Currently, the Design Protection System in
the Republic of Korea is in transition from
Substantial
Examination System (SES) to
Non-Substantial Examination System (NSES).
In response to the request of applicants to
expedite the procedure for the registration of
designs,
KIPO revised the
Design Law,
introducing the Non-Substantial Examination
System for some short-term
life-cycle products
as of March 1, 1998.
Under the NSES, applicants may get the
registration within 2 or 3 months from the
filing date and enjoy
new procedures such as
Multiple Application, and Post-Grant Opposition
for their conveniences.
Even though the applications under the NSES
are not examined substantially, the requirements
for the registration and the effects of rights
are same with those of under the SES.
The
registrations under the NSES which do not
fulfill the requirements will be invalidated
through the Post-Grant
Opposition or Trial.
Currently, the products applied to the NSES are
few. However, KIPO will gradually extend the
scope of the
products which are applied to the
NSES, if this trial is successful. |
|
| Substantial Examination System(SES) |
|
| Filing an Application |
|
| Ⅰ) Documents Required |
| |
A person who desires to obtain a
design registration must submit to the
Commissioner of KIPO the following documents: |
| |
⒜ |
an application stating the name and address
of the creator and the applicant (including the
name of a representative,
if the applicant is a
juristic person), the date of submission, the
name of the article on which the design is
embodied,
the claim and the priority data (if
the right of priority is claimed); |
| |
⒝ |
drawings of the design; |
| |
⒞ |
if the right of priority is claimed, the
priority document which is a certified copy of
the priority application together
with its
Korean translation; and |
| |
⒟ |
a power of attorney, if necessary. |
|
| |
Documents
⒜ and ⒝ above must be submitted at the time of
filing the design application. The name of a
representative
of the applicant may be
supplemented at a later time.
The priority
document and power of attorney can be later
submitted after the filing of the application. |
|
| Ⅱ) Claim of Priority |
| |
The right of priority may be claimed for a
design application under the Paris Convention or
based on a bilateral agreement
or
reciprocity. A
claim of priority in a design application can be
made only if the design application is filed in
the Republic of
Korea within 6 months from the
claimed priority date. |
|
| Ⅲ) Drawings |
| |
Drawings appended to a design application should
contain: |
| |
⒜ the name of the article embodying the design;
and
⒝ a description of the design and the gist of
the design. |
|
| |
The description of a design is not as important
as the specification of a patent or utility
model application so long as
drawings of the
design are correctly and properly prepared. In
lieu of drawings, photographs, models or samples
of the
design may be submitted.
Drawings should contain a prospective view, a
front view, a rear view, a right side view, a
left side view, a top view,
a bottom view and
other views(e.g. a sectional view), if necessary
or useful in describing the design. Where the
article
representing the design is of a flat
shape, only the top and the rear views need to
be included in the drawings. |
|
| Formality Examination |
Once a design application is submitted to KIPO,
it will be checked to ensure that all
requirements necessary to
accord the application
a filing date have been satisfied. Under the
Article 2(1) of the Enforcement Regulation
of
the Design Act, in any of the following
instances, the application will be returned to
the submitter without
any application number
being assigned thereto and will be treated as if
it had never been submitted: |
| |
⒜ |
where the kind of application is not clear; |
| |
⒝ |
where the name or address of a person (or
juridical person) who takes the procedure (i.e.,
the applicant) is not
described; |
| |
⒞ |
where the application is not written in
Korean; |
| |
⒟ |
where the application is not accompanied by
drawings; |
| |
⒠ |
where the article(s) in which the design is
embodied is not described; or |
| |
⒡ |
where the application is submitted by a
person who has no address or place of business
in the Republic of Korea,
without coming/being
submitted through a patent agent in the Republic
of Korea. |
|
Once the application has satisfied the
requirements, KIPO assigns an application number
and examines as to whether or
not other
formality requirements under the Design Act have
been met.
The procedure dealing with the formality
examination of a design application is the same
as that of a patent application. |
|
| Early Publication per Request |
A design application may, upon the request of
the applicant, be published in the official
gazette entitled
"Design Laid-open
Gazette".
Such request for publication may not be made
once the applicant has received a copy
of the
first final decision of
approval or rejection of
application.
Once a design application has been laid-open to
public inspection, any person may submit to KIPO
information relevant
to the registrablility of
the design concerned together with any
supporting evidence.
The revised Design Act offers a special legal
effect upon a laid-open design application: if
the applicant sends a
warning
letter to an
alleged infringer after his design application
has been laid-open, it will mean that the
relevant period
for
computerization of a
reasonable amount of compensation will commence
from the date that letter is received.
Such
compensation,
however, can only be secured upon
the registration of the design. |
|
| Substantial Examination |
|
| Ⅰ) Initiation of Examination |
| |
Unlike a patent or utility model
application, a request for examination of a
design application is not required for the
initiation
of substantial examination. Design
applications are automatically taken up for
examination in the order of the filing date
thereof.
It generally takes about one year or so
to complete the examination from the filing
date. A request for expedited
examination
may be
made once the design application has been
laid-open upon to public inspection the request
of the
applicant and
upon showing that it is
presently being infringed. |
|
| Ⅱ) Requirement for Registration |
| |
To be registerable under the Design Act, a
design should be meet the following
requirements; |
|
| |
⒜ |
It should fall under the definition of a
design given in the Design Act ; A design which
is eligible for protection under
the
Design Act
is defined as "the shape, pattern, color or any
combination thereof in an article which produces
an
aesthetic
impression on the sense of sight.
Therefore, to be protected under the Design Act,
a design should be
embodied on an article.
The
term "article" is generally considered as a
tangible, movable and independent thing. |
| |
⒝ |
Industrial applicability ; the designs
should be mass-produced in an industrial method. |
| |
⒞ |
Novelty ; the designs should not be
identical or similar to the design which was
publicly known or worked or published
within or
outside the Republic of Korea before the
application for design registration. |
| |
⒟ |
Creativity ; the design should be a design
which could not have been easily created by a
person having
an ordinary
skill in the relevant
field from the shape, pattern, color or a
combination thereof which was widely
known in
the Republic of Korea. |
| |
⒠ |
Furthermore, it should not be any of the unregistrable designs provided in Article 6 of
the Design Act, such as designs
which disturb
the public order or good morals and a design
which is identical with or similar to the flag,
emblem
of nation or public organizations. |
|
| |
Even if a design was published or known or
worked by the applicant himself prior to the
filing date of the design application
therefor,
it is deemed to be novel provided that the
design application is filed within 6 months after the disclosure was made.
Any person who desire to have his design be
presumed novel must submit a written statement
to that effect to KIPO at the time
of filing the
design application. Any document substantiating
such statement should be also submitted within
30 days from
the filing date. |
|
| Rejection and Registration |
If a design application falls under any of the
grounds for rejection enumerated in the Design
Act, the Examiner must issue a notice
of
preliminary rejection, stating the reasons for
rejection, and give the applicant an opportunity
to submit a written opinion,
within the
specified time limit.
If the examiner finds no ground for rejection or
he is persuaded by the applicant's argument
and/or amendment, he will render
a decision to
grant registration. There is no publication for
opposition of a design application under the SES
after the substantial
examination. However, upon
the registration, the design registration is
published in the official gazette called
"Design
Registration under the SES Gazette".
If the examiner considers that the applicant's
argument is without merit and the ground for
rejection has not been overcome,
the examiner
will issue a notice of final rejection of the
design application. |
|
| Appeal and Trial |
Appeal and Trial procedure are same with those
of patent and trademark. |
|
| Non-Substantial Examination System |
|
| Multiple Application |
Under the NSES, an applicant may file an
application for twenty designs or less which
fall under single class
in accordance with the
Korean Classification of Products for the
Registration of Designs.
The documents required, such as claim of
priority, drawings for the design application
under the NSES is same as that of
under the
Substantial Examination.
However an applicant wishing to make an multiple
application should submit a specification of
plural designs containing matters
such as serial
number of designs, and drawings, names and
claims of priority of each design. |
|
| Formality Examination and Registration |
Under the NSES, examiners conduct formality
check and examination to determine whether the
design will disturb the
public order or good
morals only.
The formality check on the design application
under the NSES is same as that of under the SES.
If the examiner founds a flaw in the formality
mentioned above, the examiner must issue a
notice of preliminary rejection
stating the
reason for rejection and give the applicant an
opportunity, time limit to submit a written
opinion or amendment
within the specified.
If the examiner finds no flaw in the formality
examination, he will render a decision to grant
registration without
substantial examination. |
|
| Publication and Post-grant Opposition |
KIPO publishes a "design registration gazette
under the NSES" after the design applicant pay
the registration fee.
Once a design has been published in the
Registration Gazette any person may file an
opposition against the registration
of the
design under the NSES within 3 months from the
publication date.
The grounds of opposition are same as that of
requirement of registration under the NSES;
novelty, creativity,
industrial applicability,
and other unregistrable designs. |
|
| Rights conferred to the design registration under the NSES |
The rights conferred to the design registration
under the NSES in exclusive right are same as
that of under SES.
If the registration under the NSES is
invalidated by opposition or trial, the right
conferred to the registration under
the NSES
will retroactively lose effect.
Furthermore, if the alleged right holder injures
a person by exercising his forged right, he has
to compensate
for the damages regardless of his
design registration under the NSES. |
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