10/01/2009

Protecting your Intellectual Property in Korea: Avoid Trying Different Things & Smoking Funny Things

A popular song regularly played on the radio proclaims that in the summer of 1989 the songwriter 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 business with any exposure to the Korean market must have a plan in place to protect their intellectual property.

Thus, for the sake of your company, at a bare minimum, you should follow these simple recommendations prior to entering Korea.  Every public company and most private companies have valuable intellectual property. In Korea, and most of the world, this basic plan will assist in protecting and also fostering your company's intellectual property.

We should not forget that often intellectual property is the most valuable asset that your company possesses and thus if you have refused to have a protection plan in place, you should question whether in the fall of 2009 you to have been ``trying different things and smoking funny things.''

Therefore, 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, and trade secrets.

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.

Second, as 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.

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.

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 invoice and take an active role in further developing an appropriate scheme.  Additionally, keep the firm in the loop on all new intellectual property developments.

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.

This basic plan will not only help to protect your intellectual property in Korea, but also assist U.S. public companies in avoiding the long arm of Sarbanes-Oxley.

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 plan.
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SeanHayes@ipglegal.com

 Sean Hayes is co-chair of the Korea Practice Team at IPG Legal. He is the first non-Korean attorney to have worked for the Korean court system (Constitutional Court of Korea) and one of the first non-Koreans to be a regular member of a Korean law faculty.

He is ranked, for Korea, as one of only two non-Korean attorneys as a Top Attorney by AsiaLaw.