IP Litigation & Counseling

"The team has many IP lawyers and patent attorneys who have experience with the Patent Court and the Supreme Court. Thus they know and understand important cases very well."

- Chambers & Partners Asia-Pacific

Overview

With vast expertise and experience in IP disputes, both within Korea and globally, BKL IP Group achieves superior outcomes for our clients in Korean domestic IP disputes, as well as in legal proceedings and transactions involving foreign jurisdictions and legal issues. Our competitiveness in the global arena has been well recognized by prominent industry awards given by both domestic and foreign media and is attested by the clients that we represent.

BKL IP Group consists of over 80 professionals, bringing together Korean attorneys, foreign-qualified attorneys, patent attorneys, and other professionals with diverse backgrounds and experience, including with the Supreme Court, the Patent Court and the Korean IPTAB. With an outstanding level of knowledge in critical technical fields, BKL IP Group deploys with our clients at the forefront of IP disputes and advisory issues, both domestic and foreign.

One Stop Service

BKL IP Group is comprised of both the IP Litigation/Transaction Practice Group of Bae, Kim & Lee LLC and the IP Prosecution Practice Group of BKL IP, our patent prosecution firm of patent attorneys. The synergies created between the two teams allow BKL IP Group to provide clients with a one stop service ranging from IP rights applications, prosecution, invalidity and confirmation trials at the KIPO, to representation in criminal and civil litigation proceedings.

Key Services

Domestic IP Disputes and Advisory Work
Advising clients on civil/criminal disputes involving infringement of intellectual property rights or unfair competition
Representing clients in inter partes trials, including invalidation trials, confirmation trials for the scope of an intellectual property right, and litigation for cancellation of a trial decision
Advising on unfair trade practice investigations by the Korean Trade Commission and investigation by KIPO’s IP Police for infringement of intellectual property rights
Advising and representing clients in disputes involving compensation for employee inventions
Enforcement work involving monitoring of potential intellectual property rights infringement.
Foreign IP Disputes and Advisory Work
Assisting clients involved in foreign disputes, including selection and management of local counsel and formation of litigation strategies
Advising on foreign litigation procedures, including discovery and other evidence collection efforts
Assisting with prior art search and patent analysis
Assisting with settlement negotiation strategies and conducting negotiations on behalf of the client.

Representative Cases

Represented a domestic chemical company in patent infringement litigation and invalidity trial against a foreign patentee, involving technologies related to superabsorbent polymers and organopolysiloxane
Represented Korean conglomerates in trademark infringement disputes regarding smart devices
Represented a domestic mobile game company in litigation against a foreign game company, seeking prohibition of copyright infringement and unfair competition acts
Patent Disputes
Represented a domestic chemical company in patent infringement litigation and invalidity trial against a foreign patentee, involving technologies related to superabsorbent polymers and organopolysiloxane
Defended Korean pharmaceutical companies in invalidation proceedings against foreign pharmaceutical patentees concerning medicinal inventions, including treatments for gastrointestinal stromal tumors, laxatives, high-dose Sorafenib formulations, and NESP formulations
Advised and represented clients across various industries—including manufacturers of semiconductors, mobile phones, video equipment, display devices, and medicines—in cases involving compensation for employee inventions
Represented a foreign automotive parts manufacturer in patent infringement litigation involving airbag technology
Disputes involving Design Rights, Trademarks, Unfair Competition
Represented Korean conglomerates in trademark infringement disputes regarding smart devices
Represented a Japanese stationery company in a landmark case that recognized the well-known trade dress of a ballpoint pen filed against a Korean company, securing a preliminary injunction for unfair competition related to the shape of the ballpoint pen
Represented a Japanese beauty massage device manufacturer in design infringement litigation, obtaining preliminary injunctions, prohibitions, and compensation for damages against a Korean company imitating its product
Copyright Disputes
Represented a domestic mobile game company in litigation against a foreign game company, seeking prohibition of copyright infringement and unfair competition acts
Represented a game company in a case involving a copyright infringement and a violation of the Unfair Competition Prevention and Trade Secret Protection Act regarding a well-known board game
Represented a foreign “over the top” media service provider in a dispute regarding music copyrights
Overseas IP Disputes
Represented a Korean ATM manufacturer in patent infringement cases filed by a US ATM manufacturer in the US ITC and the Federal Court
Advised a Korean software company in a US Federal Court litigation involving claims of copyright infringement and open-source license violations brought by a U.S. software company
Advised a Korean confectionery U.S. Federal Court litigation against a Japanese confectionery company, involving claims of copyright infringement and unfair competition acts