IP Transactions
overview
Intellectual property (IP) is a valuable asset in many business transactions, including technology transfers, joint research and development projects, investments, mergers and acquisitions, and corporate restructurings. In technology-intensive industries such as life sciences, pharmaceuticals, information technology, and semiconductors, IP ownership, protection, and commercialization can directly impact business competitiveness and transaction value. Therefore, parties should carefully address key issues from the beginning of a transaction. These issues include ownership and scope of rights, licensing arrangements, payment structures, ownership of improvements, representations and warranties, and liabilities arising from contractual breaches.
IP plays a critical role in determining transaction structures and enterprise value in investments and M&A transactions. Through comprehensive IP due diligence, businesses can assess the ownership, validity, and enforceability of a company's intellectual property rights; identify restrictions, such as licenses and security interests; and evaluate potential infringement risks, as well as ongoing or anticipated disputes. These assessments reduce transaction uncertainty and provide a solid foundation for structuring appropriate terms and allocating risks effectively.
Shin & Kim's Intellectual Property Practice Group has extensive experience advising on IP transactions across a variety of industries, such as pharmaceuticals, biotechnology, information technology, semiconductors, entertainment and content, and food and consumer products. Considering the unique characteristics and commercial objectives of each transaction, the IP Group provides comprehensive legal support throughout the entire lifecycle of a transaction—from structuring the transaction and conducting IP due diligence to negotiating, closing, and resolving disputes after the transaction closes.
With extensive experience in domestic and cross-border transactions and deep industry knowledge, Shin & Kim helps clients proactively manage legal and commercial risks and maximize the strategic and commercial value of their intellectual property assets.
Key Services
Shin & Kim provides comprehensive legal services in connection with IP transactions, including:
- Technology transfer agreements
- License-in and license-out agreements
- Joint research and development agreements (JRDAs)
- Joint patent filing and co-ownership agreements
- IP due diligence in M&A and investment transactions
- Trademark licensing and brand use agreements
- Franchise and content licensing agreements
- IP valuation and transaction structuring
- Representation in post-IP transaction contractual disputes
Experience
- Licensing negotiations on behalf of a Korean windshield wiper manufacturer following a patent infringement warning against a leading global automotive parts manufacturer, resolving the matter through the execution of a license agreement
- Negotiation of license agreement on behalf of a Korean company and related advisory work concerning alleged infringement of U.S. patents owned by a global semiconductor metrology equipment company
- Commercialization agreement dispute relating to gene therapy (VM202) for various diseases (CAD, DPN, DFU, and ALS indications)
- Joint research and development agreement for the discovery of genetic markers for predicting the onset of dementia
- Co-development agreement for bendamustine-related pharmaceutical products
- Joint research and development agreement for the development of an aptamer–lipoplatin combination therapy
- Technology license agreement relating to a selective PI3K inhibitor candidate
- Technology transfer and license-out of technology owned by a Korean pharmaceutical company to a Chinese company
- Joint venture of a Korean pharmaceutical company with a U.S. sports nutrition manufacturer, including the review of related licensing agreements
- Drafting, negotiation, and advisory work on behalf of a leading Korean pharmaceutical and medical device companies relating to numerous license agreements and other commercial transactions
- Technology licensing agreements relating to the Yoplait brand, including contractual arrangements and renewals
- License agreement with GTT as well as related contractual matters including technical assistance
- Inbound licensing transactions and negotiations involving the Davidoff and Lamborghini brands
- Licensing transactions relating to the Lady M brand
- Overseas publishing agreements for game titles, including CrossFire
- Disputes and international licensing transactions involving Korean entertainment content, such as TV series and films
Key Contacts
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Da Yoon Shin Senior Foreign Attorney
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Minyoung Park Senior Foreign Attorney
