KOREAN INDUSTRIAL DESIGN : SUBSTANTIVE EXAMINATION SYSTEM
The Korean Design Substantive Examination System is a process implemented by the Korean Intellectual Property Office (KIPO) to evaluate the novelty and design characteristics of design applications. It is a part of the overall design registration process in South Korea.
1. Filing an Application
(1) Documents required
A person who wishes to obtain a design registration must submit the following documents to the Commissioner of KIPO:
(a) an application stating the name and address of the creator and the applicant (including the name of a representative, if the applicant is a juristic person), the date of submission, the article that is the object of the design, the number, country, filing date of earlier application (if the right of priority is claimed);
(b) reproductions of the design;
(c) if the right of priority is claimed, the priority document which is a certified copy of the priority application together with its Korean translation; and
(d) a power of attorney, if necessary.
Documents (a) and (b) above must be submitted at the time of filing the design application. The name of a representative of the applicant may be supplemented at a later time. The priority document and power of attorney can be submitted after the filing of the application.
(2) Claim of Priority
The right of priority may be claimed for a design application under the Paris Convention or international treaties such as on a bilateral or multilateral agreement. A person claiming a right of priority under paragraph (1) of this Article shall file an application for design registration within six months of the filing date of the earlier application that serves as the basis for claiming the right of priority
(3) Drawings
Drawings appended to a design application should contain:
(a) the article that is the object of the design
(b) a description of the design and essential components of the creation
(c) serial numbers of the design (only if the application is for multiple design registrations)
The description of a design is not as important as the specification of a patent or utility model application so long as the drawings of the design are correctly and properly prepared. An applicant for design registration may submit a photograph or a sample of the design instead of drawing(s).
Drawings may contain a prospective view, a front view, a rear view, a right side view, a left side view, a top view, a bottom view and other views (e.g. a sectional view) if necessary or useful in describing the design. Where the article representing the design is of a flat shape, only the top and the rear views need to be included in the drawings.
2. Formality Examination
Once a design application is submitted to KIPO, it will be checked for all of the formal requirements necessary to accord a filing date of the application. Under Article 2(1) of the Enforcement Regulation of the Act, the application will be returned to the applicant without an application number and considered not to be submitted in any of the following cases:
1) where the kind of application is not clear;
2) where the name or address of a person (or juridicial person) who handles the procedure (i.e., the applicant) is not described;
3) where the application is not written in Korean;
4) where the application is not accompanied by drawings;
5) where the article(s) in which the design is embodied is not described; or
6) where the application is submitted by a person who has no address or place of business in the Republic of Korea, without a representative addressed in the Republic of Korea.
Once the application has fulfilled the formal requirements, KIPO assigns an application number and examines whether other formal requirements under the Act have been met or not. The procedure dealing with the formality examination of a design application is the same as that of a patent application.
3. Publication of application
A design application may, upon the request of the applicant, be published in the official gazette entitled "Design Laid-open Gazette". Such request for publication may not be made once the applicant has received a copy of the first final decision of approval or rejection of application. Once a design application has been made open to the public, any person may submit information relevant to the registrablility of the design together with any supporting evidence.
After an application is laid open, the applicant may give a written warning to alleged infringers indicating that an application for design registration has been filed. An applicant may demand compensation from a person who has been warned or who has worked a filed design or similar design knowing that it has been laid open. The amount will be equivalent to what the applicant would normally receive for working the registered design from the date of warning or the date on which the person became aware of the filing of the design application to the date of registration of the filed design.
4. Substantive Examination
1) Initiation of Examination
Unlike a patent or utility model application, a request for examination of a design application is not required for the initiation of a substantive examination. Design applications are automatically examined in the order of the filing date thereof. It generally takes about one year or so to complete the examination from the filing date. A request for expedited examination may be made in either of the following instances;
(a) where a person other than the applicant is considered to commercially or industrially work the invention claimed in the design application after the laying open of the application; or (b) where urgent processing of the design application is considered necessary as prescribed by Presidential decree.
2) Requirement for Registration
To be registerable under the Design Act, a design should meet the following requirements:
(a) It should fall under the definition of a design given in the Act. A design which is eligible for protection under the Act is defined as "the shape, pattern, color or any combination of those in an article which produces an aesthetic impression on the sense of sight. Therefore, to be protected under the Act, a design should be embodied in an article. The term "article" is generally referred to as a tangible, movable and independent thing.
(b) Industrial applicability: the article(s) in which the design is embodied should be able to be mass-produced in an industrial method.
(c) Novelty: the design should not be identical or similar to a design which was publicly known or worked or published domestically or internationally before the application for design registration.
(d) Creativity: the design should not be easily created by a person with ordinary skill in the relevant field from the publicly known designs or shape, pattern, color or any combination of these which are widely known in the Republic of Korea.
(e) Furthermore, it should not be any of the unregistrable designs provided in Article 6 of the Act, such as designs which disturb the public order or morality, designs which are identical to or similar to the flag, national emblem or badges of public organizations, designs liable to create confusion over articles connected with another person's business, or designs consisting solely of a shape that is essential to secure the functions of the article, etc.
Even if a design was published or known or worked by the applicant himself prior to the filing date of the design application thereof, it is deemed to be novel provided that the design application is filed within 6 months after the disclosure was made.
A person intending to take advantage of the above paragraph shall submit an application for design registration specifying the purport of such intention, and submit documents proving the relevant facts within thirty days of the date of application for design registration.
5. Registration
If the examiner finds no ground for refusal or he is persuaded by the applicant's argument and/or amendment, he will render a decision to grant registration. There is no publication for opposition of a design application under the SES after the substantive examination. However, upon the registration, the design registration is published in the official gazette called "Design Registration under the SES Gazette".
Read more about Korean Design here:
Korean Design System
- What is a Korean Industrial Design?
- Information on the Design System
- Requirements for a Korean Design Definition
- Prerequisites for Acquiring Design Rights in Korea
Application Procedure for Design in Korea
- Substantive Examination System
- Non-Substantive Examination System
DAEILPAT
Design
The road to securing design registration in Korea is often as unique as your products, and we are here to guide you in the right direction.
Establishing design protection for the design of your products can have a significant commercial impact on your business, especially in today's world where product design plays a crucial role in captivating consumers and differentiating your offerings from competitors.
Design protection can be established for various products. While obvious examples include furniture, jewelry, and industrial equipment, it's important to note that design protection can also be applied to other products. For instance, it can be extended to the graphical user interface (GUI) of a software product or the pattern of a fabric. We recommend registering a design if you have invested time and resources into developing the design of your product and if it adds value to your offering.
Combining design protection with patent protection can provide robust protection for your product. This approach allows you to safeguard both the outer appearance and the technical functionality of your product, ensuring comprehensive protection.
Remember, protecting your designs in Korea can help safeguard your business interests and create a competitive advantage. By taking the necessary steps to register your designs and enforce your rights, you can maximize the commercial value of your products in the Korean market.
Learn more about Designs Registration and Protection in Korea
Benefits of Protecting Your Product's Visual Expression with a Design Registration in Korea
Registering your design in Korea offers numerous advantages for foreign companies entering the market. Here are the key benefits of design registration:
Market Positioning: By registering your design, you strengthen your market position in Korea. It enables you to prevent others from using your design, establishing your uniqueness and exclusivity. This sets your products apart from competitors and enhances your brand image.
Customer Confidence: A registered design adds value for both your company and customers. When customers see your registered design, they can trust that the origin and quality of the products are guaranteed. Over time, customers may develop a preference for your products, associating the design's quality with your brand. This builds customer loyalty and can drive repeat purchases.
Legal Protection: A strong design registration provides legal protection in Korea. It not only safeguards against identical designs but also against those that give the same overall impression. This broader protection ensures that competitors cannot create similar designs that confuse consumers. In case of infringement, you have the right to take legal action and seek financial damages from the infringing party.
Competitive Advantage: Design registration gives you a competitive edge in the Korean market. It prevents competitors from copying or imitating your design, preserving your unique selling point. This exclusivity can result in increased market share, higher sales, and improved profitability.
Brand Recognition and Value: A registered design contributes to brand recognition and enhances the value of your company's intellectual property portfolio. It demonstrates your commitment to innovation, design excellence, and protecting your creative assets. This can attract potential investors, partners, and licensees who value strong IP protection.
Licensing and Royalty Opportunities: A registered design opens up opportunities for licensing agreements. You can grant others the right to use your design in exchange for licensing fees or royalties. This can be a lucrative revenue stream and allow your design to reach a wider market without compromising your exclusivity.
By securing design registration in Korea, foreign companies can position themselves for success in the market. It establishes legal protection, enhances brand value, builds customer trust, and provides a competitive advantage, all of which contribute to long-term business growth and profitability.
