Counseling, drafting and reviewing of employee invention agreements/policies

Many companies are taking proactive measures to protect IP assets resulting from employee inventions. This includes reducing risks related to employee invention assignments and reducing monetary liabilities by adopting new policies and/or updating existing policies. Our Team can assist in preparing or reviewing existing employee invention policies, new policies, assignment agreements, and other HR related documents. Our strategic counseling takes full advantage of our Team’s experience over a broad range of issues. 

Employee invention disputes

Employee invention disputes are often complex litigations that require legal, technical, and financial expertise in various areas, including IP, HR, criminal law, and finance. Our professionals are able to leverage our vast experience in these diverse areas to ensure the most effective and cost-efficient litigation strategies on behalf of our clients. 

Counseling, drafting and reviewing of employee invention agreements/policies

• Prepare/review employee invention compensation regulations for leading domestic and foreign companies
  - Review and revise employee invention policy for materials and parts company. 
  - Prepare Korean/English versions of compensation regulations for employee invention for home appliance company.
  - Prepare regulations on compensation for employee inventions and provide guidance on implementation of the regulations for E-Commerce company. 
  - Provide guidance on risks and advise on measures to mitigate risks where the compensation policy was improperly amended. 

• Provide advice on various customer inquiries regarding succession and compensation of in-service inventions
  - Review appropriateness of assignment of employee invention by a manufacturing company.
  - Provide advice on acquisition of retirees' inventions and royalty-free license agreement for a semiconductor company. 
  - Review whether global medical device company’s employee Invention compensation regulations and assignment agreements were in compliance with the Korean Invention Promotion Act.
  - Provide recommendations on reducing risks associated with identifying the wrong applicant on patent applications filed on behalf of a furniture company.
  - Analysis and guidance on court precedents on employee invention compensation amounts for electronic parts manufacturer.

• Review and advise on work-for-hire systems in various countries or jurisdictions for global companies
  - Prepare regulations on compensation policy for employee inventions generated from overseas subsidiaries of a construction company in eight countries.
  - Provide analysis and comparisons regarding compensation regulations for employee inventions in several major jurisdictions.

Employee invention litigation 

• Successfully defended major Korean materials/parts company against claims for employee invention compensation: In a case where a former executive claimed hundreds of millions of won in compensation for employee inventions maintained as trade secrets, the company was able to counterclaim trade secret misappropriation and reach a favorable settlement.
• Successfully defended Korean medical device company against claims for employee invention compensation: Kim & Chang was able to get complete dismissal of claims by establishing that there was no exclusive or independent benefit arising from the patented invention claimed to be an in-service invention.
• Successfully defended Korean automobile manufacturer against claims for employee invention compensation for tens of billions of won: Kim & Chang was able to get the claim dismissed in its entirety by disproving the former employee’s claims of inventorship of the employee invention.
• Successfully defended major Korean electronic parts company against claims for employee invention compensation for billions of won: Kim & Chang was able to obtain favorable rulings on novel issue from High Court and Supreme Court minimizing obligations regarding compensation to employees for employee inventions pre and post bankruptcy.
• Successfully defended major Korean automotive parts manufacturer against claims for employee invention compensation: Kim & Chang was able to get favorable Supreme Court ruling holding that an employee’s non-exclusive license for in-service inventions is recognized not only for Korean patents but also for foreign patents.