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IP Counseling, Portfolio Management & Strategy "It gave us a shrewd response to an issue, a careful analysis and a solution."
– Asialaw Profiles

Overview

Strategic intellectual property counseling is a valuable service that we offer to our clients to help them protect their ideas and inventions.

We strive to maximize the value of our clients’ IP, understand their unique business needs, and provide creative and specially tailored solutions to meet their needs as a “one-stop” shop.

The IP Counseling, Portfolio Management & Strategy Practice is comprised of a team of industry experts who served in various industry and technology sectors, together with attorneys, patent attorneys, tax attorneys and economists who are capable of providing in-depth knowledge and experience to our clients.

As Intellectual Property is our largest practice group within the firm, we are uniquely positioned to address patent validity, enforceability, patentability, design-around issues, export controls, licensing and other IP transactions from broad legal viewpoints. We provide counseling services to address a variety of strategic matters, including intellectual property portfolio development, asset management strategies, audits, monetization and valuation. Further, many of our patent professionals have spent time working in large corporations so they are capable of providing first-hand insight specifically tailored for in-house IP managers.

Key ServicesView All

IP Management Consulting
  • IP strategies and infrastructure support
  • Patent portfolio management
  • IP landscaping and mapping for focused R&D counseling

 

IP Data Analysis & Search
  • Big data analysis of technology trends and competitors’ activities
  • Validity analysis and prior art search 
  • Freedom to operate search

 

IP Valuation
  • Asset Valuation and monetization
  • Royalty assessment

 

Employee Invention
  • Advice on Regulatory compliance
  • Strategies to secure ownership in work-for-hire inventions

 

Tailored IP Training
  • Global IP defense strategies (US/China/EU - IP discovery and litigation strategies)
  • IP professional training (patent search & analysis, IP portfolio management, IP contracts, etc.)
  • Leveraging IP strategies to support successful businesses

 

List of Technical Specializations and Industries Served
  • Automotive, Aerospace & Transportation
  • Consumer Products
  • Materials & Metallurgy
  • Mechanical Engineering
  • Biotechnology & Life Sciences 
  • Chemicals & Agrochemicals
  • Pharmaceuticals
  • Electrical & Semiconductors
  • Software, Computers & Business Methods
  • Gaming & Entertainment
  • Telecommunications & ICT
  • Energy & Renewables
  • Healthcare & Medical devices
  • Foods & Cosmetics

Key ExperiencesView All

Design and Setup of an IP Management and Counseling System
  • Counseled companies in IP portfolio management systems and strategies to prepare for potential global IP litigation defense and/or enforcement projects 
  • Counseled medium sized companies on internal IP work processes and evaluation systems
  • Counseled large companies in setting up an IP management organization

 

IP Data Analysis & Search
  • Successfully defended Company A in a German Patent infringement lawsuit by invalidating asserted patent with prior art patent uncovered by a prior art search
  • Successfully settled a U.S. Patent infringement lawsuit on behalf of Company C by submitting a prior art reference found in our invalidity search
  • Advised chemical company C in setting up technology roadmap based on our search and analysis of technologies and patents held by competitors.

 

IP Transaction/Licensing
  • Provided IP acquisition strategy for business competitiveness
  • Counseled large Korean companies in international licensing
  • Counseled startup Korean companies in licensing negotiation with foreign licensees or licensors.
  • Counseled small-sized Korean companies in patent sale negotiations with foreign purchasers.

 

Technology-Oriented M&A Consulting
  • Conducted a search for candidate M&A target companies which can provide synergy to our client’s business and counsel our client in data analysis and on-site interview to assess technical competitiveness and associated technical and legal risks.

 

Tailored IP Training
  • Design and provide lectures to executives and senior management of conglomerates
  • Design and provide training sessions on best practices to IP management personnel of large companies

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