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South Korea: Recent changes in design practice




The Korean Design Protection Act has recently been revised, and the revised Act will take effect on September 22 2017.

Extension of the grace period for novelty to 12 months

The current Korean Design Protection Act allows a grace period for novelty if a design application is filed within six months of the date when the design is publicly known or worked. However, under the revised Act, the grace period will be extended to 12 months from the date of disclosure.

More opportunity of claiming the grace period for novelty

Under the current Act, the grace period claim for novelty should be filed either (i) at the time of filing a design application, or (ii) when responding to an office action. However, according to the revised Act, the grace period for novelty can be claimed at any time before the allowance of registration by KIPO.

Introduction of DAS

According to the revised Act, like the current Korean Patent Act, the WIPO Digital Access Service (DAS) for priority documents can now be used to meet requirements for claiming priority of a design application under the Paris Convention. Therefore, the exchange of priority documents can take place electronically between foreign patent offices and KIPO, meaning an applicant does not need to submit a priority document to KIPO. The agreement in exchange of priority documents has so far only been made between KIPO and the USPTO, but it is expected that more countries will be included in the exchange in the near future.

Increase in penalty limit

The penalty limits in connection with perjury, fraudulent indication and fraud have been raised. Starting from September 22 2017, any person who violates perjury law will be punishable by imprisonment for not more than five years or by a fine not exceeding W50 million ($50,000). Any person who commits fraudulent indication or fraud will be punishable by imprisonment for not more than three years or by a fine not exceeding W30 million ($30,000).

Design Examination Guidelines

KIPO's Design Examination Guidelines were also recently revised, and became effective as of January 1 2017, to expand the scope of creativity and protection of design.

Clear evidence is required to negate creativity

Design applications consisting of a well-known shape or pattern, for example a geometric shape such as a hexahedron or cylinder, have often been rejected for lack of creativity without any clear evidence.

For this reason, so-called minimalist designs, which pursue minimal and simple decoration, were rejected based on the ground of lack of creativity, irrespective of the type of products.

According to the revised Guidelines, however, when KIPO rejects a design application for lack of creativity, it now must present supporting evidence, unless it is obvious that the design is represented by a common technique in the field.

Standard for unity of partial design is alleviated

In the past, in cases when a partial design application included two or more parts of a product design which are physically separated, the application was considered to relate to one design only when the parts were recognised as having unity in creation of the design as a whole. Otherwise, the application was rejected since it could not be viewed as claiming one design.

According to the revised Guidelines, if each part of a design is not recognised as having unity of creation as a whole but carries out one function, the parts are considered to have unity in function, and thus the partial design application is recognised as claiming one design.

Scope of product for design is broadened

Collections of powder or granules were not recognised as products of designs in the past. However, solidified and shaped objects, such as sugarcane and solid cement, can now be recognised as products of designs.

Scope of similarity of automobile parts is narrowed

According to the revised Guidelines, when determining similarity of designs regarding automobile parts, the scope of protection of the prior-registered or used design is viewed narrowly considering the technical characteristics of the automobile field.

With the above change in the Examination Guidelines, it is now easier to have a design application regarding automobile parts registered.

Min Son

HANOL Intellectual Property & Law
6th Floor, 163, Yang Jae Cheon-Ro, Gang Nam-Gu
Seoul 06302, Republic of Korea
Tel: +82 2 942 1100
Fax: +82 2 942 2600
hanol@hanollawip.com
www.hanollawip.com


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