Last revised October 10, 1996.
In order to obtain a design registration, an application for design registration must be filed as prescribed under the Law. In order to file an application for design registration, a request prepared in conformity with the application formalities as prescribed under the Law must be submitted together with a drawing of the design for which registration is sought to the Commissioner of the Patent Office.
If any legal defects in the request or drawing are found, a notification of reasons for refusal is sent to the application, or according to circumstances the application is not accepted.
If an applicant does not have his domicile or residence in Korea, an application must be made through a design administrator who has his/her domicile or residence in Korea. This is to facilitate communication between the applicant and the Patent Office.
An application filed with the Application Division, is allocated an application serial number after being recorded into a file, and the number is notified to the applicant later.
A formality check is made to see whether the application meets the prescribed formality requirements. If any defects are found, a notification is sent to the applicant, and the applicant can make amendments. If the defects are not rectified, the application may be invalidated.
A design application is received by the the Application Division and assigned an application number in the order of receipt. The application number is notified to the applicant.
The formality of the application is checked to see if the documents concerned are in conformity with the prescribed formalities and that all necessary documents are attatched. When the application is found to be incomplete, a notification to that effect is sent to the applicant.
A person desiring to make an application for design registration is required to submit a request and drawings. The scope of the design registration is determined by the description of the request and drawings.
For example, if the name of an article of design written in the request was not on the basis of the classes of articles by an ordinance of the Ministry of Trad and Industry, it may constitute a reason for the refusal of the application. Also, in priciple, the drawings must describe one specific design represented by a discrete article using six views of the article - in accrodance with the art of orthographic projection drafting. If there are some contradictory points among the six views, these may constitute a reason for the refusal of the application on the grounds that the design is an unclear and not clearly specified. The existence of any other unclear statement in the request, drawings, etc. may also constitute a reason for the refusal of the application.
(1) Utility of design
An application for design registration is required to relate to a single design(corresponding to an article in the classes of articles prescribed by an ordinance of the Ministry of Trade and Industry). Accordingly, a design which can be recognized as representing a plurality of articles or parts, etc. of an article which cannot become an object for a single transaction under a normal state is judged to be the one indicating a plurality of designs under one application or indicating something which does not constitute a design.
An application in which a plurality of designs are indicated by mistake may be divided into separate applications covering each design.
(2) Application for design of a set of articles
As an exception to the provisions concerning unity of design, in the case of a design of articles of two or more kinds that are customarily sold or used together, an application for design registration may be made as for one design, provided that the set of articles is a coordinated as a whole.
(3) Application for similar design registration
A design which is similar to a owner's registered design may be registered as a similar design to the registered design as the principcal design.
When a person desires to obtain a similar design registration, he is required to describe in the application the number of his/her original design registration(principal design) or the number of his/her pending application for principal design registration in which said similar design is to be incorporated.
An application for similar design registration, is allowed to be registered as a similar design only if it is similar to the applicant's own pricipal design
In order for an application for design registration to be granted registration, the request, drawings, etc. must meet to the prescribed formality requirement and, in addition, the design must fulfil the substantial requisites as a design which are mentioned below.
A design is inseparable from an article. Accordingly, an application for a design representing a mere shape or pattern or part of an article, etc. which cannot be an object for transaction in itself is refused on the grounds that it is not the article or that the article does not constitute an article under the Law.
A design must be observed by the naked eye. Accordingly, an application for a design representing an extremely tiny thing, a thing in powder state, gas, liquid, etc. which cannot be observed as a specific shape is rejected on the grounds that the design has no observability through the sense of sight.
A design must create an aesthetic feeling. Accordingly, an application of a design representing an extremely discorded external appearance or a shape lacking unity is refused on the grounds that the design lacks an aesthetic feeling.
A registrable design is required to have novelty. Accordingly, an application of a design which is identical with or similar to the designs falling under the category mentioned below is refused on the grounds that the design has no novelty.
When a design could easily have been created, prior to the filling of the design application, by a person with ordinary skill in the art to which the design pertains, on the basis of a shape, pattern or color or a combination thereof widely known in Korea, a design registration is not effected for such a design.
In the case of a design of an article which has been created as a single piece of work, such as an artistic work or which is unfit for repeated mass production, an application therefor is refused on the grounds that it is not intended for industrial use or it is unable to be industrially used. Also, in cases where the figures in the drawings are inconsistent with each other, or there are contradictory points in the relateions between the explanation of an article and drawings, the application for a design registration is refused on the grounds that it does not enable one to recognize any specific and concreate design and hence cannot be industrially used.
A design liable to contravene public order or morality and a design liable to give rise to confusion with respect to articles connected with any other person's business may not be allowed for registration.
When two or more design applications relating to the same or a similar design are filed on different dates, only the first application is entitled to obtain a design registration.
Accordingly, there are cases where even if a design has been created at an earlier date, if an application of the design is delayed, the application is refused for the reason of the existence of another person's earlier application for identical or similar design.
An applicant may request the laying open of the his/her application. Where the request for the laying-open of application is made , the Commissioner of the Korean Patent Office shall lay open the design application in the Design Gazette.
But, the Commissioner of the Korean Patent Office may not lay open the application in case where the applied design falls under any of the following : 1) liable to contravene public order or morality or 2) should be kept secret.
The request for the laying open of application will not available after the initial certified copies of the decision on the application for the design registration is transmitted.
After an application is laid open, the applicant may give warning to a person, who has commercially or industrially worked the filed design or a design similar thereto, in writing indicating that it is a design for which an application for resistration has been filed.
The applicant may demand a person, who has been warned, to pay compensation in an amount equivalent to what he would normally receive for the working of the registered design or a design similar thereto during the period from the warning or the time when he/she knows the fact that the design application has been filed to the time of the registration of the filed design.
The right to demand compensation may be exercised only after the registration of the filed application. And the exercise of the right to demand compensation will not preclude the exercise of the design right.
The article 30 of the revised law, which is effective on July 1, 1996, allows the applicant to speed up the examination process, by obtaining preferential examination if the design is evidently being infringed by third party after the design application has been laid-open.
When an examiner finds a reason for refusal, he prepares a notification of the reason for refusal and sends it to the applicants, and gives them a chance to submit argument within the designated period.
In the case of foreign applicants, there are a relatively large number of cases where their design applications are refused for the reasons that the naming of an article of design is incomplete and representation by drawings is incomplete. The refusal based on incomplete drawings, in particular, results from the fact that the way of making representation by drawings is different from those in other countries.
When an applicant has received a notification of the reason for refusal, he/she may try to overcome the reason for refusal by submitting an argument and/or an amendment, if necessary, within the designated period for the applicant.
The reasons for refusal stated in the notification should be scrutinized and the contents of the reason for refusal pointed out by the examiner shall be clearly understood. If there are some unclear points, the applicant should contact a design administrator or directly ask the examiner for explanantion through the design administrator.
When a cited reference of a design is shown, the contents of the cited design should be compared with the design of the application.
When important points of difference are found as a result of the comparison, and the applicant is unable to accept the examiner's reason for refusal, an argument should be submitted.
When the reason for refusal is related to formality requirements, such as incomplete drawings, an amendment with respect to the incomplete parts pointed out by the examiner should be submitted.
When the reason for refusal could affect the contents of the right such as changing an independent design into a similar design or deviding it into a plurality of designs, it is better to respond to the notification after consultations with a design administrator.
When an amendment or argument is translated into Korean, close contact should be kept with a design administrator because it sometimes occurs that the contents of the original manuscript fail to be correctly translated
Making an amendment to the request and drawings is a very effective means to eliminate the reason for refusal. However, such amendment is subjected to limitations with respect to time and contents as shown below.
When an amendment has been required by a notification of the reason for refusal, the amendment needs to be made within the period designated in the notification. However, the applicant's voluntary amendment may be made until a notification of the ruling is served.
An amendment which is deemed to change the subject matter beyond that in the original request and drawings is declined by decision on the grounds that such amendment constitutes a change of the subject matter.
When the examiner finds no reason for refusal with respect to a design application or when the reason for refusal has been eliminated by a reply of the applicant, he/she issues a decision of design registration
In the design registration system, there is no unexamined publication system nor publication for opposition system unlike in the patent system.
The registrated design is published in the Registered Design Publication after the registration of establishment of a design right. Accordingly, when a person is dissatisfied with the registration, he/she must make a demand for a trial for invalidation of the design registration concerned.
A decision of refusal is made when the reason(s) for refusal found by the examiner in charge is not resolved by written argument or amendment presented by the applicant(or no response is made by the applicant).
The registration of establishment of a design right is made when an applicant who has received a certified copy of decision of registration pays the registration fee after the date of receipt of such copy.
The design right gives an owner of the design right the exclusive right to commercially work the registered design and designs similar thereto, for a period up to 10 years from the date of the registration.
The scope of a registered design shall be decided on the basis of the statement in the request and the design represented in the drawing.
The working of a design means any act of manufacturing, using, assigning, leasing, importing, or offering for assigning or leasing ( including the displaying for the purpose of assignment or lease) the article to which the design has been applied.
If the applicant is dissatisfied with the decision, he/she may appeal to the Department of Appeals and Trials within 30 days form the date of transmittal of the certified copy of the decision.
If a person upon whom the decision of the appellate trial is given is dissatisfied with it, he may bring a final appeal in the Supreme Court within 30 days after he is served a copy of the trial decision only in case where the final appeal is brought by the reason that the decision on trial is in contravention of laws and regulations.