|Revisions to the Korean Design Act - Effective as of July 1, 2014|
A. Revisions to Protect Creators of Designs
1) Strictness of the Creativity Requirement (Article 33(2)ii)
Currently, Article 5(2) of the Korean Design Act states that if a person with ordinary skill in the related industry can easily create an applied design from a well-known shape, pattern, or color or their combination in Korea, that application is unregistrable due to lack of creativity.
However, under the new revisions (Article 33(2)ii), the territory as to how "well-known" a design is will extend to overseas countries, as well as in Korea. Accordingly, if an applied design is created from a well-known shape, pattern or color or their combination even outside Korea, it will also be unregistrable for lacking creativity.
2) In the case where two designs belong to the same holder, exceptions of refusal will be made for a later-filed design if it is identical with or similar to a portion of an earlier-filed design, where the earlier-filed design is publicly disclosed after the filing date of the later-filed design (Article 33(3))
Currently, Article 5(3) states that if a design applicant files a new application for a design identical with or similar to a portion of an already-filed design, such a later-filed design should be refused, even if the later design is applied before the public disclosure date of the earlier-filed design. However, under the revised Act, a later-filed design will not be refused due to a prior filed design if the owner is the same for both designs.
3) The Related Design System (Article 35)
The Similar Design System will be changed to the Related Design System by the new revisions. Under the current Act, an applicant must file a design as a Similar Design if the applied-for design is similar to the applicant's own design (hereafter, 'Principle Design'). The duration of a Similar Design Registration is also the same as that of the Principal Design. Furthermore, the Similar Design Registration is affected by the expiration of the Principal Design Registration, and thus, if the Principal Design dies for any reason, such as invalidation, a withdrawal, expiration, etc., the Similar Design will also die.
However, under the revised Act, a similar design should be filed as a Related Design of a Principal Design, and in this case, even if the Principal Design dies due to invalidation or withdrawal, the Related Design will not be affected. However, the duration of the Related Design will still follow the Principal Design.
A Related Design Application must be filed within 1 year from the application date of the Principle Design. Also, a design that is only similar to a Related Design but not similar to a Principle Design cannot be filed as a Related Design. Furthermore, if the Principle Design has an exclusive license, a Related Design cannot be registered.
4) Extension of Duration (Article 91)
The duration of a design registration will be extended to 20 years from the application date, which will make the durations of patent and design registrations the same.
B. Revisions for the Convenience of Applicants
1) Exceptions for Public Disclosures (Article 36(2))
Currently, Article 8(2) states that in order for an applicant to request an exception of a public disclosure, the applicant must request that the design falls into an exception criteria when applying for the design.
However, through the new revisions under Article 33(2), the applicant or owner of a design may argue that their design falls into an exception criteria of a public disclosure either when applying for the design, when receiving an Office Action, when responding to an Opposition, or when responding to an Invalidation Trial of Registration.
2) Revisions of Multiple Designs (Articles 41, 65, etc.)
|Number of articles allowed to be applied as a multiple design
||Up to 20 articles
||Up to 100 articles
|Required design type
||Non-substantial examination designs can only be applied as multiple designs
||All designs can be applied as multiple designs
|Treatment of Multiple Design Applications in the examination stage
(Whether it follows the All-or-Nothing Rule)
|When a multiple design is filed, an applicant and an Examiner should deal with the application as one single design application.
That is, the requesting of a secret design, the laying-open of an application, a decision of refusal, and a decision of registration must follow the All-or-Nothing Rule, meaning that the multiple design application must be considered as a whole during the examination stage.
|The All-or-Nothing Rule will no longer be applied to multiple design applications.
That is, the requesting of a secret design, the laying-open of an application, a decision of refusal, and a decision of registration will not follow the All-or-Nothing Rule, meaning that each design in a multiple design will be considered separately during the examination stage.
C. Adoption of the Hague Agreement Concerning the International Registration of Industrial Designs
Please note that the Republic of Korea will be a party to the Hague Agreement, and therefore, the Hague Agreement Concerning the International Registration of Industrial Designs will come into effect on July 1, 2014.
Therefore, if your country is a member state of the Hague Agreement, your client may file a design through the Hague system.
D. Other Revisions
1) The International Classification for Industrial Designs (Locarno Agreement) will be applied to the revised Korean Design Act. Accordingly, applicants must indicate the Locarno Class of their articles, along with the names of the articles (Article 37).
2) Through the new revisions, the Korean Intellectual Property Office will return all official fees for claiming a convention priority if the application is withdrawn or abandoned within one month from its application date (Article 87(1)(iii)).