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.
|1. Filing an Application
|ァ) Documents required
|A person who desires to obtain a design
registration must submit to the Commissioner of KIPO the following
|(a) an application stating the name
and address of the creator and the applicant
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,
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
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.
|ア) 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.
|Drawings appended to a design application
|(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:
|(ァ) where the kind of application is
|(ア) where the name or address of a
person (or juridical person)
takes the procedure (i.e., the applicant) is not described;
|(ィ) where the application is not written
|(イ) where the application is not accompanied
|(ゥ) where the article(s) in which the
design is embodied is not described; or
|(ウ) where the application is submitted
by a person who has no address or place of
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
|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.
|4. Substantial Examination
|ァ) 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.
|ア) 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 ;
design which is eligible for protection under the Design Act is defined
"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
Design Act, a design should be embodied on an article. The term "article"
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
|(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
|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
|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.
|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
|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
|KIPO publishes a "design registration
gazette under the NSES" after the design applicant pay the registration
|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
|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.