New amendments (the “Amendment”) to the Design Protection Act (the “Act”) became effective on July 1, 2014.The Amendment aims to provide greater protection for the creator and the applicant and to implement the Geneva Act of the Hague Agreement Concerning the International Registration of Industrial Designs (the “Hague Agreement”) in Korea. Some key changes include the following:
- Changes to Provide Greater Protection for the Creator
- StnthningtheRuintfor Ctivity(Aticle 33(2)
The Amendment has strengthened the creativity requirement for a design registration. Under the Amendment, a design registration may not be granted where the design could have been easily created using a shape, pattern, color, or a combination thereof, which has been widely known in Korea or a foreign country before the filing of the design application.
- Effect of a Previously Filed Design Application (Article 33(3))
Prior to the Amendment, a design registration was not allowed if the design was similar or identical to a previously filed design application that has been published, irrespective of whether the applicant is the same person. Under the Amendment, a previous filed design application that has been published will not prevent a design registration if the applicant is the same person.
- Related Design System (Article 33(3))
The Amendment has strengthened the protection of the creator by abolishing the “similar design” system, and instead adopting the “related design” system. Under the “related design” system, a related design which is similar to the original design of the same applicant can be granted an independent scope of protection and duration of protection.
- Extension of the Protection Period (Article 91)
The Amendment has extended the duration of protection of a design right from fifteen years from the registration date to twenty years from the filing date of a design application.
- Changes to Provide Greater Protection for the Applicant
- Exception to Loss of Novelty (Article 36(2))
Under the Act, an applicant may claim an exception to loss of novelty if the design application is filed within six months of a public disclosure of the design. Prior to the Amendment, this exception could only be claimed at the time of the filing of the design application. Under the Amendment, the applicant may claim this exception not only at the time of filing the application, but also at the time of responding to the examiner’s preliminary rejection or a third party’s opposition or invalidation action.
- Multiple Design Application (Articles 38, 41 and 65)
Prior to the Amendment, it was possible to apply for up to 20 designs of the same class in one application only if it was a non-examination application. The Amendment allows the applicant to apply for up to 100 designs of the same class in one application, irrespective of whether it is a non-examination (which is referred to as “partial-examination” in the Amendment) application. In addition, under the Amendment, if there is a ground of rejection of a certain portion of the multiple designs, the examiner may reject only such a portion, not the entire group, of the multiple designs. Furthermore, the applicant may request the Korean Intellectual Property Office (“KIPO”) to keep secret a portion, not the entire group, of the multiple designs. On the other hand, where the examiner requires the applicant to amend a portion of the multiple designs, the date of the applicant’s filing the amendments will be deemed to be the filing date of the application for the entire group of the multiple designs. If the applicant fails to file the amendments of a portion of the multiple designs as required by the examiner, the application for the entire group of the multiple designs will be rejected.
- Examiner’s Discretionary Revisions to a Design Application (Article 66)
The Amendment authorizes the examiner to make a discretionary revision to a design application without issuing a request for amendments if an obvious error is found in the application.
- Changes to Implement International Design Application Procedures under the Hague Agreement (Article 9)
- The Amendment adopts procedures and requirements that a Korean national or resident should comply with to file an international design application through the KIPO.
- The Amendment provides that the Act will apply in the examination of an international design application which designates Korea for the registration of the design while carving out certain exceptions for conflicts between the Act and the Hague Agreement.