Skip Navigation
Menu

International IP Prosecution “Kim & Chang sits “in a league of its own” – the only firm in South Korea that merits a gold ranking in both litigation and prosecution.”
– IAM Patent 1000

Overview

Our International Intellectual Property (IP) Prosecution Practice consists of experts who have years of experience in handling overseas IP applications.  In particular, our team includes foreign lawyers and foreign patent attorneys from the United States, China, Japan, Germany, Europe, and Australia who have worked at foreign law firms and companies and are deeply familiar with the IP practices and culture of various countries.  Our Practice provides a one-stop service to help clients expand their global IP portfolios and respond to global IP disputes.  We assist our clients with procuring overseas IP rights and provide strategic advice and practical solutions for managing our clients’ high-quality global IP portfolios.

Key ServicesView All

Building a global IP portfolio to help clients to expand overseas

 

Our service is not limited to acquiring individual overseas IP rights.  We are a partner for our clients’ overseas business, and strive to build global IP portfolios that fits a variety of business needs of our clients.  In this endeavor, we also monitor competitors' products and identify IP landscapes through various invalidation and infringement analyses to guide clients’ global IP portfolios in the right direction.  In addition, we actively propose using continuation applications to build clients’ portfolios in consideration of their business characteristics and changes in the market trends and providing advices on effective countermeasures against infringement.

 

Accurate and clear overseas IP advice

 

Our Practice provides in-depth consulting services on overseas IP rights in collaboration with experts and overseas agents.  We help clients make decisions on their overseas IP issues encountered while conducting business overseas by providing clear interpretation of relevant laws and insightful advice based on the accumulated wealth of knowledge from experiences with overseas IP practices.

 

An expansive and close network of overseas agents

 

Through our long standing experiences with overseas IP prosecution, we maintain a large and close network with our overseas agents.  Based on these relationships, we can collaborate with overseas agents according to each client’s needs.  In addition, our foreign lawyers and foreign patent attorneys in our team ensure seamless communication and collaboration with foreign agents in their native languages.

 

Preparation of overseas IP applications tailored to the respective country's practice

 

In order to secure high-quality overseas IP rights, we prepare IP applications for overseas filing by considering IP laws and practices of applicable countries.  Furthermore, members of our Practice routinely conduct invention disclosure meetings with foreign inventors who may not be fluent in Korean, and prepare IP applications based on foreign languages (English, German, etc.) of clients’ choice.  We also review IP applications translated from foreign language to Korean or vice versa with the applicable foreign IP practice in mind.

 

For trademark matters, we provide clients with a comprehensive plan by considering the target filing countries, their trademark practice, different filing routes or methods, acceptability of goods description, distinctiveness issue, etc. as well as the clients’ business characteristics and goals.

 

Systematic approach to multinational examination process

 

While serving as a global hub for clients who seek to obtain overseas IP rights, we take a systematic approach in handling different examination practices in various countries.  While improving efficiency by considering a uniform strategy in responding to each country's examination practice, we also take into account counsel from local agents in advising our clients on responses to office actions.

Key ExperiencesView All

Cases for building Global IP Portfolio
  • Drafting patent applications in English for overseas filing and assisting with building a global patent portfolio for a research and development (R&D) center of a U.S. semiconductor manufacturer located in Korea and a research institute of a French telecommunication company located in Korea
  • Supporting a Korean metal smelting company in applying for patents globally (20 countries)
  • Assisting a Korean subsidiary of a Japanese mobile platform company in building a patent portfolio through patent application drafting and invention mining sessions
  • Supporting filing of patent applications for a Korean subsidiary of a Japanese metal processing company
  • Preparing patent applications for overseas filing for a Japanese fishing equipment company
  • Assisting with building global portfolios including overseas trademark applications and in trademark dispute proceedings for a Korean cosmetics company and a Korean automobile and parts company
  • Assisting with global portfolios including overseas trademark applications for a Korean e-commerce company, a Korean web hosting service company, a Korean convenience store service company, and a Japanese cosmetics and medical supplies company
  • Assisting with building a global portfolio including overseas trademark applications and dealing with overseas trademark infringement matters as well as Customs seizure cases for a Korean IP contents company
  • Advising a Korean food company on IP rights protection and building a global portfolio including overseas trademark applications

Professionals

Key Contacts

Search Professionals

EXPERTISE RESET SEARCH

EXPERTISE

Close

EXPERTISE

Close

Share

Close