Joo Mee Kim
Ms. Kim has been practicing across the full spectrum of intellectual property law for over 20 years. Ms. Kim’s practice focusses on litigating patent cases and counseling clients for obtaining, licensing and enforcing patents in various technology areas including pharmaceutical, biotechnology, chemical, electronics and mechanical areas.
Ms. Kim has a broad range of experience in patent matters both in the United States and Korea. Ms. Kim has extensive experience in patent litigation including Hatch-Waxman litigation and patent troll litigation, both in district courts and the Court of Appeals for the Federal Circuit. Ms. Kim litigated on behalf of LG Electroncis, Mylan Pharmaceuticals, Rexall, Inc., Nature’s Bounty and LG Electronics. Ms. Kim has also handled a number of alternative dispute resolution cases including arbitration cases before the American Arbitration Association (AAA).
Ms. Kim has considerable expertise and experience in handling the post-grant proceedings created by the America Invents Act especially in IPR proceeding representing both petitioners and patent owner.
Ms. Kim's practice also includes counseling clients for maximizing licensing revenue from patented and patentable technologies. She also counsels various clients in pharmaceutical, biotechnology, chemical, biomedical and electronic areas for strategic exploitation of their patents and for development of effective defenses against infringement allegations. Ms. Kim has represented clients in a broad range of due diligence associated with merger and acquisition and has provided written opinions to evaluate freedom-to-operate, invalidity and/or infringement issues in the technical field of pharmaceuticals, genetic engineering, molecular biology, monoclonal antibodies, cancer treatments, and protein production in plants.
Ms. Kim is a past President of Korean American Intellectual Property Bar Association (“KAIPBA”) and served as a US preparation committee for the US-Korea Judicial Conference hosted by the Federal Circuit and the Korean Patent Court in 2013. Ms. Kim has been selected as a Washington DC Super Lawyer in the field of Intellectual Property Litigation and in the field of Intellectual Property (2014-2016). She is a frequent guest speaker and lecturer on the U.S. practice including U.S. litigation practice and post-grant proceedings in seminars hosted by the Korean Intellectual Property Office and various Associations
Before practicing in the U.S., as a senior Korean patent attorney at a general law firm in Korea for more than seven years, Ms. Kim worked extensively on patent infringement litigation cases brought by major U.S., Japan and European pharmaceutical, chemical and biotech companies including Astra Zeneca, Nissan Chemical and Merck. Ms. Kim also prosecuted various patent applications for U.S., Japan and European companies.
Areas of Concentration
- Developing Pre-Litigation Strategy
- Opinion of Counsel: Patentability, Freedom-to-Operate, Infringement, Invalidity
- Licensing and Transactions
- Federal District Court
- Hatch-Waxman Litigation
- Patent Prosecution
- Biology and Biotechnology
- Medical Devices
Publications & Presentations
"Patent Law Perspective on the Report of the Federal Trade Commission on Balancing Competition and Patent Law and Policy" written by E. Anthony Figg, C. Nichole Gifford and Joo Mee Kim, presented to the ABA Section of Antitrust Law, May 2004.
"How the 2003 Hatch-Waxman Reform Has Changed NDA/Generic Practice in the U.S,” presented at the Symposium sponsored by Darae Law & Patent Firm, November 9, 2005.
"The Norvasc CAFC Decision and Thereafter,” presented at the Symposium sponsored by Daily Pharm, June 21, 2007, Korea.
"Obviousness after KSR," presented at the Symposium sponsored by Daily Pharm, June 21, 2007, Seoul, Korea.
“U.S. Generic Market,” -- taught in the program entitled “Strategies for Exporting Pharmaceutical Products to the U.S. Market,” sponsored by Korea Health Industry Development Institute and Pharmaceutical Industries, October 12, 2007.
Professional Affiliations, Honors & Recognition
Third President of the Korean-American Intellectual Property Lawyers Association ("KAIPLA")
Washington DC Super Lawyer in the field of Intellectual Property Litigation and in the field of Intellectual Property (2014-2016)