Reverse Payment Agreement between patentee and generic company violates Korean Antitrust Law

Recently KFTC announced to watch license agreements between patentees and generic companies under the patent and drug MA linkage system. That is a Korean version of the Hatch-Waxman Act system from March 15, 2015.

Under the new system, the first generic company may obtain 9-month market exclusivity. Such exclusivity may cause motives or incentives for reverse payments between the patent owner and the first generic.

In order to avoid antitrust violation issue, it is recommendable to closely review the first decision of the Supreme Court on the reverse payment case in Korea that was rendered on February 27, 2015 by the Korean Supreme Court. For information, the GSK vs. KFTC case is summarized in the below.

1. Background

GSK owned a Korean patent for Ondansetron, antiemetic drug and sold with a tradename as Zofran. Dong-A Pharmaceutical Co. developed a generic version of ondansetron and received a cease and demand letter from GSK. Both parties started lawsuits but soon signed a settlement agreement and withdrew lawsuits.

2. Settlement of Patent Infringement Litigations

By a Sale & Supply Agreement for Ondansetron between both parties, GSK granted Dong-A to sell the product to large sized hospitals. Instead, Dong-A shall neither make nor sell any competing medications including ondansetron to Zofran. GSK agreed to pay large amount of money to Dong-A by cash every year for 5 years. Further GSK promised to offer additional significant amount as incentive for high sales performance.

3. KFTC investigation and lawsuits

KFTC investigated GSK/Dong-A patent settlement case and decided that the settlement was a reverse payment agreement that violated the Antitrust Act of Korea. In particular, KFTC found them violating Art. 19 of the Monopoly Regulation and Fair Trade Act (MRFTA) and fined GSK about US$2 million and Dong-A US$1.5 million.

4. The Supreme Court Decision

GSK raised an appeal to KFTC's decision to the Seoul High Court but the court confirmed the KFTC decision. And GSK further appealed the case to the Supreme Court.

GSK argued that the settlement was within the scope of his patent right. As they pointed out, Art.59 of MRFTA (Korean version of antitrust law) has provision that “This Act shall not apply to any act which is deemed as a justifiable exercise of the right under the Copyright Act, the Patent Act, the Utility Model Act, the Design Protection Act or the Trademark Act.”

However, the Supreme Court rejected GSK's argument. The court opined that a settlement with reverse payment violates antitrust law if a patentee may maintain his monopoly by the reverse payment and thus affects adverse effect on fair and free competition in the related market. In the decision, the court suggested several factors in finding any violation or liability. Those can include the amounts of reverse payment to the opposing party and anticipated profit of the patent owner, patent litigation cost, time span and period for non-compete, etc.

On the other hand, the Seoul High Court stated in their decision that when the subject patent is obviously invalid or the competing party has not infringed the patent, any settlement with reverse payment shall be regarded as being anticompetitive and shall be violation of antitrust law.

Patent Term Extension (PTE) Disputes on Period and the Scope of Protection in Korea

Many generic drug companies challenged the validity of PTEs on period and the protection scope of extended patent rights.

The first issue for PTE disputes in Korea is whether the extended period is valid or not because certain periods of time included within the PTE should not have been included under the relevant statutes. The second issue is on the scope of the patent right protection for an extended term after the expiry of an original term.

1. Recent Decisions of IPTAB and Patent Court on Period Issue  

In principle, the "time period during which the patented invention could not have been worked" of the Patent Act starts on the date on which the test for safety and efficacy is initiated or the date on which the patent is registered (whichever is later) and ends on the date on which the regulatory approval is reached to the MA applicant. It is not the date of MA issuance.

Under the Patent Act, the "time period of delay attributable to the patentee" must be deducted from the total delay period. The period is periods for which the patentee is responsible for delay in the regulatory approval.

The IPTAB of KIPO and the Patent Court affirmed the above principle. In practice, The IPTAB and The Patent Court appear to recognise and confirm the present status of the granted PTE periods according to KIPO's practice.

Because many cases are still pending, the issue has not been settled yet. The Supreme Court shall decide the issue in not too distant future.

2. Recent Decisions of IPTAB and Patent Court on the Scope of an Extended Patent Right

 The Korean Patent Act Article 95 (Effects of Patent Right with its Term Extended by Permit, etc) “The effects of a patent right, the term of which has been extended pursuant to Article 90 (4), shall not extend to any other acts except the working of the patented invention with respect to such products for which approval, etc. was the basis for registering the extension (or where approval, etc. was obtained for any specific use of the product, with respect to the product adapted for such specific use).”

What is the effective scope of an extended patent right through PTE registration? Article 95 of the Korean Patent Act specifically limits the scope of the extended patent right to be effective within working of the patented invention with respect to the 'approved product.'

Accordingly, there has been disputes over how the terms "product" and "usage" in the above clause should be interpreted. However, there are as yet no definitive criteria or court decisions issued as to the interpretation of this issue.

Before the IPTAB of KIPO and the Patent Court rendered their decisions, the IP Courts of Japan issued their decisions. Because the corresponding provisions on PTE of the Japanese Patent Act are really similar to those of the Korean Patent Act, the interpretations of IP courts of Japan were closely watched by Korean patent practitioners.

For information, Article 68bis (68-2) of the Japanese Patent Law is described as follows: “a patent right the term of which is extended via PTE registration "shall not be effective against any act other than the working of the patented invention for the product which was the subject of the disposition designated by Regulation in Article 67, paragraph 2 of the Patent Law that constituted the reason for the PTE registration (when the specific usage of the product is prescribed in the disposition, the product used specifically for that usage)".

The Tokyo IP High Court stated in their opinion that "in light of the purpose of the PTE registration system and that of a patent infringement action, it is reasonable to understand that in the case of a patented invention relating to an ingredient of a medicine, a patent right whose duration was extended and by 'effectiveness/efficacy'and 'dosage/regimen' as the 'usage'." For example, the scope of an extended patent right based on a specific salt of API shall cover other salts of API.

Unlike the IP court’s decisions of Japan, the IPTAB of KIPO and the Patent Court of Korea held that the scope of an extended patent right based on a specific salt of API shall NOT cover other salts of API. Thus it was totally different interpretation. Namely, the scope of an extended patent right based on a specific salt of API only covers the approved Drug Product itself.

At present, the IPTAB of KIPO and the Patent Court maintain really strict interpretations on the scope of an extended patent right. Again, several cases are pending before the Supreme Court, this issue has not been settled yet. The Supreme Court shall decide the issue relating to the effective scope of a patent right extended via PTE registration in not too distant future, too.

 

Data Exclusivity (DE) Protection in Korea

In pharmaceutical industry, data exclusivity (DE) protection is an important IP right. DE is to protect the value of extensive pre-clinical and clinical data that establish a drug’s safety and efficacy, clinical indications and uses.

KFDA provides such DE through PMS (Post Marketing Surveillance) system. Before the expiry of PMS period, no generic drug is allowed to market. During PMS period, third parties cannot obtain approval for generic versions of the same product unless they can submit data that are (1) different from the data submitted for the first approval; and (2) equivalent to or exceeds the scope of data submitted for the first approval. There is no real case to obtain before expiry of PMS in Korea so far. Therefore, such PMS system has played an effective Data Exclusivity for drug developers.

Two categories of DE exist in Korea as follows:

1. New Drug (NCE) – 6 years from marketing approval
   1. New Chemical Entity (NCE)
   2. Ethical Drugs different from already licensed drugs in terms of active ingredients or mixture ratios
   3. Ethical Drugs different from already licensed ones in the route of administration, while containing the same active ingredients
       
2. Improvement Drug (NCI) – 4 years from marketing approval
   1. Ethical drugs which are identical to already licensed drugs in terms of active ingredients and route of administration but distinctively different in added indications.
   2. Ethical drugs which are modification of the structure, formulation, or indication of existing drugs. It is generally an improved version of the original drug in terms of safety, efficacy or convenience.

Patent Term Extension (PTE) in Korea

1. Background
    
   The patent term extension system was first introduced in Korea on July 1, 1987. Under the 1987 Act, a petition for patent term extension may be filed only during the last three (3) years of the original term of the patent. Under the new 1990 Act, however, a petition for patent term extension may be filed within three (3) months from the date of the approval and six (6) months prior to the expiration date. The current law is basically the same as that of 1990.
    
   Some Changes to the current patent term extension system went into effect on April 3, 2013. The key change to the current system is limiting the number of PTE instances from multiple available chances to only one. Under the current PTE system in Korea, PTE may be available only to the "first" regulatory approval for "a new chemical entity."
    
2. Subject Patent and Procedures for PTE
    
   A patent is eligible for term extension if the patent is related to an approved medicinal or agricultural product, if the patent was unable to be practiced after grant due to pharmaceutical or agricultural regulatory approval requirements. Such a patent should claim a compound, composition indicating use, formulation for (1) an invention relating to a drug which requires a product approval under the Pharmaceutical Affairs Act ("PAA"); or (2) an invention relating to an agrochemical which must be registered under the Agrochemical Management Act ("AMA").
    
   Only registered patentee may apply for patent term extension to KIPO. If the patent right is jointly owned, all the patentees must jointly apply for an extension of the term.
    
   An application for PTE must be submitted within three months from the date of the approval under the PAA or from the date of the registration under the AMA. The application, however, may not be submitted less than six months prior to the expiration of the original patent term. Also, a petition for patent term extension may not be filed after the expiration of the patent term. An application for patent term extension should be supported with evidence to show the reason for the extension.
    
3. Period of Patent Term Extensions
    
   The term of a patent can be extended only once. In case a product approval (or registration) is sought for multiple patents, the term is extended for each patent. However, in case multiple product approvals (or registrations) are sought for a single patent, the term is extended only for the first approval (or registration).
    
   Under the old law, even an approval for a combination product whose components had been previously approved by KFDA could be the basis for PTE. In addition, the approval for a second use of an approved drug could also be the basis for PTE, since the approval was regarded as the "first" approval for the new use. Further, in some cases, even an approval for a new formulation comprising an approved active ingredient could be the basis for PTE, if the new formulation was not simply different in the dose of the active ingredient but was a different administration form compared to the previously approved drug (e.g., injection vs. tablet).
    
   However, under the current law and regulation, PTE may be available only once to the "first" regulatory approval for "a new chemical entity."
    
   The period of PTE shall be the total length of non-working time to obtain authorization or registration under provisions of the PAA or AMA to work a patented invention. For example, for drugs, the period commencing from either the approval of a protocol for clinical testing from the government authority after obtaining a conditional approval to manufacture for clinical testing or the date the patent is registered, whichever is later; to the date that the final approval to market.
    
   The maximum patent term extension obtainable is five (5) years regardless of whether the actual period of non-working caused by the statutory requirements under the relevant Act exceeds five years. 
    
4. Appeal to the IPTAB and the Patent Court
    
   If an examiner of KIPO rejects the petition or application for patent term extension, the applicant or petitioner may appeal to the IPTAB of KIPO. The appeal must be filed within thirty days from the date a certified copy of the rejection is served to the applicant or his agent. On the other hand, a 3rd party may challenge PTE through Invalidation Trial at the IPT of KIPO. If a losing party in the IPT proceedings wants to appeal against the decision of IPT, the party may bring a lawsuit to revoke the IPT decision to the Patent Court within thirty days from the date of receiving the decision.
    

Appeal Procedure to KFTC’s Decision and Order to the Seoul High Court

KFTC’s decision or order does not become effective until the formal written decision and order has been issued. Following receipt of the KFTC’s written order, the respondent party may appeal as followings:

1. Filing an Request for re-hearing & suspension of enforcement

A respondent who is dissatisfied with the decision may file a request for re-hearing to the KFTC within 30 days from the receipt of the written decision.

The KFTC may hold a new hearing and make a decision within 60 days, but it can extend the decision-making period up to 30 days.

2. Filing a lawsuit for appeal to the Seoul High Court

The respondent party may appeal the KFTC’s decision to the Seoul High Court. In addition, the party may file a petition for a stay of the enforcement of order to the Seoul High Court, too.

The party shall file a lawsuit to the Seoul High Court within 30 days from the receipt of a written decision or re-hearing result.

3. Final Appeal to the Supreme Court

A losing party at the Seoul High Court may appeal to the Supreme Court within 14 days from the receipt of the decision.

 

Seoul High Court Denied Qualcomm’s Appeal for Stay on September 5, 2017

The Seoul High Court denied the Qualcomm’s petition to stay the order of the Korea Fair Trade Commission (KFTC). The court found that company’s business wouldn’t suffer irreparable harm while the company appeals. Irreparable harm typically is the legal threshold that courts use when determining whether to grant a stay.

Qualcomm announced it would appeal the Seoul High Court’s decision to the Korea Supreme Court. Link: Qualcomm press release

The case is an intermediary process and the court’s decision to deny the petition to stay does not impact Qualcomm’s appeal of the KFTC decision and order. The main lawsuit is pending before the Seoul High Court.

Further, the KFTC’s order reviewed by the Court does not invalidate any existing license agreements, does not prohibit Qualcomm from entering into licenses for its standard essential patents (SEPs) and other patents at the device level and does not limit the royalties Qualcomm can seek or collect for SEPs under its current or future licenses as long the license agreements are consistent with Qualcomm’s FRAND commitments.

The Korea Fair Trade Commission (KFTC) Rendered Full Decision and Order Against Qualcomm on January 20, 2017

The Korea Fair Trade Commission (KFTC) rendered its full decision and findings of the investigation into Qualcomm’s market power and anti-competitive business practices.

 

Click here to read the full KFTC decision in English.

Partner, Kook-Hyun Kim

Kevin, Kook-Hyun Kim, Attorney at Law / Patent Attorney, kkh@kasanlaw.com

Kevin, Kook-Hyun Kim is an attorney at law who represents and provides counsel to clients in in-depth legal matters related to intellectual property law. Since starting his career as a patent and trademark attorney in 1994, his practice encompassed virtually all aspects related to intellectual property from drafting and prosecuting patent applications to patent trials and litigation, and over the years, he has provided professional services relating to trademark registration, licensing and litigation to both domestic and multinational corporate clients.

Before joining KASAN, he worked at Kim & Chang, Lee & Ko and Myung-Shin & Partners. While working at Kim & Chang, he has prosecuted a large number of inbound patent applications and was extensively involved with representing multinational corporate clients in patent trials and litigation. At Lee & Ko, his major domestic clients included LG electronics and LG-Philips LCD, which he represented in technology transfers, litigation, trade secret, copyright and trademarks.

He is regularly involved with patent and trademark infringement litigations. Particularly, he has successfully represented domestic clients (defendants) in landmark patent infringement lawsuits. Though a patentee asked for the largest damage compensation in the history of our patent infringement lawsuits, attorneys for the defendants, including Mr. Kim, successfully defended the clients in a trial that lasted for 3 years.

At KASAN from 2006, he has worked for many clients regarding IP infringement litigation cases, arbitration cases, opinions, etc. The list of representative litigation cases is attached below.

Kevin is a frequent speaker at various seminars attended by domestic and international patent practitioners. He served as an adjunct professor for patent practice at Yonsei University, school of law for 5 years. And he regularly gives lectures at the Korean Invention Promotion Association and the Korean Patent Attorney Association.

Further, he was involved with the WIPO's educational project, as a counselor to the Korean Invention Promotion Association and the Korean Intellectual Property Office. Both organizations provided the WIPO with online education materials related to patent, trademark, copyright, trade secret, etc.

Mr. Kim is an active member of LESI, INTA, APAA, KPAA and the Korea Bar Association.

Mr. Kim received a B.S. and an M.S. in Pharmaceutics from Seoul National University (SNU) in 1987 and 1989, respectively, a Masters in IP from Franklin Pierce Law Center of UNH in New Hampshire, U.S.A. in 1994, and a LL.B. from Seoul National University in 2000.

Mr. Kim passed the Korean patent bar examination in 1993 and the Korean bar examination in 2000.

Mr. Kim wrote a book, “Business Secrets Protection Law” in 2010.

He is versed in English and Japanese.

• Representative Cases after 2006 at KASAN from 2006

- Pfizer Inc. v. Ahn-Gook, a Korean Pharmaceutical Company

Kasan IP and Law Firm successfully defended a Korean pharmaceutical company against allegations of infringement of a patent relating to Pfizer’s blockbuster medicine Norvasc® in preliminary injunction and permanent injunction infringement litigation, and successfully represented the Korean company in invalidation proceedings, trial to confirm the scope of a patent right and appeals against the trial decisions before the Korean Patent Court and the Supreme Court.

- Pfizer Inc. v. Hanlim, a Korean Pharmaceutical Company

This is the first case regarding “off-label” drug issue in Korea. The patent is directed a new use of a known compound, pregabalin. Kevin represented Hanlim and successfully defended permanent injunction claim and restricted damages against the patentee Pfizer.  

- Tokyo Electron Limited v. IPS, a Korean semiconductor equipment company

We successfully represented a Korean semiconductor manufacturing equipment company in patent infringement litigation before a civil court, invalidation trials before the IPT in KIPO, appeals against the trial decision before the Korean Patent Court. Also we successfully represented our client in criminal prosecution proceedings relating to trade secret theft allegation against TEL.

- Gilead v. Daewoong, a Korean pharmaceutical company

Our firm successfully defended a Korean pharmaceutical company against allegations of infringement of a patent relating to Gilead’s blockbuster drug Hepsera®, in preliminary injunction case, patent infringement litigation, invalidation trials before the IPT in KIPO and appeal against the trial decision.

- Konami v. a Korean game company

The firm successfully defended a Korean game company in copyright and trademark infringement litigations and criminal prosecution cases, relating to Konami’s famous characters and trademarks.

- KEC, a Korean electronics company v. ASE

We defended ASE against a Korean electronics company in criminal prosecution and litigation relating to theft of trade secret involving semiconductor packaging technologies.

- P&G v. Wooshin, a Korean pharmaceutical company

We successfully defended a Korean generic company in invalidation trial, trial to confirm the scope of a patent and appeal against the trial decisions before the Korean Patent Court and the Supreme Court relating to developing and marketing of a generic version of P&G’s patented medicine Risedronate Sodium for treating osteoporosis.

- ALCON v. Hanlim, a Korean pharmaceutical company

Kasan successfully represented a Korean generic company in invalidation trial and appeal against the trial decision, relating to developing and marketing of a generic version of ALCON’s patented medicine Patanol® for treating allergic conjunctivitis.

- INNOMTEK v. CDM Bridge

The firm successfully represented INNOMTEK in infringement litigation and preliminary injunction cases involving Bluetooth and USB driver technologies.

- TRY Brands v. a personal business owner

We successfully represented TRY Brands in trademark infringement litigation involving a well-known trademark for clothing. 

- Shinwha Inc. v. Mirae Inc.

We represented Shinwha in patent infringement litigation and invalidation trial, relating to a patent on diffusion film for LCD.

- Dash Co., Ltd v. a Korean consumer goods company

Kasan successfully defended a Korean consumer goods company against allegations of infringement of a patent relating to household goods in preliminary injunction.

- Sports TOTO Inc. v. a personal business owner

We successfully represented Sports TOTO in patent infringement litigation, invalidation trial and appeal for the trial decision against a personal business owner.

- Wonik Inc., a Korean semiconductor equipment company v. a former researcher of the company

The firm successfully represented a Korean semiconductor equipment company in a trade secret theft case against a former researcher of the company, throughout criminal prosecution, preliminary injunction and infringement litigation. 

- Ace Tech, a Korean electronics company v. Hirose Korea, an electronics joint venture between a Korean company and a Japanese company

Kasan IP and Law Firm successfully represented an electronics joint venture between a Korean company and a Japanese company in a trade secret theft case involving mobile antenna technology against Ace Tech throughout criminal prosecution, preliminary injunction and litigation for damages. 

- A Korean construction and engineering company “S” v. a Korean construction and engineering company “I”

The firm successfully represented a Korean construction and engineering company “S” in patent disputes and disputes relating to “New Excellent Technology” certification from Ministry of Land, Infrastructure and Transport. 

- National Health Insurance Corporation v. Seoul National University

We successfully defended Seoul National University in insurance benefits refund litigation against National Health Insurance Corporation.

- SK Chemical, a Korean pharmaceutical company v. Dongkuk, a Korean pharmaceutical company

We successfully defended Dongkuk, a Korean pharmaceutical company in patent infringement litigations, trademark infringement litigation, invalidation trial and trial to confirm the scope of a patent before the IPT in KIPO relating to a patented drug of a combination of existing two drugs. 

- National Health Insurance Corporation v. Kyungbo, a Korean pharmaceutical company

The firm successfully defended a Korean pharmaceutical company in pharmaceutical expenditure refund litigation, relating to active pharmaceutical ingredients exemption provision. 

- Daewoong, a Korean metal working company v. a personal business owner

We successfully represented a Korean metalworking company in patent infringement litigation, invalidation trial and appeal for the trial decision, against a personal business owner.

- Choistech, a Korean electronics startup v. a Korean electronics company

Kasan successfully represented Choistech, a Korean small electronics company in a trade secret theft case relating to electronic accessories for iPhone by obtaining injunctive relief against a Korean electronics company.

- Oy Ajat v. Vatech, a Korean medical device company

We successfully represented a Finnish medical device company Oy Ajat in patent infringement litigation, invalidation trial, post-grant amendment trial and appeal against the trial decisions, relating to a dental instrument. 

- Flowmaster Korea v. a Korean software company

Kasan successfully represented Flowmaster Korea, a subsidiary of American software company Flowmaster Inc., in a trade secret theft case relating to computational fluid dynamics simulation software, against a Korean software company.

- Saerom v. a Korean cable TV company

We successfully represented Saerom in design right infringement litigation and related criminal prosecution against a Korean cable TV company.

Partner, HOEMOK CHUNG

Partner, Attorney-at-Law, Patent Attorney

 

EDUCATION

2012 : Inha University, Law School, Juris Doctor

2007 : Korea National Open University, Law, BA

1995 : Seoul National University, Electronics Engineering, MS

1993 : Seoul National University, Electronics Engineering, BS

 

EMPLOYMENT HISTORY

2012 – Present : Kasan IP and Law Firm, Attorney-at-law

1999 – 2008 : GCT Semiconductors, Inc., Senior Research Engineer

1998 : IBM T. J. Watson Research Center, Research Intern

1995-1997 : Seoul National University, PhD Candidate

 

EXPERIENCE

1. Korean Bar Association Intellectual Property Training Institute, Member of Management Committee, 2015-2017

1. Seoul Center for Creative Economy and Innovation, Mentor, 2015-2017

1. Seoul Center for Creative Economy and Innovation, Auditor, 2017

1. The Council of Centers for Creative Economy and Innovation, Auditor, 2017

1. Complete education from The Patent Training Institute of Seoul Bar Association, 2012

 

PUBLICATION (In Korean)

1. Computer Systems and Theory, pp 1348-1358, vol. 25, no. 12, 1998.12

1. "A SPARC-based VLIW Testbed" Soo-Mook Moon, HoeMok Chung, Jinpyo Park, SangMin Shim, and Jae-Woo Ahn IEE Proceedings - Computers & Digital Techniques vol. 145, no. 3, May 1998

1. "Using Value Locality on VLIW machines through Dynamic Compilation" HoeMok Chung, Soo-Mook Moon, and Kemal Ebcioglu  Workshop on Binary Translation, Oct 1999

1. Adaptive design of linear phase wavelet filter bank for image data compression), HOEMOK CHUNG, Master’s Thesis, 1995

About KASAN IP & Law Firm

Since its establishment in 2000 by Korean and American licensed professionals having experience working at leading law firms and companies, Kasan IP & Law Firm has steadily grown into one of the leading intellectual property law firms in Korea. In 2017, the firm has 16 years business history and senior partners have over 22 years working experience as professionals.

 

We specialize in intellectual property matters, including patent, utility model, trademark, design, copyright, unfair competition dispute, and licensing of technology. The firm's professionals and staff of over 90 have knowledge and resources needed to offer quality legal services to our international clients with confidence and sensitivity for cultural, social and legal differences.

 

Quality Legal Services 

From the very beginning of Kasan, the standard of every aspect of our practice has been excellence and that touchstone remains intact today. For years, we have represented countless innovators, assisting in protecting ideas, promoting discoveries, and introducing new concepts to the market. We believe our relationships with our clients is based on the trust and confidence that develop over time through prompt, high-quality and consistently valuable service.

Full Range of Legal Services

Kasan provides a full range of legal services in diverse aspects of IP related matters that require in-depth specialization. The firm is not merely a gathering of professionals from various fields but it is an integrated working group of legal and technical specialists that are highly qualified and experienced in their respective fields.

Manpower

We are aware that our services are judged by the quality, ability and commitment of our members who deliver the service. We have over 90 members including 35 patent and trademark attorneys, 5 attorneys at law and 3 US attorneys, and have heavily invested in manpower that would enable us to deliver specialized services in various IP and legal sectors. Kasan provides clients with linguistic assistance through a Chinese patent attorney, a Japanese technical advisor, a Canadian technical advisor and an American technical advisor. And we strive to provide them with a great environment to show their best abilities.

Experience, Responsiveness, and Reasonable Cost

We are devoted to providing swift, accurate and pragmatic legal advice and action. And we understand and appreciate the ever changing business environment in which our clients finds themselves everyday. Our foremost priority is to enable our clients to come to the best decisions.

Our professionals have a great deal of experience in fields such as electronics, software, mechanical engineering, chemistry, pharmaceuticals and biotechnology. They are graduates of top universities in Korea, the U.S., Canada, China, and Japan. And they have many years of experience working for domestic and foreign clients.

Kasan has provided domestic and international clients with the most effective and proactive legal services at the most reasonable price in the country. We strive to provide cost-effective practices.

Practice Areas of KASAN

We specialize in intellectual property matters, including patent, utility model, trademark, design, copyright, unfair competition dispute, and licensing of technology. Further we have regularly assisted our clients on business law issues and represented our client in legal disputes regarding their business interest before courts, government agencies, arbitration board, police, etc.

Litigation, Enforcement, and Dispute Resolution 

Our firm represents clients on a regular basis in regard to warning letters, preliminary or permanent injunctions, damage compensation, and criminal action. Our patent litigation team consists of an attorney at law as litigator, patent attorneys and patent engineers with specific technological backgrounds. The attorneys at KASAN have a great deal of experience in IP disputes at the IP Tribunal of the Korean Intellectual Property Office (KIPO). KASAN has been dealing with numerous IP disputes, which makes them the right choice as a strategic mediator in this area. We provide search services of the prior art for patents, registered trademarks, designs, and we have expertise in analyzing the prior art and providing expert opinions on the availability of registration or the possibility of infringement.

IP Management Services 

Within KASAN, a separate IPMC (the Intellectual Property Management & Consulting Company) provides maintenance services for patents, trademarks and designs. We have helped our clients pay annuities, record changes and transfers, and others. And Kasan's licensing attorney had worked for many years in the largest corporation in Korea–Samsung–dealing with licensing matters. With the extensive knowledge and deep insight into Korean industry we offer, our clients are guaranteed to secure both suitable partnerships and a firm customer channel. We also provide Intellectual Property evaluation services, including due diligence, validity studies, liability checks and assessment of IP rights in Korea.

Unfair Competition, Trade Secrets, Copyrights, and Domain Name Disputes 

Our services extend to the areas of unfair competition prevention and trade secret protection. Under the Korea Unfair Competition Prevention and Trade Secret Protection Act, we advise clients on the best strategy to protect valuable information or new technologies that are not covered by patent system. Our practices cover the prevention of unfair competition by third parties. We also help clients in preparing and filing copyright registration applications and often represent clients in mediation procedure before the Korea Copyright Commission for Mediation and Conciliation or in litigation before courts. And we advise clients regarding domain name disputes, internet or e-commerce issues.

IP Prosecutions 

- Patents and Utility Models
We have years of experience in drafting patent specifications, translating foreign language specifications into Korean versions, preparing patent applications, filing and prosecuting patent applications before the Korean Intellectual Property Office. Covering all technological areas, our members are organized into three working groups: Electrical and Electronics team, Mechanical and Metallurgical team and Chemistry, Pharmaceutical and Biotechnological team. Each team consists of patent attorneys and patent engineers with technical backgrounds.

• Mechanical and Metallurgical group: mechanical devices, precision machinery, automobiles, metallurgy, and materials science
• Electrical and Electronics group: electrical, electronics, semiconductor, computer software, business methods, information technology, communications, and displays
• Chemical and Biotechnological group: chemicals, pharmaceuticals, biochemistry, biotechnology, textiles, and polymers

- Trademarks and Designs
We understand the essential role of trademarks in today's business world. Our experienced trademark attorneys and staff offer the most cost effective and practical approaches to resolving the trademark-related problems our clients face. We provide a trademark search service based on the largest databases in Korea and expert opinions on the availability of the trademark in the Korean market, and on the registration of the subject trademark. We have a wealth of experience in preparing, filing, prosecuting trademark and design applications before the Korean Intellectual Property Office. We also have extensive experience in the areas of oppositions, invalidation trials and cancellation trials.