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TaeSoo Sean Kim



Sean Kim is an associate in the Intellectual Property Counseling & Transactions group. His practice includes intellectual property counseling and commercial transactions, with a focus on technology and health care clients. He also serves as outside general counsel to more than 20 emerging growth companies. Prior to entering private practice, Sean was a patent agent at a multi-national technology corporation where he focused on IP procurement and commercialization.

What do you focus on?

I focus my practice on all aspects of intellectual property counseling and transactions, including managing patent and trademark portfolios and drafting and negotiating a variety of licensing and technology agreements.

Intellectual Property Protection and Counseling

I work closely with innovators from the health care, medical devices, digital health, technology and blockchain industries to strategically develop and commercialize patent portfolios. In particular, I counsel my clients on the IP aspects of their business strategies, which involves conducting freedom-to-operate analysis when launching new products to developing IP portfolios focused on commercial exploitation.

I also provide strategic advice on the enforcement and defense of intellectual property, and have experience in patent and trademark litigations in federal courts and proceedings at the United States Patent and Trademark Office. This experience also includes successfully settling disputes before they proceed to trial.

Intellectual Property and Technology Transactions

I represent academic institutions, Fortune 500 companies and emerging growth companies in technology and IP license agreements, sponsored research agreements, software license and services agreements, end-user license agreements and supply and distribution agreements. I also regularly assist with IP due diligence in M&A and other commercial transactions where IP is a key asset.

Additionally, I advise a number of leading Asia-based biotech startups and pharmaceutical companies on cross-border transactions, including in-licensing and out-licensing transactions with U.S. and Europe-based biotech companies.

Emerging Growth Companies

I am currently serving as the outside general counsel to more than 20 emerging growth companies from the technology, health care and entertainment industries. In this role, I advise these clients on issues that range from business formation to privacy policies and terms of use as well as intellectual property to commercial transactions, including capital raising and cross-border transactions.

I also help to organize startup events in New York and Los Angeles and serve on the board of Korean Startups and Entrepreneurs, a New York-based nonprofit with more than 1,000 members. I have also served as a startup mentor in the Los Angeles Cleantech Incubator and NASA Space Apps Challenge.

What do you see on the horizon?

I believe that the next group of startup “unicorns” will be coming out of Asia, particularly from countries like South Korea where the government is investing significant capital into fostering a startup ecosystem.

Presentations

  • “Legal Considerations for Fashion Startups,” GRID 110, December 2016 (Speaker)
  • “Global Patent Litigation Strategies,” International Association of Korean Lawyers (IAKL) Conference, October 2016 (Moderator)
  • “Startup Law 101: Incorporation, Fundraising, and IP Strategy for Startups,” Korean Startup Summit NYC, June 2016 (Co-presenter)
  • “U.S. Venture Capital and Legal Considerations for Startups,” Samsung Startup Incubator, December 2015 (Speaker)
  • “Technology Commercialization for Universities,” U.S. Technology Roadshow, November 2015 (Speaker)
  • “Advancing Your Copyright Career,” the Copyright Society of the USA, October 2015 (Moderator)
  • “Technology Advancements in Music Industry and its impact on Intellectual Property rights,” WIPO World IP Day, Benjamin N. Cardozo School of Law, April 2015 (Moderator)
  • “Business Organization and Intellectual Property Strategy for Startups,” Korean Startup Showcase NYC, April 2015 (Speaker)
  • “Corporate and Intellectual Property Law,” Harvard Law School, November 2014 (Panelist)
  • “Intellectual Property in M&A and Venture Capital,” Global K-Startup Business Program, November 2014 (Speaker)
  • “International Career Advice and Experience,” International Association of Korean Lawyers (IAKL) Conference, October 2014 (Moderator)
  • “Intellectual Property Strategy for Startups,” Korean Startups and Entrepreneurs (KSE), July 2014 (Co-presenter)
  • “The America Invents Act and Its Impact on Patent Litigation and Prosecution,” Benjamin N. Cardozo School of Law, April 2014 (Moderator)
  • “Intellectual Property in Films,” WIPO World IP Day, Benjamin N. Cardozo School of Law, April 2014 (Moderator)
  • “Understanding Intellectual Property Rights,” 2013 CMP Business Outreach Center, November 2013 (Speaker)
  • “Traditional Intellectual Property Protection in the U.S.,” 2013 Korea Trade-Investment Promotion Agency (KOTRA) Intellectual Property & Business Strategy Forum, June 2013 (Moderator)
  • “Intellectual Property as a Business Asset and Strategy,” Benjamin N. Cardozo School of Law, March 2013 (Moderator)
  • “Korea-U.S. FTA and Its Impact on Intellectual Property,” New York City Bar Association, February 2013 (Moderator)

Nixon Peabody works out legal issues for Haitian nonprofit

Los Angeles/San Francisco Daily Journal | December 27, 2016

This article is about Nixon Peabody’s pro bono work with nonprofit Team Tassy, which helps families in Haiti. Los Angeles public finance associate Jade Turner-Bond and IP counseling and transactions associate Sean Kim are quoted.

Contact

TaeSoo Sean Kim

Associate

Los Angeles

Phone: 213-629-6132

New York

Phone: 212-940-3129


Fax: 213-629-6001

Benjamin N. Cardozo School of Law, J.D.

Columbia University, M.P.H., Health Policy

Stony Brook University, B.S., Chemistry, Departmental Honors

California

New York

U.S. Patent and Trademark Office

U.S. District Court, Eastern District of New York

U.S. District Court, Southern District of New York

Korean

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