Expertise

Patents, Designs and Trademarks

Introduction

Introduction

In a rapidly developing modern society, intellectual property rights constitute core assets and the source of competitiveness for enterprises. The most representative of all such rights are patents and utility models for the protection of new and progressive technologies, trademarks for the protection of brand value of certain goods and services, and design rights for the protection of aesthetic value of goods. Commonly known as industrial property rights, it is important to secure such rights through registration, but it is equally important to efficiently utilize such rights in order to maintain their value as well as derive benefit from them. The Intellectual Property Practice Group at Shin & Kim consists of experienced experts capable of efficiently and effectively addressing all legal issues arising under relevant intellectual property related laws and regulations. The members of the practice group include former Chief Judges in the Patent Court, experts with academic backgrounds in mechanical and electrical engineering, chemical engineering and industrial engineering and patent attorneys who were former patent examiners in the Korean Intellectual Property Office. Intellectual Property law is continuously evolving and constantly posing new issues that require creative solutions. The excellence of the experienced professionals in our Intellectual Property Practice Group enables Shin & Kim to provide optimal legal solutions for clients by applying innovative and thorough technical understanding to legal principles.

Key Services

Shin & Kim provides services in the following areas in relation to Intellectual Property:

  • Securing patent rights, including applications for examination and registration of patent/utility models, trademark and design rights and management of involved risks
  • Analysis on the scope of rights, infringement, methods of rights protection regarding patent/utility models, trademark and design rights
  • Claims for permanent injunction, compensation for damages, provisional injunction and other claims regarding patent/utility model, trademark and design rights
  • Criminal cases including charges against patent/utility model, trademark and design rights infringement
  • Invalidation trials and declaratory judgments on the scope of patent/utility model, trademark and design rights and representation in revocation trials for judgments
  • Investigations by the Korea Trade Commission regarding patent/utility model, trademark and design rights
  • Investigation by the Korea Fair Trade Commission (KFTC) over patent/utility model, trademark and design rights, and provision of necessary advice
  • Technology development and transfer, and licensing agreements
  • Coordination of litigation initiated overseas in connection with patent/utility model, trademark and design rights
  • Employee invention related issues and disputes over compensation for employee inventions
  • Collection of brand royalty of conglomerates (holding companies)
Experiences
Patents∙Utility Models
  • Samsung Display, in patent infringement and invalidation lawsuits (LCD sector)
  • UP Chemical, in a patent infringement case (semiconductor device sector)
  • KT&G, in a patent infringement case (cigarette manufacture technology sector)
  • Cheil Industries Inc., in a patent infringement case (semiconductor materials sector)
  • SKC, in a case involving a provisional injunction for patent infringement
  • Seoul Semiconductor, in a patent infringement case (LED sector)
  • Iljin Electric, in a patent infringement case (transformer sector)
  • Hyundai Oilbank, in a patent infringement case (cash receipt business method (BM) patent sector)
  • Hynix, in a lawsuit regarding compensation for employees’ inventions (LCD and MPEG sectors)
  • Samsung SDI, in a lawsuit regarding compensation for an employee’s invention (Lithium-ion Polymer batteries sector)
  • Chong Kun Dang Pharmaceutical Corp., in a lawsuit concerning compensation for an employee’s invention regarding a patent for an improved drug
  • Samsung Display, SK Hynix, Hyundai Heavy Industries, LG Household & Health Care, SECUI, TE Connectivity and Binggrae, in applications, examinations and decisions for domestic and overseas patents
  • A domestic pharmaceutical company, in establishing selection criteria for inventors
  • Patent infringement case between Samsung SDI and Matsushita Electric Industrial Co., Ltd. (PDP sector)
  • Patent infringement case between Samsung Electronics and Winia Mando (air-conditioning unit sector)
  • Invalidation lawsuits regarding the use patent of Sildenafil, an anti-impotence drug
  • Invalidation lawsuits regarding a usage/dosage patent for Tadalafil, an anti-impotence drug
  • Patent infringement case regarding Docetaxel, a general-purpose anti-cancer drug
  • Provisional injunction regarding a composition patent for Candesartan Cilexetil, a drug for high blood pressure
  • Seven domestic pharmaceutical companies, in a secondary use patent case regarding Pregabalin, a drug for pain relief
  • Damage claim regarding the reduced price of Olanzapine, a cure for depression, due to the release of generic products (the first lawsuit involving reduced drug pricing in Korea)
Trademark∙Design
  • Crown Bakery, in disputes involving trademark infringement and licensing
  • Binggrae, in an infringement lawsuit involving a three-dimensional trademark
  • Columbia Sportswear, in a trademark infringement lawsuit
  • FILA Korea, in a trademark infringement lawsuit
  • Kwang Dong Pharmaceutical Co. Ltd., in a trademark infringement lawsuit
  • Hyundai Heavy Industries, LG Household & Health Care, SECUI, Binggrae and others, in applications for design patents
  • Hanwha, Binggrae, KB Card and others, in applications for trademarks and patents
  • KT&G, in licensing the “Davidoff” and “Lamborghini” brands
  • Hanwha Group, in coordinating overseas disputes regarding a corporate logo
  • A holding company, on payments of brand royalty
  • Major domestic corporate groups, on the collection of brand royalties
  • Major domestic major companies, on licensing
  • Trade name dispute between Korea Telecom Authority (predecessor of KT Corp.) and KOCOM
  • Trial regarding the revocation of a trademark that infringed on the mark “Ferrero Rocher”
  • Trial on the scope of rights regarding the mark “Gyeongju-pang (bread)”
  • Criminal prosecution and trial for the invalidation of a trademark registration for the “Victoria’s Secrets” mark
  • Litigation regarding the design of an electric connector
  • Litigation regarding the design of an electric terminal
  • Damage claim regarding the development of the “IBK” trademark