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.

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.

Selected firms will:

• a.make an agreement with the law firms (domestic IP agents) representing the Institutes for IP matters in order to represent the Institutes in handling U.S. IP matters
• b.help improve the consistency in U.S. IP management.

  *The Institutes may not allow such representation if,

  • i)pending IP applications and/or jointly owned applications with other institutes is/are involved,
  • ii)conflict of interest is found, or
  • iii)other reasons of the Institutes exist.

Two or more firms will be selected.

• a.Required specialty* in the following disciplines:
  • ○Specialty I - Physics, Mechanical engineering, metal materials, or civil engineering
  • ○Specialty II - Chemistry, chemical engineering, environment, energy, or material science

    *Supporting documents of their specialty must be submitted with the proposal.

• b.Eligibility:
  • ○Providing services as a law firm in IP matters for three or more years
  • ○Two or more US patent attorneys registered at the United States Patent and Trademark Office (USPTO) who have required specialties

    –Firms with partners or staff members who can communicate in Korean* are preferred.

    *Prospective points of contact for the partnership

• 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

• 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.

• 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.

• 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:
    • –A copy of document(s) that support(s) firm’s specialties
    • –A copy of a certificate of business registration
    • –A copy of a certificate of good standing (as a lawyer) issued by a court, a copy of a certificate of good standing (as a U.S. patent practitioner) issued by the USPTO, and a copy of a certificate of employment issued by the firm

      ※ Above documents are required for only those who are to work for the Institutes

    • –A copy of financial statements over the previous three years
    • –Other reference materials (e.g., law firm rankings)
• 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.