastrointesrinal stromal tumor and Sorafenib, among others.
Represented various companies, including those manufacturing semiconductors, cellular and mobile devices, audiovisual devices, display devices, and medicines, in cases involving compensation for employee inventions.
Represented a foreign automotive parts manufacturer in a patent infringement case involving airbag technology.
Represented a Japanese stationary company in a seminal case in the unfair competition jurisprudence involving trademark rights of a shape of ball point pen products.
Trade Secrets & Corporate Information Protection
Advising a rechargeable battery maker in its trade secret misappropriation claims against a competitor.
Representing domestic chemical company in a trade secret misappropriation and breach of contract case initiated by a foreign company.
Defense of a foreign raw materials provider for LCD devices in a criminal trade secret misappropriation case.
Trade secret case involving power plant design and technology.
Trade secret misappropriation case involving a heating appliances manufacturer.
Trade secret misappropriation case involving an optical lens manufacturer.
Advised a large company in food franchise business regarding its trade secret compliance process.
Represented a client in a criminal investigation regarding trade secret in FinTech/Credit Information technology.
Represented numerous enforcement of non-compete agreements to obtain preliminary injunction.
IP Transactions, Licensing & Strategy
Advised Hanmi Pharmaceutical on its mega-size deal for new drug technology licensing-out to a global pharma, and advise on various licensing-out transactions for local pharmaceutical companies.
Advise a leading global SVOD platform in connection with music copyright licensing and clearance.
Advised KSOE (Korea Shipbuilding & Offshore Engineering) in connection with its technology licensing-out to IMI for shipbuilding.
Advised Daelim Industrial on its licensing-out of manufacturing technology to Lubrizol for petroleum plants.