Design rights granted while claiming the Korean novelty grace period have full-scope enforceability
Managing IP is part of the Delinian Group, Delinian Limited, 4 Bouverie Street, London, EC4Y 8AX, Registered in England & Wales, Company number 00954730
Copyright © Delinian Limited and its affiliated companies 2024

Accessibility | Terms of Use | Privacy Policy | Modern Slavery Statement
Expert AnalysisLocal Insights

Design rights granted while claiming the Korean novelty grace period have full-scope enforceability

Sponsored by

hanolip-400px.png
woman-5500367.jpg

Min Son of Hanol IP & Law explains how the timing of a claim for novelty affects the procurement or enforceability of design rights after a ruling on a case with a surprising twist

The Supreme Court of Korea ruled on an interesting design case on February 23 2023 (Supreme Court Decision 2021Hu10473).

In Korea, the grace period for novelty of a design application is 12 months, like in a patent application. However, unlike in patent cases, this claim can also be made at a later stage, such as during an invalidation trial.

Thus, sometimes when an invalidation action is brought together with an infringement action (or with a confirmation-of-scope trial which seeks a declaratory judgment regarding the scope of a granted design), the outcome of the action in its entirety can be reversed at the last minute.

Background

In the above case, before filing a design application, the applicant disclosed the design by sending photos to an online sales distributor that had no obligation to maintain confidentiality. The design application was granted after substantive examination. No prior art was discovered during the examination, nor did the applicant claim the grace period until registration.

Later, the applicant (now the design right holder) identified a potential infringer and filed a confirmation-of-scope trial with KIPO seeking a decision that this potential infringer’s design belongs to the scope of his registered design.

A twist in the case

In the trial, the defendant argued that because his design had already been publicly disclosed, he had not infringed the plaintiff’s design right and his product lay beyond the scope of the registered design. This kind of ‘practising a prior art design’ defence is accepted in Korean infringement courts and similarly in confirmation-of-scope trial courts. Having succeeded in this defence, the defendant prevailed at the trial court (July 14 2020) and the appeal patent court (May 7 2021).

However, after the defendant prevailed at the confirmation-of-scope trial, he filed a separate invalidation trial against the registered design arguing a lack of novelty based on the same disclosed design (September 8 2020).

Here, a surprising twist occurred: the design right holder claimed the novelty grace period at the invalidation trial. In Korea, it is possible to claim the novelty grace period during an invalidation trial but not in a confirmation-of-scope trial. After review, the trial board accepted his grace period claim, and, as a result, the invalidation request was denied (February 25 2022). At the time, the confirmation-of-scope case was pending at the Supreme Court, where the design right holder appealed.

After the design right survived the invalidation trial, the Supreme Court denied the potential infringer’s ‘practising a prior art design’ defence at the confirmation-of-scope litigation, reasoning that by legitimately claiming the novelty grace period, the design had not lost its novelty. The potential infringer lost and the court stated that its ruling was well suited in balancing the right holder’s interest with the public interest.

Key takeaways

In Korea, applicants and right holders can claim the novelty grace period in design cases during prosecution or even after the design’s registration when responding to an invalidation action or opposition, which can sometimes be a game changer in a case such as the above.

Another item of note in connection with this issue, and a very useful tip, is that there is a gap between the novelty grace period (one year) and the priority claiming date (six months) in Korea. Design applications can claim priority if the first application was made within six months. Even if an applicant misses the deadline and the design was disclosed or already on the market, it may be possible to obtain a design right by claiming the novelty grace period instead. One should know, however, that if the design application or the registered design was published in another country, it is not possible to claim such novelty grace period.

In a sense, it may not be desirable in terms of system stability that the procurement or enforceability of design rights depends on the timing of claiming novelty. This problem is well noted, and discussion is under way to relax the requirements for claiming the novelty grace period in Korea.

more from across site and ros bottom lb

More from across our site

Daniel Zohny, former head of IP at world football governing body FIFA, has joined Abion as its global head of brand protection
Lawyers explain how Colombia’s willingness to grant preliminary injunctions and a looming compulsory licence have affected their firms’ workloads
We provide a rundown of Managing IP’s news and analysis coverage from the week, and review what’s been happening elsewhere in IP
Former Jenner & Block litigators say they plan to capitalise on a ‘huge uptick’ in life sciences work after joining Fish & Richardson’s newly formed life sciences industry team
Pravin Anand and Vaishali Mittal of Anand & Anand explain how they helped Swiss pharma company Vifor secure a landmark win against generic companies in India
Malisheia Douglas, who spent six years at Eaton Corporation, said she was attracted by the firm's global footprint
The European Parliament has voted in favour of overhauling the SEP framework, a proposal that has sparked deep division among patent owners and implementers
Daniel Poh talks about his journey to becoming managing partner and how firms can win new business from Chinese companies
Missing a deadline can have serious consequences but law firms should consider being lenient to those responsible
Each week Managing IP speaks to a different IP practitioner about their life and career
Gift this article