Patent Attorney

Seoul National University, Seoul, Korea B.S., Pharmacy 1999
Queen Mary, University of London, London, UK MSc, Management of Intellectual Property 2006
University of California Berkeley, USA Law School, Visiting Scholar 2015

Handling licensing of pharmaceutical products such as diabetes, liver cancer and irritable bowel syndrome medicines

<2015-present CHOI & Partners Chief Managing Partner>

Handling patent actions such as invalidation actions, scope confirmation actions and infringement actions, especially for major pharmaceutical products such as Aloxi (palonosetron), Invega (paliperidone), Pradaxa (dabigatran), Cialis (tadalafil) and Pirespa (pirfenidone)
Preparing and prosecuting patent applications for pharmaceuticals, biologicals, medical devices, microbiomes, stem cells, cosmetics and chemicals
Providing expert opinions for IP strategies, technology transfer and clinical trial contracts
Reviewing contracts for pre-clinical trials, clinical trials and licensing
Handling licensing of pharmaceutical products such as diabetes, liver cancer and irritable bowel syndrome products

<2002-2003 KOREANA Patent Firm Patent Attorney>

Preparing and prosecuting patent applications for pharmaceuticals, cosmetics and chemicals
Analyzing patent validity and preparing expert opinions
Involving in litigations and preparing brief

<2006-2015 Kim & Chang Patent Attorney>

Handling patent actions, especially for major products of multinational pharmaceutical companies such as Plavix (Sanofi and BMS), Diovan (Novartis), Olmetec (Daiichi Sankyo), Micardis (boehringer ingelheim) and Avandia (GSK)
Handling compulsory licensing case for Fuzeon (Pfizer)
Providing strategic counseling for preventing generic entry on behalf of multinational pharmaceutical companies
Developing drug life cycle management in all aspects including patent portfolio, data exclusivity, and Korean drug insurance pricing system for the major drugs
Dealing with both the patent and regulatory issues for pharmaceutical products
Preparing and prosecuting patent applications for pharmaceuticals, biologicals, medical devices, and chemicals
Evaluating patents and reviewing license agreements
Reviewing IP status for M&A and technology transfer
Leading and handling patent listing under the patent linkage system as a lead member in the firm
Providing expert opinions and preparing responses to antitrust investigations of potential IP rights abuse
Providing educational presentation on the patent system, patent linkage system and Korean drug insurance pricing reduction system for the Korean branch of multinational pharmaceutical companies

Preparation and registration of patent applications
Domestic/PCT applications for inventions such as compounds, medicinal usage/dosae patens, pharmaceutical compositions/formulations, natural products, strains, genetic engineering techniques, medical devices, location tracking devices.
FTO analysis and non-infringement strategy
FTO analysis of original drug patents, review of patents in US Orange book, analysis of foreign lawsuits and FTO analysis of exhaust gas reduction device, establishment of avoidance strategy of blockbuster drug patents.
Patent validity review
Validity evaluation of substance patents, composition patents, formulation patents and dosage patents of drugs.
Trial & litigation
Trials and litigations to original drug patents including Pradaxa, Invega, Pirespa and Aloxi.
Patent Law/Case Study
Research and analysis of international patent cases of drugs (KFDA, 2017), Domestic/international law and case study about Patent Term Extension (KIPO, 2017)
Government project

Patent strategy consulting (KFDA, 2017/2018), Governmental R&D Patent strategy support program (KISTA, 2018)
Trademark, design, and copyright related work
Application and registration of trademark, design, and copyright related works

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