Service Fields

Drafting

We take great pride in the quality of our drafting work.   We appreciate that it is vital to consult with the inventor or someone with complete knowledge of the invention when drafting new patent applications.  This can be done by telephone or electronic means, But where necessary or desired, we are happy to travel to deal directly with you.   We have a practice of peer review of drafting work. This does not incur any additional costs and helps ensure the best possible outcome for clients.

 

Filing

We have a team of experienced paralegals who arrange filing of all IP applications in Korea and around the world, under the supervision of qualified Patent Attorneys.

 

Prosecution

IPMAX Patent Law Group has been recognised as one of Korean rapidly growing firms in patent and trade mark prosecution by Managing Intellectual Property since 2010.

“Prosecution” is the term commonly used to describe the process of responding to examination reports.  We assign the most appropriate professional to conduct the prosecution, based on technical capability and cost effectiveness for the client.

 

Strategic advice

A fundamental role of our patent attorneys is to work with you to identify and advise on the patentability of new ideas. Our patent attorneys are also experienced in responding to adverse examination reports and mounting arguments to retain the broadest possible patent protection.

Our legal team can advise you on commercialisation of your IP such as licencing and other IP agreements.  As experienced litigators and patent attorneys, they can work with you on patent infringement matters and have considerable experience providing infringement advice and opinions, preparing and responding to letters alleging IP infringement, negotiating and concluding settlements, and representing clients in the mediation of intellectual property disputes.

 

Searching

Our research team includes professionals qualified and experienced in electronics, material science, mechanical engineering, chemistry, biochemistry, genetics, information technology, law, trade marks, domain names and company information.   The team includes patent attorneys, a lawyer, a trade mark attorney and a registered private investigator.
For more information on our searching services, please click here.
 

Portfolio management

We can provide IP portfolio management services by appointing an IP Manager to work with you to oversee ongoing IP matters.

As an adjunct to the IP management service, or as a stand-alone service, your portfolio can be recorded on a secure web page, allowing you to access it anytime, anywhere.   This service is named as Smart cord(TM).

 

Legal representation

We have intellectual property litigation experience conducted before the Korean District Courts, High Courts and Spreme Court. We also act in contested matters concerning registration of intellectual property rights decided by Korean Intellectual Property Office.   Our co-work system of our patent attorneys and general attorney gives us unique insights into the process.

 

Renewals

We have a sophisticated proprietary intellectual property database to monitor progress of an application through to grant, and maintain properties after grant, providing early notice of renewal dates.   We have a specialised team of paralegals who monitor and renew applications, send you reminders and process payments.

To find out more about protecting your inventions or innovations, please contact Kwonseok KIM at kwon.kim@ipmaxlaw.com

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We have a dedicated, and sizeable trademarks group experienced in providing the following services:

>  Watching, searching and advising on the registrability of trademarks

>  Preparation and direct lodgement of applications in Korea

>  Applications for International Registrations under the Madrid Protocol

>  Lodgement through trusted associate firms in other countries, including China, Japan, and India

>  Responding to examiners’ objections

>  Advising on validity and infringement, and conducting and defending opposition proceedings

>  Advising on, preparing and lodging assignments and licence agreements

>  Keeping clients informed of Korean and international trademarks law developments

>  Managing IP portfolios

For more generic information on TradeMarks, please visit About IP.

Searching and watches

Our IP research team conducts trademark searches directly in Korea, Chaina and Japan. These include comprehensive registrability and infringement searches (including for common law marks) and can include a detailed review and opinion provided by an experienced attorney.

Our Team utilizes the services of foreign search firms or a global IP search specialist to arrange searches in other countries. This ensures each search is conducted by an agent with an understanding of local laws and practices in the relevant country. The resulting search reports are reviewed by an experienced patent and trademark attorney and advice sought from foreign associates where potential conflict exists, to enable us to provide a comprehensive and detailed opinion.

Typically, Korean searches would be conducted and reported by phone or email within 48 hours. Urgent searches can be undertaken and reported faster, even same-day, where necessary.

Our team conducts regular watches for a number of clients. Our watch reports are provided in electronic form as either a Word or PDF document. Depending on the nature of the watch, our reports may also be provided on a secure password protected website that allows the client direct access. As part of our Portfolio Management Service we offer general watching services for accepted Korean marks which may conflict client’s marks.

For more information on our searching services, please click here.

Korean IP law advice and filings

We act for some of Korea’s largest companies, as well as large foreign multi-nationals. We conduct the full range of trademark work, from straight-forward filings, to the most complex opinion, opposition and litigation work. We work with our clients in a variety of different styles depending on their own internal structure and the complexity of the issues. Urgent matters are treated urgently! We can file an application for a trademark in Korea on the day of receipt of instructions. We take the management of conflicts of interest seriously. A review of all professional staff is conducted before new work is accepted to make sure we do not have any conflict. When conflicts arise, we work to protect the interests of our clients.

We do not charge for brief, ad hoc or incidental telephone advice. We don’t want you to avoid phoning us for fear of being billed for minor matters. We generally have no difficulty in distinguishing between this type of ad hoc advice from more substantial advice where a fair charge is appropriate.

Foreign advice and filings

Foreign applications are filed through experienced and reputable associate firms in relevant countries. We have developed excellent working relationships with firms in all countries. These firms handle prosecution, registration and subsequent renewal of a client’s trade marks in their country under our direct supervision and with our reputation at stake.

Prosecution

Our trade marks professionals are experienced at dealing with adverse examination reports and presenting reasoned arguments to examiners in a timely and cost effective manner. Our strategy for dealing with such objections often commences well before filing new applications, even at the preliminary search stage. In this way, potential problems can be avoided from the start, or we can position ourselves better to deal with likely objections.

Opposition/ Non-Use

We work with clients who seek to oppose the registration of trade marks to others, or whose own applications have been opposed by third parties. Similarly we initiate and defend non-use removal actions, a well as providing reminders in relation to non-use vulnerability of registered marks.

Many of our professionals are experienced in preparing argument and appearing before the Korearn Intellectural Property Office.

Business Names registration and advice

We assist our clients to register and maintain business names and manage overlap issues with trademarks. 

Renewals

All properties (trade marks and business names) are entered into our proprietary computer database (POFDocs), that generates reminders well in advance of due dates.

We work with clients to consider which, if any, marks may not require renewal and seek to handle renewals well in advance of deadlines. Many of our clients prefer to receive batchwise renewal reminders, for example for all marks due for renewal over a 3 or 6 month period. For some clients we conduct periodic meetings at their offices to go over the forthcoming renewals, and with them decide the value of maintaining particular properties.

To find out more about registering your Trademarks, please contact Hyunkyung CHAI at hkchai@ipmaxlaw.com.

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Registration Advice

Our experienced designs team can help you identify the registrability of your design and advise you on any components of your design which may also be registrable.
 

Searches

Our associated IP research company, IP Organisers conducts design searches directly in Australia and New Zealand. These include comprehensive registrability and infringement searches and can include a detailed review and opinion provided by an experienced attorney.

 

Filing

We have a team of experienced paralegals who arrange filing of all new design applications in Korea and around the world, under the supervision of our Design's Partner. We have a dedicated, experienced in-house draftsman who prepares all drawings for filing within the requirements of IP in Korea and other offices around the world.

 

Prosecution

Our attorneys and paralegals are experienced at dealing with adverse examination reports and presenting reasoned arguments to examiners in a timely and cost effective manner. 

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Our IP legal services include:

• Enforcement of IP rights including patent, trade mark, copyright, registered designs, plant breeders’ rights, confidential information, domain names through:
  
  • Litigation
  • Dispute resolution
  • Advice

• Anti-counterfeiting programs

• Copyright

• Administrative Action

• Intellectual Property Agreements and Audits

• Advice on and drafting of IP-related agreements including licences and assignments

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Our information service includes:
Patent Searches
Trade Mark and Design Searches
Domain Names
Investigations
Intellectual Property Management
Intellectual Property Audits

“Information is power.” You may want to know if your idea is new. You may want to know if your IP rights are being infringed. You may simply want to keep an eye on the activities of a competitor.
This requires extensive searches to be conducted of various databases and registers in Korea and overseas and is best conducted by a firm who has access to these types of national and international networks.

Our services are extremely flexible. We undertake research on any intellectual property of interest, or maintain a periodic watch at a frequency determined by the client.

Reports are generally provided by email, although documentation may be provided by post or courier. We can also report via secure websites maintained by us.

Our professionals include qualified patent and trade mark attorneys, lawyers, experienced researchers, investigators and intellectual property managers. Our research is on target, efficient and relevant, because we understands fully the need of the clients.

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Technical IP Management System

In order to effectively implement a system for the control and management of technical IP (Patents, Designs and confidential information), a number of activities could be adopted. These activities include:

> an audit of existing technical IP

> implementation of an IP education program

> development of IP policies and procedures

> merging of IP capture toll gates to existing product development processes

> establishment of an IP register, appointment of an IP manager

> development of an IP capture, protection and enforcement budget.

As an adjunct to the IP management service, or as a stand-alone service, your portfolio can be recorded on a secure web page, allowing you to access it anytime, anywhere.

Audit

We can conduct a detailed analysis of your IP and based on this research, can prepare an audit report that includes an inventory of your existing intellectual property assets, a plan of action for correcting deficiencies and reducing the risk of infringement, and recommendations on implementation and training for key personnel.

We have experience in auditing IP for a wide range of organizations. As part of the auditing process, we have in the past conducted the following analyses:

>   Reviewed contracts with employees, consultants, vendors and customers to determine whether such contracts adequately protect and perfect the company’s intellectual property rights, including non-compete agreements, technology licensing agreements, and other third-party contracts.

>   Interviewed key managers and technical personal to identify existing intellectual property held by the company, including know-how, trade secrets, copyright, patentable subject matter, designs, and trade marks.

>   Identified any potentially prejudicial disclosures made by the company relevant to the intellectual property and assessed the impact of such disclosures on existing or future intellectual property.

>   Interviewed key managers and technical staff to identify possible areas for future development of the company’s intellectual property.

>   Researched and analysed the organisation’s activities to identify areas of possible risk for infringement of third party rights.

>   Interviewed appropriate staff and assessed company policies and procedures regarding identifying, tracking and safeguarding the company’s intellectual property.

>   Researched and analysed the organisation’s need to identify intellectual property rights of other parties. This includes a review of any licence agreements in place.

>   Interviewed key managers and technical personnel to measure awareness of intellectual property issues by relevant staff and compliance with organizational policies.

>   Researched and analysed the company’s trademarks, trade dress, and service marks to determine whether it has established adequate protection, and if applicable, whether it has preserved the trademark rights of others as part of any joint ventures and co-branding arrangements.

Education

In order to raise the awareness of research team leaders and their staff, we can run a number of seminars or workshops tailored to your organisation’s specific needs. The aim of these sessions will be to create an awareness of technical intellectual property and to enable the identification of protectable technical IP by management and research staff. Seminars can be 1 or 2 hours long, while workshops can extend to half or full days and can be highly interactive.

Policies and procedures

Policies and procedures can be developed so that the identification, capture and protection of relevant technical IP is handled correctly to maximise protection. For example, invention disclosure forms can be designed and procedures established to define to whom the information disclosure form should be sent, who is authorised to make decisions about the protection of that intellectual property, whether the inventors are entitled to remuneration and the like.

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