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Procedure for Registering a Design

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.  

 
2. Substantial Examination System(SES)
(1) Filing an Application of Korea

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 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.

(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;

(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.

(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 registrability 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.

(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 registrable 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.

(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.

(6) Appeal and Trial

Appeal and Trial procedure are same with those of patent and trademark.  

 
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.

(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.

(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.

(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.