A popular song regularly played on the radio proclaims that in the summer of 1989 the songwriter, Kid Rock, was “trying different things and smoking funny things.” If you have any exposure to the Korean market, do your business a favor and don’t be like the songwriter. All businesses with any exposure to the Korean market must have a plan in place to protect their intellectual property in Korea. Thus, for the sake of your company, at a bare minimum, you should follow these simple recommendations when doing business in South Korea. For another article that may be of interest to the reader, please see: How to Protect your Brands and other IP in the Korean Market.
Protecting your Intellectual Property in Korea
Every public company and most private companies have valuable intellectual property that should be protected. In Korea, and most of the world, this basic plan will assist in protecting and also building the knowledge of the value of your company’s intellectual property.
Intellectual Property Audits/Inventories in Korea
First, have your business do a complete inventory of your intellectual property. Form a team to audit all your intellectual property including your patents, trademarks, service marks, books, manuals, videos, software, know-how, show-how, and trade secrets. Dig everywhere and list everything. The team should include, at a minimum, a senior manager experienced in the internal workings of the company and an outside consultant (attorney or intellectual property consultant) who is experienced in creating inventories.
The team should send a tailored questionnaire to the heads of all your company’s departments. From the questionnaire and other ascertained information, the team should produce a complete intellectual property inventory that details what intellectual property the company possesses and evidences how much the intellectual property is worth to the company. The valuation, at this stage, can be in a very rough form. If deemed necessary a valuation can be done on an asset-by-asset basis.
Register your Intellectual Property in Korea at KIPO
Second, in the words of the U.S. Commercial Services in Korea, “protection of intellectual property and the laws governing enforcement of these protections exist but are not necessarily extra-territorial. What is understood and practiced in the United States is not always practiced in Korea. U
.S. companies wishing to sell their products or services in Korea should first and foremost register their intellectual property rights (copyrights, trademarks, or patents) in Korea.” Call a lawyer and get your intellectual property registered. The cost of registration is minimal.
Intellectual Property Enforcement Plan for Korea
Thirdly, have a plan in place to deal with intellectual property violations. The plan should include an internal monitoring and worldwide registration and licensing scheme; an action plan to deal with intellectual property violators and patent trolls; forming of a team that is responsible for maintaining and fostering intellectual property rights and making sure that intellectual property is properly reflected in the company’s financials.
Local Korean-Based Advisor & Enforcement Professional
Fourthly, have a law firm, in Korea, on retainer. A monthly retainer, in Korea, with prepaid hours is inexpensive. Direct the firm to investigate, contact violators, draft license and distribution agreements, regularly review your intellectual property inventory, and take an active role in further developing an appropriate scheme. Additionally, keep the firm in the loop on all new intellectual property developments.
Integration of Home Office with Korean Office
Lastly, integrate the home office with the Korean entity. All too often the Korean branch is totally out of the loop and hence unaware of developments at the home office. The Korean branch, in not only intellectual property but in other company areas, should at least be near the loop.
For the sake of your company and the sake of not being labeled by your board as potentially “trying different things and smoking funny things,” implement this basic Koran intellectual property protection plan.
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