Several amendments to the Design Protection Act were published on March 21 2017. The amendments will come into effect on September 22 2017.

Grace period for design applications extended

Under the existing act, a design will not be deemed to lose novelty over an identical or similar design provided that the application for the design is filed within six months of the date on which the identical or similar design was first laid open. To take advantage of this grace period under the existing act, the applicant must claim the novelty grace period when filing:

  • the application (documentation of the previous disclosure can be submitted within 30 days of the application date);
  • a response to an office action issued by the Korean Intellectual Property Office (KIPO);
  • a response to an opposition filed by a third party; or
  • a response to an invalidation action filed by a third party.

The amended act extends the six-month grace period to one year. The amendment also replaces the text "when filing a response to an office action issued by KIPO" with "until KIPO issues a final decision whether to grant a design registration". As such, an applicant will be able to claim the grace period at any time while the application is pending.

Proof of priority eased

Under the existing act, in order to claim priority an application must include drawings that are substantially identical to the drawings in the foreign priority application and a copy of the priority application certified by the foreign government.

Under the amended act, KIPO will accept certain other documents to confirm the details of the foreign priority application. By this amendment, applicants will be able to use the World Intellectual Property Office's Digital Access Service to submit priority documents (the service allows priority documents to be securely exchanged between IP offices directly).

Increased penalties

The fine for perjury by a witness, expert witness or interpreter under oath before the Intellectual Property Trial and Appeal Board (IPTAB) will be increased from KRW10 million (approximately $9,000) to KRW50 million (approximately $45,000).

The fine for falsely indicating that a design has been registered or applied for will be increased from KRW20 million (approximately $18,000) to KRW30 million (approximately $27,000).

The fine for fraudulently obtaining a design registration or an IPTAB decision related to a design will be increased from KRW20 million (approximately $18,000) to KRW30 million (approximately $27,000).

For further information on this topic please contact Sung-Nam Kim or Jason J Lee at Kim & Chang by telephone (+822 3703 1114) or email (snkim@kimchang.com or jlee4@kimchang.com). The Kim & Chang website can be accessed at www.kimchang.com.

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