1 August 22, 2008 SAM SUP MOON Korean Intellectual Property Office (KIPO) Design Protection System in Korea

Contents Design Protection System in Korea Ⅰ Trend of Design Application & Registration Ⅱ Substantive Examination System (SES) Ⅲ Non-substantive Examination System (NSES) Ⅳ

I. Design Protection System in Korea Main Characteristics of the Korean Design Act First-to-file System First-to-file System Dual System for Design Registration *Substantive Examination System (SES) for the most part of products (80%) *Non-Substantive Examination System (NSES) for the limited products, like clothes, textile patterns, etc. (20%) Dual System for Design Registration *Substantive Examination System (SES) for the most part of products (80%) *Non-Substantive Examination System (NSES) for the limited products, like clothes, textile patterns, etc. (20%) Secret Design on Request *be kept secret up to 3 years on request Secret Design on Request *be kept secret up to 3 years on request Post-grant Opposition System under the NSES Post-grant Opposition System under the NSES

* Korean Design Act - Enacted in 1961 as Act No Recent revision was made on February 29, 2008 as Act No * Organization of Design Examination Division (KIPO) - 4 Directors, 27 Examiners, 17 Supporting staffs (including 5 specialists on Design Classification) - Total number of staffs : 48 (as of August 1, 2008) General Observation of Korean Design System (1)

General Observation of Korean Design System (2) - Definition of Design The shape, pattern, color or any combination thereof in a whole or part of a product and typeface which produces an aesthetic impression in the sense of sight Definition of Design Registrable Design Whole or Part of a Product (including icons, GUI) Components of a product Typeface

General Observation of Korean Design System (2) Whole product designPartial product design

General Observation of Korean Design System (2) - Partial Product Design -

General Observation of Korean Design System (2) - Partial Product Design for Computer Icon, GUI -

General Observation of Korean Design System (2) - Design of the Set of Products - * Requirement for the Design of the Set of Products (a) sold or used together as a set of products (b) constitutes a coordinated whole

General Observation of Korean Design System (2) - Typeface -

General Observation of Korean Design System (3) - Requirement for Registering a Design - * Fall within the definition of Design * Novelty * Creativity * Industrial Applicability * Not be any of the unregistrable Design SES NSES * Fall within the definition of Design * * Not be any of the unregistrable Design Registrations under the NSES, which do not fulfill the requirements, such as Novelty and Creativity, will be invalidated through the Post-grant Opposition or Trial.

II. Trends of Application & Registration [Table 1] Applications Filed by Koreans and Foreigners (Unit : Number of Applications, Percentage) Applications ’04‘05‘06‘07 Number% % % % Designs Koreans38, , , , Foreigners3, , , , Total41, , , , [Table 2] Status of Registrations (Unit : Number of Registrations, Percentage) Year‘04‘04‘05‘05’06’06‘07‘07’08.3 Designs31,021 (9.3) 33,993 (9.6) 34,206 (0.6) 40,611 (18.7) 10,610 * Note : The figures in parentheses indicate the increase rate over the pervious year.

III. Substantive Examination System (SES) A. Filing an Application Document required (a) an application stating the name and address of the creator and the applicant, the name of the product on which the design is embodied, the claim and the priority data (if the right of priority is claimed); (b) drawings 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, if necessary; and (d) a power of attorney, if necessary

Claim of Priority * The right of priority may be claimed for a design application under the Paris Convention or based on a bilateral agreement or reciprocity. * A claim of priority in a design application can be made only if the design application is filed in the Republic of Korea within 6 months from the claimed priority date.

Drawings (or Photographs) Drawings attached to a design application should contain: (a) the name of an product embodying the design; and (b) a description of the design and the gist of the design * Drawings should contain a perspective view, a front view, a rear view, a left side view, a right side view, a top view, a bottom view and other additional views (e.g. a sectional view), if necessary or useful in describing the design. * Where the views of the product are identical or the product representing the design is of a flat shape (e.g., textile patterns), only the front view need to be included in the drawings.

Design Application

Front ViewRear View Perspective

Additional Drawing Top ViewBottom View Right Side ViewLeft Side View

Design Application

Top View Bottom View

Front View Left Side V. Bottom View Right Side V. Rear View Top View Drawings for a Whole Product Design Perspective View

Drawings for a Partial Product Design Perspective View Top View Bottom View Front ViewLeft Side V. Bottom View Right Side V.

Top View Front View Perspective View Bottom View Left Side V. Bottom View Right Side V. Drawings for a Partial Product Design Additional View

B. Formality Check * Once a design application is submitted to KIPO, it will be checked to ensure that all requirements necessary to accord the application filing date have been satisfied. * Under the Article 2(1) of the Enforcement Regulation of the Design Act, in any of the following instances, the application documents will be returned to the submitter without any application number being assigned thereto and will be treated as if it had never been submitted; (a) when the application is not accompanied by drawings (b) when the name or address of a person (or juridical person) who takes the procedure (i.e., the applicant) is not described; (c) when the application is not written in Korean; etc.

* Once the application has satisfied all the requirements, KIPO assigns an application number and examines as to whether or not other formality requirements under the Design Act have been met. * If KIPO discovers that a document or information is missing, it will issue a notice of amendment requesting the applicant to supplement the missing data within the specified period. * If the applicant does not comply with such a request within the designated or any extended period, the design application will be nullified and then considered as having never been filed.

C. Early Publication on Request * 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 decision of grant or rejection of application. * Once a design application has been laid-open to public inspection, any person may submit to KIPO information relevant to the registrability of the design concerned together with any supporting evidence.

D. Substantive Examination - Requirement for Registrating a design Unregistrable Design ; Designs which is contrary to morality and public order, etc. Unregistrable Design ; Designs which is contrary to morality and public order, etc. Industrial Applicability ; The designs should be mass-produced in an industrial method. Industrial Applicability ; The designs should be mass-produced in an industrial method. Novelty ; The designs should not be identical with or similar to the design which was publicly known or worked or published within or outside the Republic of Korea before the application for design registration. Novelty ; The designs should not be identical with or similar to the design which was publicly known or worked or published within or outside the Republic of Korea before the application for design registration. Creativity ; The design should be a design which could not have been easily created by a person having an ordinary skill in the relevant field from the shape, pattern, color or a combination thereof which was widely known in the Republic of Korea Creativity ; The design should be a design which could not have been easily created by a person having an ordinary skill in the relevant field from the shape, pattern, color or a combination thereof which was widely known in the Republic of Korea Definition of Design Article 5 of the Design Act

Electronic Design Search System

Design Protection for Product Part * To prevent infringement disputes regarding product parts and to clarify the scope of design protection, the current Design Act includes individual parts within the definition of design. * Accordingly, the handle of a coffee cup and the mouth of a bottle are registrable designs under the current Design Act.

Design Dictated by Technical Function * As it is stipulated in the Article 25(1) of the WTO/TRIPS Agreement, the Design Act doesn't provide protection for features related exclusively to a product's appearance if the product is essentially characterized by its technical function. * If a design for one such product, for example, screw, is dictated by purely by the function which the screw is intended to perform, protection for that design would have the effect of excluding all other manufacturers from producing items intended to perform the same function.

E. Rejection and Registration * If a design application falls under any of the grounds for rejection enumerated in the Design Act, the examiner must issue a notice of preliminary rejection, stating the reasons for rejection, and give the applicant an opportunity to submit a written opinion and/or amendment, within the specified time limit. * If the examiner finds no ground for rejection or he/she is persuaded by the applicant's opinion and/or amendment, he/she will render a decision to grant registration. * If the examiner considers that the grounds for rejection has not been overcome, he/she will issue a notice of final rejection of the design application.

Design Registration Certificate

Design Register

F. Appeal and Trial * The applicant may lodge an appeal against the examiner's final rejection within 30 days from the date of receiving the notice of final rejection. * Such appeal and trial procedure are conducted in the Intellectual Property Tribunal (IPT) of KIPO and the IPT's decision may be appealed to the Patent Court. * An appeal against the Patent Court's ruling may be reviewed by the Supreme Court.

Procedures for Registering a Design under the SES publication Application Substantive Examination Notification of Reason for Rejection Grant of Design Registration Rejection Registration Request for publication Correction or Amendment Payment of Fees

IV. Non-Substantive Examination System (NSES) Under the NSES, certain products such as textile patterns, which have relatively short life cycles, can be registered within 2 or 3 months from the filing date simply by formality check without prior design search.

Design registrations under the NSES, which do not fulfill the requirements, can be revoked by the Post-grant Opposition or invalidated by the Trial. Even though prior design search is not performed under the NSES, the requirements for the design registration and the effects of design rights are the same as those under the SES.

A. Multiple Application and Registration * Under the NSES, an applicant may file an application for 20 designs or less which fall under the same class in accordance with the Korean Design Classification. * The documents required, such as priority claim, drawings for the design application under the NSES are the same as those under the SES.

B. Formality Check and Registration * Applications under the NSES are also required to meet the registrability requirement, such as novelty, creativity, and industrial applicability, etc. * Furthermore, applications under the NSES should not be the unregistrable designs according to the Article 6 of the Design Act, such as designs which is contrary to morality or public order and designs which are identical with or similar to the flag, emblem of nation or public organizations, etc. * The formality check on the design application under the NSES is the same as that under the SES.

C. Publication and Post-grant Opposition * KIPO publishes the registered designs in the "Design Registration Gazette under the NSES" after the design applicant pays the registration fee. * Once a design has been published in the Design Registration Gazette under the NSES, any person may file an opposition to the design registration from the date of the registration within 3 months after the publication of registration. * The grounds for opposition are the same as the requirements of registration under the SES: novelty, creativity, industrial applicability, and other unregistrable designs.

D. Rights conferred to the design registration under the NSES * If the registration under the NSES is revoked by the opposition or invalidated by the trial, the design right will retroactively lose effect. * The rights conferred to the design registration under the NSES are the same as those under the SES.

E. Rights conferred to the design registration * The scope of design protection is determined by the terms of the description of the product in the application, the design represented in a drawing attached to the application or shown in a photograph and the explanation of the intent and purpose of the design attached to the drawing. * The owner of a design right has the exclusive right to commercially and industrially work the registered design and a similar design. * The term of a design right is for 15 years from the registration date.

E. Rights conferred to the design registration Coin BankBeer Bottle

E. Rights conferred to the design registration Car Toy

Application Order to Correct or Amend Grant of Design Registration Nullification Registration Correction or Amendment Payment of Fees Formality Check Publication Revocation Keeping of Registration Opposition to the Registration Procedures for Registering a Design under the NSES

Outline of Korean Design Protection System Designs S E S ¹ NSES ² Term of Right 15 years from the date of registration Request for Examination Not available Publication of Unexamined Application Upon the request of applicant Opposition System Not available Post-grant opposition Appeal and Trial (1) Appeal against Examiner's decision of refusal or revocation (2) Trial for invalidation of design registration (3) Trial to confirm the scope of a design right, etc.

Many thanks ! MOON, SAM SUP