KIPO’s Policy for Supporting the Use of Intellectual Property Assets
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KIPO’s Policy for Supporting the Use of Intellectual Property Assets - Focus on Government-owned Inventions -. September 13, 2007 Dr. Taemin EOM Korean Intellectual Property Office (KIPO). Contents. Current Status of Government-owned Inventions in Korea. Ⅰ.

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September 13 2007 dr taemin eom korean intellectual property office kipo

KIPO’s Policy for Supporting the Use of Intellectual Property Assets

- Focus on Government-owned Inventions -

September 13, 2007

Dr. Taemin EOM

Korean Intellectual Property Office (KIPO)


September 13 2007 dr taemin eom korean intellectual property office kipo

Contents

Current Status of Government-owned Inventions in Korea

Application and Registration Process

Utilization of Government-owned Inventions

Services for Boosting Commercialization

Further Plans

V


September 13 2007 dr taemin eom korean intellectual property office kipo

1-1. Definition

I. Current Status of Government-owned

Inventions (GOIs) in Korea

Where a public official applies to register an employee invention under the name of the State or a local government, the right belongs to the State or the local government.

  • Invention of a public official

    ※ A public official is any government employee who falls within the definition of

    Article 2 of the Public Officials Act.

    (Under the article 9(1) of the Technology Transfer Promotion Actteachers and staff

    of a State or public school must file an application under the name of the

    technology licensing organization of the school)

  • The activity that led to the invention falls within the scope of the employee’spresent or past duties.


September 13 2007 dr taemin eom korean intellectual property office kipo

1-2. Legal grounds for GOIs

  • Legal grounds

  • Invention Promotion Act, Articles 10 and 15

  • Regulation on the disposal, management and remuneration of a GOI

  • Patent Act, Article 83(1)

  • Invention Promotion Act, Article 10(4)

  • Notwithstanding Article6 of the National Property Act, the disposal and management of an invention that has reverted to the State under paragraph(2) is governed by the Commissioner of the Korean Intellectual Property Office.

※ National Property Act, Article 6

The Minister of Finance and Economy presides over the management of the

national property that is governed by each ministry to which the property pertains.


September 13 2007 dr taemin eom korean intellectual property office kipo

Exemption of fees

  • Application fees

  • Examination request fees

  • Registration fees

  • Other official fees

※ Patent Act, Article 83(1)

The Commissioner of KIPO shall grant an exemption from the payment of patent

fees or official fees in the following cases: (i) official fees or patent fees that

correspond to patent applications or patent rights belonging to the State.


September 13 2007 dr taemin eom korean intellectual property office kipo

1-3. Remuneration

Classification

  • Remuneration for registration: patents US$500, utility models US$300, industrial

    designs US$200

  • Remuneration for a transfer or licensing: 50% of the revenue (since January 1, 2005)

  • Remuneration for organization: for transfers or licensing arrangements that generate

    revenue in excess of US$10,000 (remuneration in the range of $1000 to $10,000)

Formalities

  • Time: one year after the registration, transfer or licensing

  • Joint invention (of two or more inventors): remuneration based on the individual share

    of each inventor

  • Retirement or death of an inventor: remuneration is required if an invention was made

    when the inventor was a public official; remuneration is required for a successor in

    title if the inventor dies.


September 13 2007 dr taemin eom korean intellectual property office kipo

※ Calculation of royalties = expected sales × cost × portion of production cost

attributed to GOIs × 3%

  • expected gross sales of products per year

  • net cost of producing a product per year

  • portion of the production cost attributed to GOIs per product

  • 3% : may varies between 2% and 4% on the basis of the value and industrial

    applicability of GOIs


September 13 2007 dr taemin eom korean intellectual property office kipo

1-4. Ownership (as of May 2007)

Number of GOIs

※ Transferred or expired rights omitted


September 13 2007 dr taemin eom korean intellectual property office kipo

Rights

Total

Rural Dev. Admin.

Fisheries Research & Dev. Institute

Forest Research Institute

Agency for Technology & Standards

Veterinary Research & Quarantine Service

Other

Total

1,654

900

119

111

80

67

377

Patents

1,208

617

96

79

68

64

284

Utility models

297

205

22

18

-

3

49

Industrial designs

111

58

1

7

1

-

44

Int’l patents

38

20

-

7

11

-

-

Number of GOIs for each type of right and invention-related organizations


September 13 2007 dr taemin eom korean intellectual property office kipo

2-1. Applications and registrations in Korea

II. Application and Registration Process

Inventions owned exclusively by the govt

③ Applications under the name of the govt

① Employee inventions

KIPO

Application & Exam. Team

Invention-related

organization

Inventor

② Govt decision to be a successor of an invention

④ Decision of registration

⑧ Notification of the results of the request and the remuneration process

⑤ Request for registration of GOIs

  • Documents

  • Request for registration: Check inventors

  • A photocopy of decision of registration

  • Verification of the employee invention

  • Request for management and remuneration:

    • Check individual share among inventors

    • Bank account of inventors

KIPO

Registration Team

KIPO

Invention Promotion Team

⑥ Request for registration under the name of the govt

⑦ Notification of the results of the request


September 13 2007 dr taemin eom korean intellectual property office kipo

Joint ownership with the private sector (with right to succeed only to the govt share)

③ Joint application under the name of the govt and the private sector

① Employee invention

KIPO

Application & Exam. Team

Inventor

public official

Invention-related

organization

④ Decision of registration

② Govt decision to be a successor to an invention

Inventor

private sector

⑥ Request for management and remuneration for GOIs

⑦ Request for registration of GOIs

⑤ Registered after payment of registration fees

KIPO

Registration Team

KIPO

Invention Promotion Team


September 13 2007 dr taemin eom korean intellectual property office kipo

Documents for GOIs jointly owned with the private sector

Check inventors

Request for registration

Decision of registration or

certificate of registration

Check joint owners

Invention-related organizations’

opinion on employee inventions

Verify employee inventions

Contract on joint applications

and utilization of GOIs

Check condition on

individual share and use

Conditions for remuneration

Check individual share

of each inventors

※ Draw up a contract on joint applications and utilization of inventions


September 13 2007 dr taemin eom korean intellectual property office kipo

Examples of right holders and inventors

※ Rights of inventors (Patent Act, Article 33): An inventor is entitled to obtain a patent and to

be described as an inventor in the patent registration certificate.

※ The addition or deletion of inventors can be made before the final decision on the grant of

a patent registration (Regulation on Patent Implementation, Article 27)


September 13 2007 dr taemin eom korean intellectual property office kipo

Patent Act, Article 99 (Assignment and joint ownership of a patent right )

(1) A patent right may be assigned.

(2) Where a patent right is jointly owned, the owners may not assign or pledge their individual share without the consent of the other owners.

(3) Where a patent right is jointly owned, and unless otherwise agreed in a contract of the owners, an owner may individually work the patented invention without the consent of the other owners.

(4) Where a patent right is jointly owned, an owner may not grant an exclusive license or a nonexclusive license of the patent right without the consent of the other owners.


September 13 2007 dr taemin eom korean intellectual property office kipo

★ Points to be considered for joint research

  • Verification of individual share (e.g. State: 70%; private sector: 30%)

    ※ Regulation on Patent Implementation, Article 27

  • Inclusion of conditions on the individual work of invention

    • prior consent of other inventors (esp. the work of a third party as requested by the State)

    • payment of royalties based on each inventor’s share

  • e.g. royalties = individual share ×expected sales × net cost × portion of production

  • cost attributed to GOIs × 3%

  • Inclusion of conditions and requirements on the payment of fees based on the

  • individual share

  • e.g. if fees are not paid in accordance with the requirements, the right is deemed to be

  • abandoned (for inventions exclusively owned by the govt)

  • Inclusion of conditions on each inventor’s burden of costs for a lawsuit

  • Inclusion of the reversion of rights due to subsequent research and inventions

    • verification of the individual share of rights due to the contribution of subsequent

      research to the primary invention


September 13 2007 dr taemin eom korean intellectual property office kipo

2-2. Applications and registrations overseas

Foreign IP offices

Invention-related

organizations

Inventor

④ Decision of registration

② Govt decision to be a successor to an invention

⑥ Request for management and remuneration for GOIs

KIPO

Invention Promotion Team


September 13 2007 dr taemin eom korean intellectual property office kipo

Process of requesting payment of fees overseas

① Notification of deadline for payment of fees

② Inquiry opinion whether maintain rights

Invention-related

organization

Attorney

(Non-Korean)

Attorney

(Korean)

⑤ Order of payment and remittance expenses

⑧ Remuneration of fees

⑦ Request for remuneration of the payment

④ Order for the payment of fees

⑥ Payment of fees

Foreign IP

office

③ Request for payment of fees

(attachment of an appraisal of invention)

KIPO

Invention Promotion Team


September 13 2007 dr taemin eom korean intellectual property office kipo

3-1. Overview

III. Utilization of GOIs

  • ※ The licensing period (of three years) can be extended in the following cases:

  • where the preparatory work for the use of the invention takes more than one year

  • where the term of the right expires within four years of the date the license takes effect


September 13 2007 dr taemin eom korean intellectual property office kipo

3-2. Utilization after registration

Inventions owned exclusively by the govt

① Request for a license

② Request for an opinion on the license

KIPO

Invention Promotion Team

Invention-related

organization

Licensee

③ Notification of the opinion on the terms of the license

⑤ The signing of a contract

④ Notification of the opinion of invention-related organizations

⑥ Notification of the date the license and

remuneration process take effect

※ Documents to be filed when requesting a license:

- Request for a limited tender contract

- Calculation of royalties``

- Plan of operation: yearly production levels, sales volume and price, etc.

- A registered certificate of an entity

- A registered certificate of a seal


September 13 2007 dr taemin eom korean intellectual property office kipo

Joint ownership with the private sector

②-1 Request for consent

① Request for a license

Joint

inventor

Licensee

KIPO

Invention Promotion Team

No

② Request for an opinion on a license

Yes

Fail

License

Invention-related

organization


September 13 2007 dr taemin eom korean intellectual property office kipo

3-3. Utilization during the application phase

③ Notify amount of royalties to KIPO and request for remuneration

KIPO

Invention Promotion Team

① Request for license

Licensee

Invention-related

organization

② Sign a contract

④ Notification of payment of royalties

③ Documents

- A photocopy of the contract

- Description of the invention filed with the application to KIPO

- Amount of royalties, etc.

- Request for remuneration


September 13 2007 dr taemin eom korean intellectual property office kipo

4-1. KIPO’s policy on commercialization

IV. Services for Boosting Commercialization

Direction

Provide customized support programs

based on the commercialization capability and intent of patentees

For patentees who are incapable of independent commercialization:

  • Facilitation of the transfer of patented technology

    • E.g. Universities and research institutes

      For patentees who want to independently commercialize an invention:

  • Provision of financial aid

  • Support of expanding market places: exhibitions, cyber shopping malls

    • For fair and transparent support:

    • Establishment of an objective appraisal system


    September 13 2007 dr taemin eom korean intellectual property office kipo

    4-2. Organization Chart of the Commercialization Council

    * 18 organizations (8 governmental authorities & 10 related agencies)

    Small Business Admin.

    Rural Development Admin.

    KIPO

    Forest Service

    Maritime & Fisheries

    Science & Tech.

    Industry & Energy

    Agriculture & Forestry

    Small Business Corporation

    KIPA

    Commercialization Council

    Korea Development Bank

    Technology Credit Guarantee Fund

    • Inst. of Industrial Tech Evaluation

    Univ. of Science & Technology

    Agency for Tech & Standards

    Korea Technology

    Transfer Center

    Korea Inst. of Design Promotion

    Inst. of Science & Technology


    September 13 2007 dr taemin eom korean intellectual property office kipo

    Financial

    Support

    Collateral

    Support

    Consultations &

    Notifications

    • Funds for R&D and acquisition of IP

    • Funds for IP valuation and transactions

    • Funds for launching new products

    • Funds for establishing enterprises

    • Funds for facilities and mass production

    Main services of

    the Commercialization Council

    Council

    • Provision of IP information

    • Discounted application fees

    • Nurturing of IP experts

    • Authentication and guaranteeing of new technologies

    • Evaluation and marketing of new technologies

    • Guidance on managerial or technical problems

    • Advertising and marketing of new products

    명세서 기재

    • Consultations on general aspects of commercialization

    • Notification of the council’s support programs

    • www.kipa.org


    September 13 2007 dr taemin eom korean intellectual property office kipo

    Operation of the Commercialization Council

    Commercialization Council

    (working group)

    Supervision of

    collateral support

    Entrustment of management

    Reporting of

    performance

    Monitoring

    Management Authority

    (KIPA)

    Support Organizations

    (financial aid)

    Support status

    Application

    Support

    & management

    Applicant

    for commercialization

    Satisfaction survey


    September 13 2007 dr taemin eom korean intellectual property office kipo

    4-3. Status and measures on commercialization of GOIs

    Income and expenses of managing GOIs


    September 13 2007 dr taemin eom korean intellectual property office kipo

    Overall utilization of GOIs lags behind the utilization of private sector inventions

    • Portion of GOIs utilized: (2003) 9.0%, (2004) 9.3%, (2005) 10.6%, (2006) 12.2%, Jan. to

      May 2007: 13.0%

    • Portion of private sector inventions utilized: (2004)38.9%, (2005) 33.2%, (2006) 37.0%

      ※ Public research institutes: (2006) 15.7%; Universities: (2005) 12.8%

    Reason for non-use of GOIs

    • Many inventions are academic and require additional research to be commercialized

      (e.g. the method of extracting certain components from marine products)

      ※ The majority of GOIs pertain to the agricultural and fishery fields:

      Rural Development Administration: 900 rights, 54%

      National Fisheries Research and Development Institute: 119 rights, 7%

      Forest Research Institute: 111 rights, 6.3%

    • Rights tend to be maintained until they expire even if GOIs are unused for a long time

      ※ GOIs are exempt from fees such as registration fees.


    September 13 2007 dr taemin eom korean intellectual property office kipo

    ★ Measures to boost commercialization

    • Infrastructural improvements such as royalty-free usage

    • Remunerations for GOIs have increased from 30% to 50% of the revenue (since 2005).

    • A system of royalty-free use of GOIs was set up (in April 2006)for rights that have

      been unused for more than three years.

    • ※ Contracts were signed for six patents, including a wave-resisting apparatus

    • for the cultivation of fish in a closed net and a virus strain for preventing

    • respiratory diseases in pigs.

    • Computerized management and contract systems were set up for GOIs

    • A computerized management system was set up in November 2005.

    • An on-line contract system for GOIs was set up in October 2006.


    September 13 2007 dr taemin eom korean intellectual property office kipo

    • Information services on the use of GOIs have been established.

    • Information about the database and contracts of GOIs has been made available on the

      KIPO Web site and on the IP Mart (www.ipmart.or.kr).

    • Training programs have been conducted for officials who work in invention-related

      organizations.

    • Counselors at the IP Mart provide consultations and support with regard to GOI

      transactions.

    • From June to August 2007, the KIBO Technology Fund appraised 100 GOIs that had not been used for a long time.

    • On the basis of the appraisal, low value GOIs will be terminated.

    • ※ More than 21% of the appraised inventions were regarded as excellent inventions

    • and received recommendations to be licensed ASAP.


    September 13 2007 dr taemin eom korean intellectual property office kipo

    V. Further plans

    Decide whether to change the current GOI management system.

    • Option 1: Transfer the responsibility of managing and commercializing GOIs to an invention-related organization.

    • Option 2: Assign the responsibility to commercialize GOIs to a professional agency.

      * E.g. private technology licensing organizations (TLOs)

    • Option 3: Abolish or lower the fee exemption for GOIs

      Promote information services on the use of GOIs through Naver

      (www.naver.com) and the database of the National Technology Bank (www.ntb.com)

      * Naver: A Korean Web portal similar to Google

      Adopt a periodic appraisal system for GOIs

    • Terminate low value inventions long before they expire.


    September 13 2007 dr taemin eom korean intellectual property office kipo

    Thank You

    Taemin EOM, PhD. in Law

    [email protected]


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