A recent amendment to the Korean Invention Promotion Act (“KIPA”) has made it possible for an employer to automatically succeed to the right to obtain a patent on an employee invention upon the completion of the invention, provided there is a pre-existing agreement that requires the employee to assign the right to the employer. The amendment aims to enhance clarity and efficiency in the management of employee inventions, ensuring that the employer can securely obtain the right upon completion of the employee invention.

Under the current KIPA, an employee who has made an employee invention shall promptly report the invention to their employer in writing, and the employer shall notify the employee as to whether the employer would succeed to the right to obtain a patent on the employee invention within four (4) months from receipt of the employee’s report. If the employer notifies the employee of their intent to succeed to the right within the 4-month period, the employer shall be deemed to have succeeded to the right at the time the employer notified the intent. However, this sometimes led to disputes about possible duplicative transfer of the employee invention, e.g., in the event the employee transfers the right to a third party before reporting the invention to the employer.

With the amendment, disputes about double transfer of employee inventions will be addressed by stipulating that the employer shall be deemed to have succeeded to the right at the time the invention is completed, as long as there is a pre-existing agreement requiring the employee to assign the right to obtain a patent or a patent right on an employee invention to the employer, or grant an exclusive license to the employer. Further, the employer who decides not to succeed to the right shall notify the employee of the decision within the 4-month period.

The amendment will become applicable to employee inventions made on or after August 7, 2024.