Taecksoo Kwon

Partner

T. +82-2-3404-0310
F. +82-2-3404-0805
E. taecksoo.kwon@bkl.co.kr

Overview

Taecksoo Kwon is a partner of Bae, Kim & Lee LLC. Mr. Kwon began his career as judge in 1986. He worked as judge in several courts and also served as research judge at the Supreme Court of Korea and as chief presiding judge at the Patent Court. He resigned from judiciary after serving as presiding judge at the Seoul High Court and joined BKL in March 2014. He is the head of IP Team at BKL and is in charge of IP litigation and advice. He is the first president of Korean Intellectual Property Lawyers Association.

Related Practices

Representative Experience

2014-Present Bae, Kim & Lee LLC

2012-2014 Chairman, Intellectual Property Law Research Center, Supreme Court

2012-2014 Presiding Judge, Seoul High Court (division handling litigation involving intellectual property)

2011-2012 Chief Presiding Judge, Patent Court of Korea

2006-2008 Presiding Judge, Seoul Central District Court

1999-2003 Research Judge, Supreme Court of Korea (head of intellectual property right group)

1998-1999 Judge, Patent Court of Korea

1996-1997 Visitng Scholar, Waseda University, Japan

2020-Present Director, Korea Intellectual Property Society

2018-Present Member, Hearing Manual Review Committee, Patent Court of Korea

2016-Present Arbitrator, Patent Court of Korea

2016-Present Chairman, Practice Area Registration Review Committee, Korean Bar Association

2016-Present Member, Judicial Administration Advisory Committee, Patent Court of Korea

2015-Present Panel of Judges, Judging Committee, Patent Infringement Pleading Contest

2015-2016 Member, IP Hub Court Promotion Committee, Supreme Court of Korea

2014-2016 Adjunct Professor in Patent Practice, Korea University School of Law

2014-2016 First President, Korean Intellectual Property Lawyers Association

2012-2009 Test Makers for second rounds of Patent Bar Exam

2008-2009 Test Makers for second rounds of Patent Bar Exam

2003-2005 Test Makers for first rounds of Patent Bar Exam

Representative Matters

Advised company A on dealing with a patent infringement lawsuit in Japan

Advised company B in a patent dispute in U.S. ITC and Ohio District Court

Represented company C in the case involving the request of compensation for employee invention

Represented company D in a case involving the claims for the prohibition of patent right and claims for damages

Represented companies EA, EB and EC in cases involving trade secret infringement

Advised company A on dealing with a patent infringement lawsuit in Japan

Advised company B in a patent dispute in U.S. ITC and Ohio District Court

Represented company C in the case involving the request of compensation for employee invention

Represented company D in a case involving the claims for the prohibition of patent right and claims for damages

Represented companies EA, EB and EC in cases involving trade secret infringement

Represented company F in a case involving claims for the prohibition of patent infringement and unfair competitive acts

Advised company G on whether there was an infringement of patent and on the correspondence strategies

Represented company H in a case involving claims for the prohibition of infringement of a patent

Advised company I in dealing with patent nullity trial

Advised company J on an unfair clause concerning SAP's ERP audit

Represented and advised company K in dealing with the KFTC's investigation on the abuse of intellectual property rights

Represented company L in the case involving the request of compensation for employee invention

Represented company M in a case involving claims for the prohibition of unfair competitive acts, etc.

Represented company N in a patent infringement lawsuit

Represented company O in action against infringement of patent and design right

Represented many companies in cases involving injunctions for the prohibition of changing jobs

Education

1985 Judicial Research and Training Institute, Supreme Court of Korea

1977 Seoul National University (LL.B.)

Selected Activities

Publications

Patent infringement in which the involvement of multiple entities is essential, a collection of theses commemorating the 20th anniversary of the opening of the Patent Court (Patent Court, 2018)

Infringements and Performances of Patents by Multiple Parties, Law Review Vol. 6 (Seoul National University, 2016)

Patent Act Focusing on Requirement Facts (Jinwonsa, 2010)

Practice Issues Arising among Invalidation Trial, Correction Trial and Infringement Lawsuit, Issues Relating to Civil Trials, Vol. 19 (Korean Society of Judicial Administration, 2010)

Judgment of Well-Knownness and Similarity of Marks in Acts of Unfair Competition, Issues Relating to Criminal Trials (Jurisdiction Development Foundation, 2009)

Several Issues Relating to the Effectiveness of Non-Exclusive License - Especially in Connection with the Exercise of Right to Request Prohibition and Rights to Claim Damages, Collection of Papers in Celebration of 10th Anniversary of Establishment of the Patent Court (Patent Court, 2008)

Practical Issues in Litigation Seeking Prohibition of Infringement of Patent Right - In Connection with the Specification of Defendant Product and Defendant Method, and Interpretation of Scope of Patent Claims, Collection of Papers in Celebration of Promotion in Status of Seoul Northern District Court (Seoul Northern District Court, 2004)

Scope of Use of Trademarks by Parallel Importer, Commentaries on Supreme Court Decisions, No. 42 (Supreme Court Library of Korea, 2003)

Compensation for Damages Due to Infringement of Patent Right - Especially in Connection with Calculation of Lost Profit, Issues Relating to Civil Trials (Korean Society of Judicial Administration, 2002)

Judgment of Novelty and Inventive-Step of Patented Invention Containing the Dex-scription Characterizing Materials by Nature or Characteristics, etc., Commentaries on Supreme Court Decisions, No. 41 (Supreme Court Library of Korea, 2002)

Requirements for Application of Doctrine of Equivalents, Commentaries on Supreme Court Decisions, No. 35 (Supreme Court Library of Korea, 2001)

Meaning of Use as Trademark and Criteria for Distinction from Use as Design, Commentaries on Supreme Court Decisions, No. 35 (Supreme Court Library of Korea, 2001)

Requirement to Be Satisfied for Photographic Work to Be Regarded as the Copyrighted Work Protected under the Copyright Act, etc., Commentaries on Supreme Court Decisions, No. 37 (Supreme Court Library of Korea, 2001)

Principle of Prohibition against Double Jeopardy, Patent Litigation Study, 1st Series (Patent Court, 2000)

Activity

Lecturer, Judicial Research and Training Institute (2006-207), Intellectual Property Training Institute (Korean Bar Association, 2016), Korea University (2007, 2014-2015), Hanyang University (2012-2013), Kyung Hee University Law School (2004-2005)

Lecturer, Patent LItigation Practice organized by Korean Bar Association (2005-2007), Seoul Bar Association (2014), Patent Attorney (2002, 2012-2013)

Awards

Chambers Asia-Pacific - Leading Lawyer (2018-2024)

Chambers Global - Leading Lawyer (2018-2022)

The Legal 500 - Leading Lawyer (2019-2024)

Asialaw - Leading Lawyers (2018-2022)

Asia Business Law Journal - Korea's Top 100 Lawyers (2021-2023)

Asia IP Profiles - South Korea IP Experts Top 50 (2020)

World Trademark Review 1000 - Leading Individual (2018-2022)

Managing IP, IP Stars - Patent, Trademark (2016-2023)