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Yulchon"s IP Group listens to each client’s needs and focuses on the client’s business strategies in combination with the particular technologies of a relevant industry to provide tailored legal services in relation to litigation, arbitration, licensing, negotiations, strategic counseling, and compliance.  The IP Group is experienced in all aspects of IP related issues under Korean law, including issues in the fields of patent/utility model, trademark, design, copyright (including music and computer programs), trade secret, unfair competition, entertainment (including celebrities, sports and movies), privacy, customs, and international trade.  Furthermore, the IP Group is also experienced in international IP dispute resolution management, including management of IP litigation, arbitration, mediation, licensing/transactions, survey/evaluation, and freedom-to-operate opinions.  Working in cooperation with Yulchon"s Antitrust Group, the IP Group also provides clear guidance to clients on issues that arise at the intersection of the Korean Intellectual Property Act and Korean Fair Trade Act. 


The IP Group consists of legal professionals having a vast amount of experience and knowledge in all aspects of intellectual property, technology, and industry.  These professionals include former judges, KIPO patent examiners and directors, government litigation attorneys, in-house counsel, engineers, and researchers.  The former judges served on the Patent Court, on various district courts including the Seoul Central District Court, in the IP division of the Seoul High Court (court of second instance), and as research judges at the Supreme Court (court of third and final instance).  The attorneys and patent attorneys of the IP Group have degrees in electronic engineering, mechanical engineering, chemical engineering, computer science, pharmacy, civil, urban and geo-systems engineering, and naval architecture and ocean engineering.  The professionals within the IP Group work closely as a cohesive unit, focusing on communication within the group and with clients in order to gain an accurate understanding of the client’s concerns and needs.
 
Since February 2008, the IP Group formed a strategic alliance with Y.P. Lee, Mock & Partners, one of the largest patent law firms in Korea including at least 120 patent attorneys (about 40 patent attorneys in mechanical field, 50 patent attorneys in electrical & electronic fields, 20 patent attorneys in chemical and pharmaceutical fields, and 10 patent attorneys in trademark and design fields).  This alliance allows the IP Group to utilize additional resources to efficiently and effectively handle any litigation in virtually all technical fields.


Yulchon’s IP Group has been and will continue to be committed to recruiting the best professionals and developing the infrastructure necessary to provide top-tier tailored IP legal services for each client.  This commitment has resulted in positive results for our clients and recognition by neutral evaluators within the legal industry.  Recently, the Asian Legal Business (ALB), a division of Thomson Reuters, selected Yulchon as one of two leading firms in Korea in its Asia Intellectual Property Ranking.  The ALB described Yulchon as a fast growing law firm, and introduced the litigation between Apple and Samsung Electronics regarding patent/design infringement and unfair competition as a representative deal, wherein Yulchon represented Samsung Electronics.  The ALB added that Yulchon"s clients described Yulchon as “brilliant as well as precise in their work.”  The IP Group will stay committed to exceeding the expectations of our clients.


Major Practice Areas

  • Patent/Utility Model
  • Design
  • Trademark 
  • Copyright (including computer programs)
  • Trade Secrets
  • Unfair Competition
  • Entertainment (Celebrities/Sports/Movies etc.)
  • IP Risk Management (IP Compliance)
  • Intellectual Property Survey/Evaluation
  • Intellectual Property License/Transaction
  • International Dispute Management
  • Protection of Personal Information (Privacy)

Patent/Utility Model

  • Represented Samsung Electronics in a dispute with Apple relating to allegations of patent and design infringement, and unfair competition.
  • Represented Samsung LED in a dispute with Osram relating to patent infringement and invalidation in LED technology.
  • Represented Daewoong Pharmaceutical seeking a preliminary injunction against patent infringement, patent invalidation trial and criminal case in pharmaceutical technology.
  • Advised Company “S” in relation to acquisition of overseas patent rights.

Design

  • Represented Samsung Electronics in a dispute with Apple relating to allegations of patent and design infringement, and unfair competition.
  • Represented LG Electronics in a design infringement litigation relating to mobile phone packaging box design.
  • Represented KEPCO in a design infringement litigation relating to power meter sealers.
  • Advised Company “T” relating to mobile telecommunication device design.
  • Advised beverage company relating to beer package design.

Trademark

  • Represented KT in litigation relating to prohibition of use of trade name, trademark, etc.
  • Represented Victoria’s Secret in actions involving trademark invalidation and cancellation of registration.
  • Represented Daelim in invalidation litigation relating to a registered service mark of a third party.
  • Represented LG Household & Health Care and GS Holdings in a dispute relating to a preliminary injunction against trademark infringement. 
  • Advised on the scope of trade name usage for a joint venture between a local company and a foreign company.

Copyright (including computer programs)

  • Represented defendant in a copyright infringement case relating to violation of SPLA license of Microsoft, where the defendant was cleared of all charges.
  • Represented Nuance in a dispute relating to voice recognition software copyright infringement.
  • Represented Locus seeking a preliminary injunction against copyright and unfair competition relating to a rabbit character. 
  • Advised on implementation of cloud system for a well-known Korean IT company.
  • Advised on production of a game adapted from a publication for a Korean online game company. 

Trade Secrets

  • Represented Company “B,” owner of trade secrets in the bio industry, relating to a preliminary injunction prohibiting a former employee from transferring to a competitor and protecting against disclosure of information and trade secrets.
  • Represented Company “D”, alleged to have misappropriated trade secrets relating to LCD, in an action for damages and injunction.
  • Represented Company “D”, owner of trade secrets, in an action seeking damages and in a criminal action relating to misappropriation of trade secrets concerning incinerator design drawings.
  • Advised a Korean conglomerate “C” relating to issues of former employees working for competitors and setting up new companies.
  • Advised foreign Companies “B” and “U” in regard to trade secret systems and processes for entrance into the Korean market.

Unfair Competition

  • Represented Samsung Electronics in a dispute with Apple relating to allegations of patent and design infringement, and unfair competition.
  • Represented Danone in a dispute with a Korean company relating to unfair competition.
  • Represented Oracle in unfair competition litigation between a Korean company and Oracle
  • Advised large distributors and importers in relation to parallel imports.
  • Advised a foreign automotive company regarding legal issues including trademark infringement and unfair competition.

Entertainment (Celebrities/Sports/Movies etc.)

  • Represented SM Entertainment in litigation to confirm the effect of an exclusive agreement.
  • Represented CJ E&M in a claim for damages relating to overseas sound source distribution license agreement.
  • Represented Shinsegae in a litigation relating to infringement of the right of publicity.
  • Represented Cheil Worldwide and Dong-A Pharmaceutical in a litigation relating to copyright and portrait right infringement in advertisement featuring scenes from soccer matches.
  • Represented Korean Broadcasters Association, including CBS, in an action to recover compensation paid for broadcasting of music records.

Intellectual Property Survey/Evaluation

  • Conducted prior art search for use in patent prosecution or provision of information for Company “Y.”
  • Conducted prior art search for use in US litigation and US reexamination filings for Company “U.”
  • Analyzed and reviewed validity of a patent for pharmaceutical Company “D”
  • Performed investigation and analysis for valuation of a patented invention for “K” fund.
  • Searched and monitored patents in various countries for a foreign Company “H.”

Intellectual Property License/Transaction

  • Reviewed a biosimilar technology licensing agreement and assisted the client in the negotiations with a multinational company.
  • Drafted a patent transfer and non-exclusive license agreement for a local IP holding Company “I.”
  • Advised a semiconductor equipment manufacturer to establish a joint venture company in China.
  • Advised Lotte Samkang on a technology and trademark license agreement.

International Dispute Management

  • Coordinating IP litigation issues with outside counsel in multiple countries for a major Korean electronics company.
  • Advising Korean pharmaceutical company on US district court litigation.
  • Advising a Korean chemical fiber company on US district court litigation.
  • Advised a Korean software company on licensing negotiations with a foreign company.
  • Conducted due diligence on US patent assets for a Korean telecommunications carrier.
  • Advised a Korean pharmaceutical company in a license agreement to transfer technology to a multi-national pharmaceutical company.

Protection of Personal Information (Privacy)

  • Provided consulting services to implement a “personal information protection infrastructure” for a domestic financial company.
  • Conducted compliance check for a domestic financial association including review of templates used by financial institutes when processing personal information, etc.
  • Advised a domestic broadcasting company relating to the Protection of Communications Secrets Act.
  • Advised a domestic distribution company relating to job applications requiring disclosure of personal information.
  • Advised a domestic credit card company relating to management of credit information.
  • Advised a domestic bank relating to collection of personal information for agents and SNS marketing.
  • Advised a domestic insurance company relating to collection of personal information of family members of financial consultants.
  • Advised a domestic financial company relating to provision of personal credit information for consideration.
  • Advised a domestic financial authority on laws relating to provision of information containing personal videos.
  • Provided seminars and education to domestic securities company and various associations relating to management and protection of personal information in view of the enactment of the Personal Information Protection Act.
more
more
  • 100 Selected Cases on Information Law Ⅱ, Pakyoungsa (2016) 
  • Self-Driving Cars : New standard for data privacy internationally and in Korea, Communications Law (June 2016)  pdf
  • Handbook on Employee Invention System, Korea Patent Law Society (Co-author) (2015) 
more

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