The Institute for Basic Science (IBS), the Korea Institute of Machinery and Materials (KIMM), the Korea Institute of Materials Science (KIMS), Korea Institute of Geoscience and Mineral Resources (KIGAM), the Korea Research Institute of Bioscience and Biotechnology (KRIBB), the Korea Atomic Energy Research Institute (KAERI), the Korea Research Institute of Chemical Technology (KRICT), and the Daegu Gyeongbuk Institute of Science and Technology (DGIST) (hereinafter, collectively “Institutes”), which are non-profit research institutes funded by the government of the Republic of Korea, jointly invite proposals from U.S.-based intellectual property law firms to create high-quality patents based on research outcomes and to cooperate on matters involving technology transfers and commercialization in U.S.

-   Overview   -

I. Goals & Expected Outcomes

1. Create high-quality U.S. patents

• ○ Create high-quality U.S. patents through the establishment of a cooperative system with U.S.-based patent law firms that have expert knowledge on U.S. patent laws and systems, and demonstrate a high level of understanding of research fields covered by “Institutes”
• ○ Enhance efficiency of U.S. patent management by establishing a cooperative system with highly experienced U.S. patent law experts
• ○ Handle or provide advice for matters concerning U.S. patent applications, office actions, trials/litigation, etc.

2. Promote exploitation of U.S. IP

• ○ Provide advice related to technology commercialization, including utilization of overseas patents owned by “Institutes,” and profit creation
• ○ Participate in work cooperation, including marketing for overseas patents owned by “Institutes,” and collection of evidence of patent infringement
• ○ Provide mediation or consulting services on technology licensing agreements in U.S.

3. Establish a cooperative system between U.S. intellectual property law firm and local patent firms

• ○ Make separate agreements with domestic patent firms according to fees negotiated with “Institutes” in the selection process
• ○ Enhance continuity of patent management by focusing efforts on U.S. patent management
• ※ It may not be possible to entrust work to selected firms depending on circumstances such as existing patent applications, joint applications with other institutes, conflicts of interest, and other needs of “Institutes”

II. Overview of call for proposals

1. Eligible fields and requirements

• ○ Quota: 4
  • ※ Fewer than 4 firms may be selected if candidates are deemed unsuitable
• ○ Specialty fields
  • - Field 1: Chemistry, biology, pharmaceutics, etc.
  • - Field 2: Machines, parts, metals, ceramics, materials, etc.
  • - Field 3: Electricity, electronics, semiconductors, communications, etc.
  • - Field 4: Energy, resources, nuclear power, etc.
  • ※ Proposals are accepted for fields not mentioned above with details on the specific field
• ○ Requirements
  • - At least three years since establishment as a law firm specializing in patents
  • - Two or more patent attorneys whose expertise is in the field of the submitted proposal
  • - Other preferred qualities: Ability to communicate in Korean
  • ※ Persons capable of communicating in Korean shall serve as points of contact

2. Selection process

• ○ Firms selected through two rounds of evaluation, comprised of document screening and presentation
  • - Two times the quota selected based on first round of evaluation for the second round (presentation^*)
  • * Candidates may give their presentation by videoconferencing, and speak in either Korean or English. 10 minutes for the presentation, and 10 minutes for Q&A.
  • - Four firms selected on a top-down basis through a comprehensive evaluation of presentation scores and price assessment scores
  • - Contract signed after negotiating fees with selected firms
  • - When assessed by a panel of 6 or more members, a candidate’s average score will be calculated after dropping the highest and lowest scores
  • - Average score rounded to three decimal places
  • - Tie-breaking criteria for comprehensive evaluation
    ① Candidates with higher scores in first round of evaluation
    ② Candidates with higher scores in categories allotted more weight in second round of evaluation
• ○ Evaluation criteria
  • • Document screening (round 1): 100 points
  • - Number of expert personnel (10 points): Total number of patent attorneys
  • - Work achievements in the past three years (10 points): Total number of U.S. patents applications by Korean clients in the past three years
  • - Patent quality management (40 points): IP application process management plan and standards, securing of computation system, measures against workplace negligence, security management, etc.
  • - Capacities of persons-in-charge (40 points): Scope of work and managing standards of patent attorneys, continuous years of service of personnel, work experience with relevant professional technologies, feasibility of proposal, etc.
  • • Presentation (round 2): 80 points
  • - Service quality and management (30 points): Efforts to enhance quality of specifications and other services, establishment of quality criteria for self-assessment, case management and scheduling capacity, etc.
  • - Job competencies and professionalism (30 points): Professional competence of attorneys, match with majors of participating personnel, work experience and case handling experience, etc.
  • - Distinctiveness of service (20 points): Work experience for Korean government-funded Institutes, understanding of government-funded work, assignment of outstanding personnel, distinguishing strategies, etc
  • • Price assessment (round 2): 20 points
    ※ Candidate firms that have passed the first and second rounds will be individually notified

3. Method and period of cooperation

• ○ Work cooperation agreement to be signed between “Institutes” and representatives of selected U.S. patent firms
  • - Period of cooperation: Jan. 1, 2023 – Dec. 31, 2025 (3 years)
  • - Fees for patent application, response to office actions, registrations, and trial-related affairs to be determined based on minimum amount proposed by selected firms with reference to proposed service fee schedules; these shall have legal binding force in the work cooperation agreement
• ○ Separate agreement on handling of intellectual property cases to be signed with multiple Korean patent firms designated by “Institutes”

4. Estimated number of entrusted cases:　146 cases of patent application / 1 year

※ The above estimate is based on the Institutes’ average number of U.S. patents in the past two years (2020–2021), and may vary from the actual number of entrusted cases

III. Timeline

• ○ Call for proposals: Aug. 18 (Thu), 2022 – Sep. 26 (Mon), 2022
• ○ Round 1 of evaluation: Oct. 12 (Wed), 2022
• ○ Round 2 of evaluation: 10:00 on Nov. 2 (Wed), 2022 (GMT +9)
• ○ Announcement of successful firms for negotiations: Nov. 23 (Wed), 2022
• ○ Contract signing: Nov. 30 (Wed), 2022
  ※ The above dates are subject to change depending on circumstances of Institutes

IV. Other matters to note

• ○ Deadline: No later than 18:00 on Sep. 26 (Mon), 2022 (GMT +9)
• ○ How to submit: By e-mail (selected firms may be asked to submit original documents by mail)
• ○ Office: oey@kaeri.re.kr Eunyoung Oh (+82-42-868-2018)
• ○ Required documents
  • ① Proposal
    - Use the provided form (submit Korean original and English translation)
    - Korean version: Write no more than 30 A4 pages, and submit as a PDF file
    - English version: Translate the Korean version, and submit as a PDF file
  • ② Price table
    - Submit as a file separate from the proposal
  • ③ Supporting documents (for firms selected for the second round)
    - One copy of proof of work achievements
    - One copy of document certifying status as patent law firm
    - Documents certifying status as patent attorney and proof of employment (for persons-in-charge only)
    - Financial statements for the past three years or equivalent documents
    - Other supporting documents (example: ranking of firms, letter of recommendation by Korean clients, etc.)
• ○ Request for additional materials
  • - “Institutes” may ask law firms to submit additional proposals or supporting materials, and such materials shall have the same effect as proposals
• ○ Notes for Proposal Submission
  • - On-time submission is mandatory.
  • - Submitted documents will not be returned and proposing firms shall bear all proposal-related costs.
  • - Any falsified information or document may be the basis for disqualifying the proposing firm and may be the basis for terminating a work cooperation agreement and/or an agreement if revealed after execution thereof. The firm shall bear consequences caused by or resulting from the falsified information or document.
  • - Proposing firms shall bear consequences incurred by errors or omissions in their proposals or attached documentation.
  • - The Institutes own all the outcomes and outputs produced during the partnership and all information obtained in relation to the partnership is strictly confidential.
  • - Proposals should follow the given format, but the format may be amended if necessary.
  • ※ Both Korean and English shall be used for call for proposals, proposals, and work cooperation agreements, but where a difference in interpretation arises, the Korean original shall take precedence over the English translation.

Ⅴ. Attachment

• 1. Evaluation items and criteria
• 2. Proposal (form)
• 3. Proposed Service Fee Schedules. End.