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| 1. Procedure
for Registering a Design |
| 2. Substantial Examination System(SES) |
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| 3. Non-Substantial
Examination System |
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| 1. Procedure for Registering a Design |
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 expediate 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
conveniency.
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. |
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| 2. Substantial Examination System(SES) |
(1)
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:
| a) |
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); |
| b) |
drawings of the design; |
| c) |
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 |
| d) |
a power of attorney, if necessary. |
Documents (a) and (b) 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:
| a) |
the name of the article embodying the design; and |
| b) |
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. |
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(2)
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:
| (ⅰ) |
where the kind of application is not clear; |
| (ⅱ) |
where the name or address of a person (or juridical
person) who takes the procedure (i.e., the applicant)
is not described; |
| (ⅲ) |
where the application is not written in Korean; |
| (ⅳ) |
where the application is not accompanied by drawings;
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| (ⅴ) |
where the article(s) in which the design is embodied
is not described; or |
| (ⅵ) |
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. |
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(3)
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. |
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(4)
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;
| a) |
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. |
| b) |
Industrial applicability ; the designs should be mass-produced
in an industrial method. |
| c) |
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. |
| d) |
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. |
| e) |
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. |
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(5)
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. |
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(6)
Appeal and Trial
| Appeal and Trial procedure are same with those of patent and
trademark |
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| 3. Non-Substantial Examination
System |
(1) 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. |
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(2) 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. |
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(3) 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 ground of opposition are same as that of requirement of
registration under the NSES; novelty, creativity, industrial
applicability, and other unregistrable designs. |
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(4) 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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