What are the main challenges you face in leading your firm’s IP practice?
Law firms encounter many challenges, but Lee & Ko’s biggest challenge is its ability to continue to grow while facing heightened competition for high-quality work. Clients are increasingly demanding more from outside counsel for less and, as a law firm, we must evolve and adapt to meet this demand while continuing to deliver a high standard of legal service. We are striving to increase efficiency and make ‘more for less’ a true possibility by, among other things:
- recognising market trends;
- embracing technological advances and tools to improve client service; and
- attracting the finest talent.
You have litigation experience in matters including patents, copyright, trademarks and franchising. What tips can you share about how to remain at the forefront of industry developments when you have a broad IP-related practice?
Our firm’s IP practice is comprised of IP lawyers who not only have significant industry experience, but also keep abreast of the latest industry developments. By creating an environment where IP lawyers have the opportunity to excel in their practice, our firm’s IP practice can benefit from the shared pool of industry knowledge and insight, skill sets and experience. This ensures that we remain at the forefront of industry development. Further, this unique capability enables our firm’s IP practice to provide clients with solutions that are practical and grounded in commercial realities.
What is the key skill set that IP lawyers should possess and how can this be honed?
IP lawyers must acquire and develop a skill set that is unique to the practise of IP law. Fundamentally, an IP lawyer must have excellent communications skills, both written and oral. In addition, and especially for those practising patent law, IP lawyers should be comfortable with technical information. Many of our firm’s IP lawyers have a technical background, and this foundational understanding of a range of technologies is essential to crafting arguments that are framed by both legal and technical merits. In many ways, it is important to recognise that IP law is highly specialised; thus, detailed knowledge and experience handling IP matters is critical to an IP lawyer’s success.
How would you describe the current patent environment in Korea?
The patent environment in Korea is evolving to become more friendly towards patent owners. This evolution can be clearly seen in the series of recent Patent Act amendments. Specifically, Korea does not have an expansive US-style discovery, so patent owners seeking to enforce their patents have traditionally encountered obstacles in gathering the requisite evidence on infringement and damages. To reduce this evidence-gathering burden, the Patent Act was amended to prohibit infringers from refusing to submit materials (not limited to documents) if the patent owner can show that such materials are essential to proving infringement or damages. Further, infringers must now disclose information about the accused product or process if the patent owner has reasonably established that the infringer is infringing the patent-in-suit. Patent owners can also now claim treble damages against willful infringers.
If you were to make one prediction about the future for patent owners in Korea, what would it be?
Through concerted research and development efforts, many Korean companies are rapidly positioning themselves to become key players in the impending fourth industrial revolution. For example, clean energy is poised to become an integral component in making the fourth industrial revolution possible and, to protect these important and foundational technologies, Korean companies are likely to aggressively seek global enforcement of their patents – in fact, we are already seeing such global enforcement initiatives. Our firm’s IP practice is acting as the lead counsel for our Korean clients in their global enforcement initiatives in the United States, Germany, Japan, the European Union and Australia. As their global footprint expands, patent owners in Korea will become increasingly proactive in formulating and pursuing global IP enforcement strategies. Further, as Korea is taking on a leading role in the high-tech ICT, automobile and battery industries, as well as the fourth industrial revolution, it will become an optimal jurisdiction for patent owners to seek patent protection.
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