YOON&YANG

Intellectual Property

Overview

Intellectual Property Protection
Yoon & Yang’s Intellectual Property Practice Group consists of the firm’s Intellectual Property Practice Group and the separate Patent Prosecution Group. The members of the Group include intellectual property attorneys and patent attorneys who are experienced in a variety of technical disciplines. Our services range from securing, protecting and defending intellectual property rights to providing the full spectrum of advisory services for transactions involving intellectual property rights in a wide range of technologies.

The Group has expertise in all phases of intellectual property litigation. The Group’s litigation team, which features a former Supreme Court Justice and Chief Justice of the Patent Court, handles litigation involving all types of intellectual property rights, with particular experience in patent, copyright, trademark, trade secret misappropriation matters. The Group and has achieved outstanding results in high-stakes and high-profile litigation cases.

Based on their technological expertise and accumulated experience in domestic and international intellectual property disputes, our lawyers offer multidimensional support customized for each client to strategically resolve disputes by successfully negotiating settlements, license agreements and technology business arrangements that meet the business goals of each client. The Group also counsels clients on how to capitalize on their intellectual property investments by auditing and analyzing intellectual property, establishing intellectual property management strategies, creating strategic alliances, licensing, franchising and distribution arrangements, and identifying candidates for prosecution or acquisition.

Yoon & Yang’s Intellectual Property Practice Group combines its litigation experience with technical expertise in counseling clients across a spectrum of industries, from biotechnology and medical devices to telecommunications, computer programs, digital content and domain names. The Group also actively advises and represents clients regarding issues associated with fair trade or matters concerning the pharmaceutical approval process before the Ministry of Food and Drug Safety.

Unfair Competition Prevention/Trade Secret Protection
Trademark, trade name and trade secret misappropriation matters have increasing importance to companies. The primary sources of legislation that govern these issues include the Unfair Competition Prevention and Trade Secret Protection Act and the Trademark Act.

The Unfair Competition Prevention and Trade Secret Protection Act provides protection for marks or signs widely known in Korea, regardless of their registration. If marks or signs are registered as trademarks or service marks, further protection is also available under the Trademark Act.
Remedies available for unfair competition, trade secret misappropriation, or trade secret or trade name infringement include injunctive relief and damages as well as destruction of infringing products or facilities.

Based on their extensive experience in issues associated with unfair competition and trade secret misappropriation, our lawyers effectively represent and advise clients on a variety of disputes and transactions across a wide spectrum of industries.

Information Technology / Internet / E-Commerce and Privacy
Yoon & Yang’s Intellectual Property Practice Group offers expert legal advice for information technology (IT) related companies to assist them in navigating the rapidly changing landscape of the IT industry. The Group counsels clients to secure competitive edges by timely providing updates on legal developments.

A greater emphasis has been placed on privacy with recent massive data leaks and increased privacy violations through the Internet. In order to avoid compliance risks and potential liability regarding privacy issues, online-based companies need to implement legal and technical system for privacy protection which meets the requirements under privacy laws. The Group assists clients to establish and maintain privacy policies which minimize privacy risks, while finding ways to maximize their business opportunities by using personal data in compliance with privacy laws.

Sports / Entertainment / Right of Publicity
Pop culture, entertainment and sports business industry has been evolving in terms of the size and quality of the market, and publicity disputes and other related disputes between companies and individuals have also become more frequent.

With its extensive transactional and litigation experiences, Yoon & Yang’s Intellectual Property Practice Group provides legal services in connection with a wide variety of issues concerning the acquisition, enforcement and commercialization of intellectual property rights by media and entertainment companies and individuals.

Practices

Intellectual Property Protection
• Prosecution of patents, utility models, designs, trademarks and copyrights
• Prior art search, claim scope analysis, infringement analysis
• Representing clients in proceedings before the Intellectual Property Trial and Appeal Board regarding invalidation, cancellation, or scope of intellectual property rights
• Representing clients in appeals to the Patent Court from the Intellectual Property Trial and Appeal Board
• Representing clients in intellectual property litigation and dispute resolution processes
• Representing clients in negotiations to resolve intellectual property disputes
• Representing clients in licensing negotiations and valuation of technology-based intellectual property
• Representing clients in trademark licensing and franchising negotiations
• Advising clients regarding restrictions on customs clearance of infringing goods
• Advising clients on matters which include privacy, unfair competition, and antitrust elements
• Due diligence and merger planning for technology intensive companies
• Representing clients in the authorization and approval process before the Ministry of Food and Drug Safety

Prevention of Unfair Competition / Protection of Trade Secrets
• Representing clients in litigation seeking damages or injunctive relief against unfair competition practices, in particular those involving well-known marks
• Advising clients on matters involving trade secrets
• Representing clients in litigation and dispute resolution processes regarding non-competition restrictions, confidentiality obligations and trade secret misappropriation

Information Technology / Internet / E-Commerce and Privacy
• Representing clients in e-commerce litigation
• Counseling clients on telecommunications-related intellectual property matters, in particular those involving domains and Internet-based business models
• Advising clients on software-related intellectual property matters
• Analysis of patentability of business method patents; prosecution of business method patents
• Advising and representing clients regarding Internet security and privacy related matters
• Advising clients regarding regulations on telecommunication-related businesses

Sports / Entertainment / Rights of Personality
• Protecting copyrights and other intellectual property rights of media and entertainment companies and individuals
• Protecting rights to privacy, portrait rights, rights of name and other publicity rights of media and entertainment individuals
• Advising clients regarding film production, investment and distribution arrangements
• Advising clients regarding record production, investment and distribution arrangements
• Counseling on matter relating to performance of artists
• Counseling on matters relating to management contracts and advertising contracts featuring media and entertainment individuals
• Counseling on matters relating to management contracts and international transfer of professional athletes

Representative Matters

• Represented Yuhan Corporation in investigations before the Korea Trade Commission and administrative court proceedings against Eli Lilly & Company regarding gemcitabine hydrochloride products
• Represented OK Tech in patent invalidation proceedings against patents concerning octet hydraulic breakers
• Represented KEPCO-KPS in patent invalidation proceedings against patents concerning nuclear power plant steam generators
• Represented Dongbu Steel in mutual cancellation proceedings under the Unfair Competition Prevention and Trade Secret Protection Act
• Represented SK Innovation in patent invalidation proceedings against LG Chem’s patents concerning rechargeable battery separators
• Represented Fox Head in a copyright infringement lawsuit
• Represented three major broadcasting companies (KBS, MBC and SBS) in lawsuits against the Cable Association (which includes CJ Hello Vision and HCN) seeking injunction to enjoin cable operators from retransmitting terrestrial broadcasts
• Represented Ferragamo in trademark infringement lawsuits against Kumkang and Daeho Corporation
• Defended LG Household & Health Care and Ssangyong Paper against Yuhan-Kimberly’s patent infringement claims in the so-called 'diaper litigation’
• Defended SK Limited Corporation from Tonen’s patent infringement claims over patents concerning lithium-ion battery separators (selected as one of top ten technology defenses by the Ministry of Trade, Industry and Energy)
• Advised and represented domestic and international film production and distribution companies (including Warner Bros. and CJ Entertainment) regarding illegal downloads
• Represented major Korean pharmaceutical manufacturers in an appeal from the decision of the Intellectual Property Trial and Appeal Board regarding the validity of Sanofi-Aventis’ patents concerning antithrombotic agent "Plavix" (clopidogrel)
• Defended Hanaro Telecom in a lawsuit regarding data leaks
• Represented commercial banks in a service mark cancellation proceeding against Woori Bank’s service mark
• Represented HTC in a patent infringement lawsuit against Inspirit over smartphone patents
• Represented KC Technology and Samsung Electronics in a patent infringement lawsuits over semiconductor wafer patents
• Represented TagAZ Korea in civil and criminal trade secret misappropriation lawsuits regarding the manufacturing technology of Lacetti vehicles
• Represented Aker Kvaener MHAS in a patent infringement lawsuit over patents concerning drilling ships
• Represented Omni PLS in a design invalidation proceeding and a design infringement lawsuit against MTech
• Represented Nike in trademark infringement and unfair competition lawsuits
• Represented Haedong Bridge in a patent invalidation proceeding against patents concerning arched bridge girders owned by the Korea Bridge Institute Co., Ltd.
• Defended Wolbi in copyright infringement lawsuits raised by Evisu Japan
• Represented KT in a lawsuit seeking transfer of trademarks against KT Logis
• Represented Siemens in a patent infringement lawsuit over patents concerning garbage collection systems
• Represented SKC in a patent infringement lawsuit over patents concerning abrasive pads
• Represented the Association of American Publishers in a criminal copyright infringement lawsuit against domestic publishing companies
• Represented ATG Ceylon in a trade secret misappropriation lawsuit against domestic glove manufacturers
• Represented J.T. Ronnefeldt KG in a lawsuit seeking domain name transfer against Ronnefeldt Korea
• Represented Kolon Industries in a trade secret misappropriation lawsuit against Samsung C&T Corporation
• Represented LG Chem in a lawsuit seeking preliminary injunction enjoining its former employee from moving to SK Energy, one of its competitors
• Advised Techcross regarding issues associated with the exclusive patent license agreement with the Korea Institute of Ocean Science and Technology
• Represented Interplex Quantum in civil and criminal trade secret misappropriation lawsuits against its former officers and employees
• Advised Nike regarding IP migration
• Defended Yucheon Enviro from Grenexy’s patent infringement claims over patents concerning liquid filtration equipment
• Advised Parkland Incorporated regarding legal issues associated with the trademark transfer agreement with Austin Reed
• Advised Neowiz regarding legal issues associated with Crossfire and FIFA Online 2 games
• Defended KB Technologies in non-competition and trade secret lawsuits raised by Ubivelox
• Represented Ewha Woman’s University in unfair competition and domain cancellation proceedings
• Represented Start M in a lawsuit seeking damages against Jung Ji-hoon and JYP regarding canceled performance
• Advised Ready Entertainment regarding an advertising contract between Paradise Casino and Al Pacino
• Advised Gong Yoo regarding disputes involving Dongsuh Food and Mango Six associated with coffee commercials
• Represented Kim In-Kyung, a professional golfer, of T-Gold Studio in a lawsuit seeking revenue sharing
• Represented Kim Min-ji in a lawsuit seeking invalidation of an exclusive agency contract with Fantagio
• Represented Ocean Film in a lawsuit against Lee Da-hae and DBM Entertainment seeking damages for termination of the film starring contract
• Advised and represented Asia Bridge Contents in a lawuist against JYJ seeking reimbursement of recording production costs
• Advised Park Hae-jin regarding legal issues associated with the termination of an exclusive agency contract
• Advised Sportizen regarding legal issues associated with the termination of an exclusive agency contract with Kim Ja-young, a professional golfer

News & Publications

WONIL KIM
T :82. 2. 6003. 7511

E :wonilkim@yoonyang.com
DONG OH HONG
T :82. 2. 6003. 7549

E :doh@hwawoo.com
KWANG-WOOK LEE
T :82. 2. 6003. 7535

E :kwlee@hwawoo.com
JEONG GYU KIM
T :82. 2. 6003. 7589

E :jgkim@hwawoo.com

Intellectual Property

Overview

Practices

Representative Matters

Intellectual PropertyProfessionals

Contacts

News & Publications