Expertise

Patents

overview

As technological competition among businesses intensifies and investment in research and development continues to grow, patents have evolved from exclusive legal rights protecting the results of innovation to become key assets that determine a company's market competitiveness and long-term value. A well-structured patent portfolio not only serves as an effective barrier to competitors' market entry and means of securing technological superiority but also functions as a strategic base to enhance corporate value in a wide range of business activities, including technology transfer, licensing, investment and M&A. Accordingly, it is increasingly important for companies to assess potential patent infringement risks from the early stages of business operation and technology development, developing effective strategies to respond promptly and efficiently should a dispute arises.

The Intellectual Property Practice Group at Shin & Kim provides comprehensive legal services covering the entire patent lifecycle, from developing patent filing and prosecution strategies to building and managing patent portfolios, as well as representing clients in patent disputes before the Korean Intellectual Property Trial and Appeal Board and the Intellectual Property High Court. The IP Group also delivers practical solutions for a broad spectrum of patent-related issues arising throughout a company’s research and development and commercialization processes, including management of, and compensation for, employee inventions, patent due diligence and valuation, licensing, and technology transfer.

Shin & Kim has extensive experience in handling patent cases across a wide range of industries, including semiconductor, pharmaceuticals and biotechnology, information technology, motor vehicle and consumer product. Drawing on its deep understanding of the technological characteristics and business structure of each industry, Shin & Kim meticulously analyzes legal and technical points at issue and offers plans for response in light of the characteristics of each case and the client’s business strategy. Shin & Kim is also committed to systematically protecting its clients' technological assets and supporting their sustainable business growth throughout the course of securing and utilizing patent rights, preventing infringement risks and responding to disputes.

Key Services

Shin & Kim provides the following services in connection with patent matters.

  • Patent application filing and registration strategies
  • Structuring and maintaining patent portfolios
  • Freedom-to-operate (FTO) analysis to assess potential patent infringement risks prior to product development and release
  • Preliminary injunction to prohibit patent infringement and patent infringement proceedings 
  • Patent invalidation trial, trial for confirmation of the scope of right and revocation trial for judgment
  • Litigation related to, management of, and compensation for employee invention
  • Patent due diligence and patent valuation
  • Patent licensing, technology transfer and related disputes
Experience
Electrical/Mechanical
  • Prohibition of patent infringement and compensation for damages between a display manufacturer and a display equipment manufacturer (3D lamination sector)
  • Patent invalidation trial between domestic display manufacturers (LCD sector)
  • Prohibition of patent infringement between a domestic vaccine manufacturer and a global pharmaceutical company (pneumococcal conjugate vaccine sector)
  • Prohibition of patent infringement and compensation for damages among three motor vehicle parts manufacturers (autonomous driving vehicle sector)
  • Patent invalidation and infringement lawsuit between LNG tank welding equipment manufacturers (automated LNG tank welding device sector)
  • Preliminary injunction proceedings on prohibition of patent infringement and the case on merits, and patent invalidation trial, between semiconductor drying equipment manufacturers (semiconductor cleaning equipment sector)
  • WIPS-related patent infringement lawsuit between information security companies (wireless intrusion prevention system sector)
  • Patent invalidation trial and claim for registration of cancellation of exclusive license related to cascade dehumidification and cooling technology between a state research institution and an air-conditioning equipment manufacturer (dehumidification and cooling system sector)
  • Patent infringement lawsuit between electronic payment companies (card payment system sector)
  • Patent invalidation trial between a global steel manufacturer and a domestic steel manufacturer (hot stamping technology)
  • Patent invalidation trial and infringement lawsuit related to air cushion between cosmetics companies (cosmetics sector)
  • Cancellation of decision in a trial for the confirmation of the scope of right between Chinese valve manufacturers (electric valve sector)
  • Patent infringement lawsuit between a global semiconductor equipment manufacturer and a domestic semiconductor component manufacturer (semiconductor equipment component sector)
  • Patent infringement lawsuit between electronic payment companies (POS terminal program sector)
  • Licensing negotiations following a wiper-related patent infringement warning between a global motor vehicle component manufacturer and a domestic wiper manufacturer (counsel for the domestic manufacturer, conclusion with the execution of a license agreement)
  • Patent infringement lawsuit and Inter Partes Review in the U.S. related to the push – connect fitting patent and related settlement
Chemical/Pharmaceutical/Biomedical
  • Claim for performance of patent right transfer and registration procedures between biotechnology companies (bacteriophage sector)
  • Confirmation of the scope of right between cosmetic manufacturers (face mask sector)
  • Patent invalidation trial between in vitro diagnostics companies (optical blood analyzer sector)
  • Patent dispute related to photoinitiator between a domestic chemical company and a global chemical company
  • Arbitration related to a dispute over a commercialization agreement on VM202 gene therapy for the indications of CAD, DPN, DFU and ALS
  • Patent invalidation trial related to the use patent for crystalline-form mirabegron and the treatment of overactive bladder
  • Patent invalidation trial of a patent for dapagliflozin, the world's best-selling diabetes medicine
  • Patent dispute related to sodium meta-arsenite, a widely used anticancer and pain management medicine
  • Patent dispute related to rosuvastatin for the treatment of heterozygous familial hypercholesterolemia
  • Patent invalidation trial and infringement lawsuit between Dolutegravir and Bictegravir as second-generation HIV medicines
  • Preliminary injunction proceedings and the case on merits, and patent invalidation trial related to the patent for Entresto, a heart failure medicine based on a supramolecular complex
  • Claim for compensation for damages with respect to the price of an original medicine reduced due to the release of a generic medicine (first “drug price reduction lawsuit” in Korea; Shin & Kim won the Korean Legal Award for handling this case)
  • Stay of execution of a reduction in the price of an original medicine due to the introduction of a generic medicine (first such lawsuit in Korea)
  • Prohibition of infringement related to the patent for a pneumococcal protein conjugate vaccine
  • Patent invalidation trial and the confirmation of the scope of right concerning a composition for the treatment of hypertension
  • Patent infringement and item approval strategy for a salt-modified medicine for the treatment of gastroesophageal reflux disease
  • Patent infringement lawsuit and claim for compensation for damages related to Exelon Patch, a medicine for Alzheimer’s disease
Awards and Rankings
Award's signature
  • Tier 1 Law Firm in Intellectual Property
    Asia Pacific Legal500 2015-2018,2021-2022
  • Tier 1 Law Firm in Patents
    Asia Legal Business (ALB), 2017-2024
  • Tier 1 Law Firm in Copyrights/Trademarks
    Asia Legal Business (ALB), 2017, 2020-2024
  • Litigation Award at the 4th Korea Legal Awards-lawsuit seeking damages for decreased prices of original drugs due to patent infringement
    Money Today