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Design of non substantive examination system
  • Overview

    The design application system in South Korea adopts both the Substantive Examination System (SES) and the Partial-Substantive Examination System (PSES) depending on the Locarno Classes of the design articles.

    The PSES is applied to articles which are sensitive to trends and have a short lifecycle such as foodstuffs (Class 1), clothing and fashion accessories (Class 2), travel goods (Class 3), textile products (Class 5), packages (Class 9), articles of adornment (Class 11), stationery and office equipment, artists' and teaching materials (Class 19).

    Filing a multiple application covering up to 100 designs is possible, given that all of the designs fall into the same Locarno class.

    Upon request, a filed design can be kept secret for a certain period. The applicant can use a Secret Design System which allows the publication of a national design application to be deferred for up to 3 years from the date of the design registration in Korea.

    Once a national design application is registered, the design can be protected for 20 years from the date of filing the application.

  • Filing an Application

    (a) Requirements

    General requirements for filing a design application are as follows.

    i) Full name, address, and nationality of the applicant

    ii) Full name, address, and nationality of the designer (creator)

    iii) Title of design article

    iv) Locarno class of the design article

    v) Materials of the article embodying the design

    vi) Drawings

    vii) Priority details (number, date, and country) and priority document, If priority is claimed

    viii) a Power of Attorney (POA) signed by the applicant, if necessary

    The KIPO allows various kinds of drawings including the line drawings, 3-D modelings, and photographs. Such drawings should describe the entire appearance of the article embodying the design. Drawings may contain a perspective 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).

    (b) Claim of Priority

    The right of priority can be claimed for a design application under the Paris Convention or other international treaties based on a bilateral or multilateral agreement. In order to enjoy the priority right, an application should be filed in South Korea within 6 months from the filing date of the basic application.

    The priority document should be submitted to the KIPO within 3 months from the filing date of the application. Instead of submitting the priority documents, simply submitting the WIPO Digital Access Service codes (DAS codes) issued by the IP offices of the countries where the priority applications were filed is sufficient, provided that these countries use the DAS code system.

    (c) Claim of Exemption from Loss of Novelty

    A design application can be filed within the 12-month grace period from the date of the first disclosure of the design anywhere in the world.

    Claiming an exemption from loss of novelty is possible at the time of filing the application and even after filing the application. For example, when filing a response to a provisional refusal, an opposition, and an Invalidation Trial Request.

  • Early Publication per Request

    The applicant may request an early publication of the design application. In cases of an application for registration of multiple designs, the applicant may make a request to publish all or some of the designs in the application.

    The Korean Design Act offers a special legal protection for a published design application. An applicant may warn an alleged infringer, after his/her design application is published, and claim compensation. Such compensation, however, can only be secured upon the registration of the design.

  • Substantive Examination

    (a) Initiation of Examination

    Unlike a patent or utility model application, a request for examination is not required for SUBSTANTIVE examination. Design applications are automatically taken up for examination in the order of the filing date. It generally takes about one year from the filing date to complete the examination.

    A request for expedited examination can be made once the design application is filed and upon showing that the design is presently being infringed by a third party or is being used/prepared for use by the applicant. Such expedited examination would be also available if any urgent valid need occurs as stipulated by the Design Act (e.g.,, a design related to defense industry).

    (b) Requirement for Registration

    To be registerable under the Design Act, a design should meet the following requirements;

    i) It should fall under the definition of a design given in the Design Act; a design 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.

    ii) Industrial applicability; the designs should be able to be mass-produced in an industrial method.

    iii) Novelty; the designs should not be identical or similar to the design which was publicly known or worked or published within or outside of the Republic of Korea before the application for the design registration was made.

    iv) 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.

    v) Furthermore, it should not fall under any of the unregistrable designs provided in Article 34 of the Design Act, which include a design that disturbs the public order or good morals, a design which is identical with or similar to the flag, emblem of nation or public organizations, or a design in a shape that is indispensable for securing function of the item.

    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 12 months grace period from the date the first disclosure was made.

    Any person who desires to have his design be presumed novel (i.e., claiming exemption from loss of novelty) must submit a written statement to that effect to KIPO at the time of filing the design application or even after the application, for example, when filing a response to a provisional refusal, an opposition, and an invalidation trial request. In this case, any supporting document substantiating such statement must also be submitted within 30 days from the filing date of the design application if this exemption is claimed at the time of filing the application, or within 30 days from the filing date of a response if the exemption is claimed via such response.

  • 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/she is persuaded by the applicant's argument and/or amendment, he/she will render a decision to grant registration. There is no publication for opposition of a design application under the SES after the SUBSTANTIVE 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.

Design under substantive examination system
  • Multiple Application

    An applicant may file an application covering up to 100 designs (“multiple design application”) which fall into the same class of the Korean Classification of Products. This Korean Classification is based on Locarno Classification.

    In this case, each design covered by the multiple design must be individually described by submitting a set of drawings and indicating the creator(s) of each of the designs. If priority is claimed, the relevant priority basis to each design, as well as supporting document thereto, would be further required per covered design.

  • Formality Examination and Registration

    Under the PSES, examiners conduct formality check and basic examination (mainly whether the design is industrially applicable, which usually refers to drawing requirements, and whether the design satisfies some creativeness only based on the well-known shape/pattern/color/or combination thereof).

    The formality check on the design application under the PSES is same as of the formality check under the SES.

    If the examiner finds any reason for refusal based on the above subject grounds, the examiner must issue a preliminary refusal stating the reason for such refusal and further give the applicant an opportunity to respond thereto by submitting a written opinion or amendment within the Examiner’s designated term.

    If the examiner finds no reason for refusal, he/she will render a decision to grant registration.

  • Publication and Post-grant Opposition

    KIPO publishes a "design registration gazette under the PSES (Partial Substantive Examination System)" after the design applicant pays the registration fee.

    Once such design is published in the Registration Gazette, any person may file an opposition against the registration of the design before the PSES within 3 months from the publication date.

    The grounds for opposition are the same as those of the requirements for registration under the SES: novelty, creativity, industrial applicability, and other unregistrable designs.

  • Rights conferred to the design registration under the NSES

    The exclusive rights conferred to the design registration are the same between the PSES and the SES (Substantive Examination System).

    If the registration under the PSES is invalidated by an opposition or invalidation trial, this registration will retroactively lose effect. In other words, such invalidated design right will be deemed to have never existed.