Request for Proposals for Partnership with U.S.-based Intellectual Property Law Firms
Korea Institute of Geoscience and Mineral Resources (KIGAM), The Institute for Basic Science (IBS), the Korea Institute of Machinery and Materials (KIMM), the Korea Institute of Materials Science (KIMS) (hereinafter, collectively “Institutes”) seek partnership with intellectual property (IP) law firms based in the United States (U.S.) to obtain stronger IP protection for their R&D outcomes and promote commercialization of their IP in the U.S.
All interested U.S. IP law firms are invited to submit their proposals with reference to the following.
-Overview -
I.Goals & Expected Outcomes
1.Get stronger IP protection in the U.S.
Selected firms will:
- a.assist in obtaining stronger IP rights with expertise in U.S. IP law, deep understanding of the disciplines of the Institutes, and sufficient experience in managing IP
- b.systemically collaborate with the Institutes for efficient and effective management of their U.S. IP rights;
- c.offer consultations on IP issues, prosecution (including filing applications, handing office actions and trials/appeals), and enforcement (including handling litigation matters) of IP rights in the U.S.
2.Promote exploitation of U.S. IP
Selected firms will:
- a.offer consultations to or collaborate with the Institutes for IP commercialization and technology transfer;
- b.offer consultations on licensing and/or assignment agreements.
3.Strengthen collaboration between U.S. law firms and the domestic law firms representing the Institutes for IP Matters Selected firms will:
II.Selection Procedure
1.Required Specialty & Eligibility
Two or more firms will be selected.
- a.Required specialty* in the following disciplines:
- b.Eligibility:
2.Proposal Evaluation
- a.Two-phase Evaluation
- ○1st Phase (document-based): Firms, approximately three times the number of finalists, are selected through proposal evaluation.
- ○2nd Phase (presentation-based): Preferred firms are selected through presentation evaluation (presentation via video-conferencing is allowed).
- b.Evaluation Criteria
- ○Specialty & Eligibility: General operational and personnel status of the firm
- ○Management Capacity: IP application management plans and their quality, IT system, measures for negligence, confidentiality and security management, etc. of the firm
- ○Personnel Capacity: Work scope and capacity, length of service at the firm, experience in the required disciplines, feasibility of proposal, etc. of attorneys and personnel assigned for the partnership
- ○Reference & Track Record: Track record of the previous three years, clients, experience with Korean clients, etc.
- ○Service Fees: Whether the fees in the proposed fee schedule are reasonable
※Firms passing each evaluation phase will be individually notified.
3.Arrangement and Period of Partnership
- a.MOUs will be made between the Institutes and selected firms.
- –Partnership Period: Jan. 1, 2017- Dec. 31, 2019 (3 years)
- –Lowest fee in each service item (including filing applications, handling office actions, handling issue fee, handling appeals and trials) among the service fees proposed by the selected firms will apply to all of the selected firms. It will be indicated in the MOUs as a legally binding clause.
- b.Selected firms can represent the Institutes for certain IP matters in the U.S. after signing agreements with the Institutes’ Domestic Agents.
III.2016 Time-line
- 1.Oct. 24 to Dec.2 Proposal submission
- 2.Dec. 06 1st phase evaluation and result notification
- 3.Dec. 08 2nd phase evaluation (10:00 AM, KST)
- 4.Dec. 12 Final result notification
- 5.Dec. 15 - Execution of MOUs
※ The time- line is subject to change.
IV.Notes
- 1.Proposal submission is due on Friday, Dec. 02, 2016 at 18:00 (KST).
- 2.Proposals must be submitted via email to ipkimm@kimm.re.kr, KANG Sun-Nyung (Tel: +82-42-868-7912).
- 3.Selected firms must send their original documentation by mail after notified of their selection.
- 4.Required Documentation
- a.A PDF- format proposal of no more than 30 letter-sized pages following the given format
- b.Supporting documentation to attach:
- 5.Additional Documentation
- a.If necessary, the Institutes may request an additional proposal or a supporting material which will be deemed to replace the original proposal or to be a part of the original proposal.
- b.Proposing firms can submit reference letters from their Korean clients or Korean law firms.
- 6.Notes for Proposal Submission
- a.In-time submission is mandatory.
- b.Submitted documents will not be returned and proposing firms shall bear all proposal-related costs.
- c.The Institutes may request an additional material to verify the content of a proposal.
- d.Any falsified information or document may be the basis for disqualifying the proposing firm and may be the basis for terminating an MOU and/or an agreement if revealed after execution thereof. The firm shall bear consequences caused by or resulting from the falsified information or document.
- e.Proposing firms shall bear consequences incurred by errors or omissions in their proposals or attached documentation.
- f.The Institutes own all the outcomes and outputs produced during the partnership and all information obtained in relation to the partnership is strictly confidential.
- g.Proposals should follow the given format, but the format may be amended if necessary.
※Request for Proposal and MOUs will be written in Korean. English translations thereof can be provided, but if there are any discrepancies between Korean versions and English translations, the Korean versions will prevail.
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