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