デザイン (実体審査制度 下)

Currently, the Design Protection System in Korea is in transition from SUBSTANTIVE Examination System(SES) to Non-SUBSTANTIVE Examination System(NSES).

In response to the request of applicants to expediate the procedure for the registration of designs, KIPO revised the Design Law, introducing the Non-SUBSTANTIVE Examination System for some short-term life-cycle products as of March 1, 1998.

Under the NSES, applicants may get the registration within 2 or 3 months from the filing date and enjoy new procedures such as Multiple Application, and Post-Grant Opposition for their conveniency.

Even though the applications under the NSES are not examined SUBSTANTIVEly, the requirements for the registration and the effects of rights are same with those of under the SES. The registrations under the NSES which do not fulfill the requirements will be invalidated through the Post-Grant Opposition or Trial.

(a) Documents required

A person who desires to obtain a design registration must submit to the Commissioner of KIPO the following documents:

i) 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 name of the article on which the design is embodied, the claim and the priority data (if the right of priority is claimed);

ii) drawings of the design;

iii) 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

iv) a power of attorney, if necessary.

(b) 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.

(c) Drawings

Drawings appended to a design application should contain:

i) the name of the article embodying the design; and

ii) a description of the design and the gist of the design.

Drawings should 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

Once a design application has been laid-open to public inspection, any person may submit to KIPO information relevant to the registrablility of the design concerned together with any supporting evidence.

The revised Design Act offers a special legal effect upon a laid-open design application: if the applicant sends a warning letter to an alleged infringer after his design application has been laid-open, it will mean that the relevant period for computerization of a reasonable amount of compensation will commence from the date that letter is received. Such compensation, however, can only be secured upon the registration of the design

(a) 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 SUBSTANTIVE examination. Design applications are automatically taken up for examination 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 once the design application has been laid-open upon to public inspection the request of the applicant and upon showing that it is presently being infringed.

(b) Requirement for Registration

To be registerable under the Design Act, a design should be meet the following requirements;

i) It should fall under the definition of a design given in the Design Act ; A design which is eligible for protection under the Design Act is defined as "the shape, pattern, color or any combination thereof in an article which produces an aesthetic impression on the sense of sight. Therefore, to be protected under the Design Act, a design should be embodied on an article. The term "article" is generally considered as a tangible, movable and independent thing.

ii) Industrial applicability ; the designs should be mass-produced in an industrial method.

iii) Novelty ; the designs should not be identical 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.

iv) Creativity ; the design should be a design which could not have been easily created by a person having an ordinary skill inthe relevant field from the shape, pattern, color or a combination thereof which was widely known in the Republic of Korea.

v) Furthermore, it should not be any of the unregistrable designs provided in Article 6 of the Design Act, such as designs which disturb the public order or good morals and a design which is identical with or similar to the flag, emblem of nation or public organizations.

Even if a design was published or known or worked by the applicant himself prior to the filing date of the designa pplication therefor, it is deemed to be novel provided that the design application is filed within 6 months after the disclosure was made.

Any person who desire to have his design be presumed novel must submit a written statement to that effect to KIPO at the time of filing the design application. Any document substantiating such statement should be also submitted within 30 days from the filing date

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, within the specified time limit.

If the examiner finds no ground for rejection 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".

If the examiner considers that the applicant's argument is without merit and the ground for rejection has not been overcome, the examiner will issue a notice of final rejection of the design application