Utility Model

The Korean system is characterized by:

(a) First-to-File Rule; (b) Publication of Unexamined Application; and (c) Request for Substantive Examination

The procedures for registering a utility model are substantially the same as that of patent except for some notification periods.

(a) Applicant

Either the inventor or his or her assignee can file a utility model registration application for the invention with KIPO. The applicant may be either a natural person or a juristic person.

(b) Documents Required

i) an application stating the name and address of the inventor and the applicant (including the name of a representative, if the applicant is a juristic person), the date of submission, the title of the invention, and priority data (if any);

ii) a specification setting forth the following matters: the title of the invention; a brief description of drawings (if any); a detailed description of the invention; and claim(s)

iii) drawing(s);

iv) an abstract;

v) 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

vi) a power of attorney, if necessary.

(c) Claim of Priority
In order to enjoy the priority right, an application should be filed in the Republic of Korea within 1 year from the filing date of the priority application. The priority document above mentioned should be submitted within one year and four months from the priority date. If the priority document is not submitted within that period of time, the claim of priority will become null and void

Applications that have not yet been examined will be automatically laid-open in the official gazette called "Utility Model Laid-open Gazette" after 18 months from the filing date in the Republic of Korea or, if the right of priority is claimed from an earlier foreign filing, from the priority date.

The laid-open publication may be made, upon the request of the applicant, prior to the eighteen month period. This will provide an earlier protection to a utility model registration application which is being infringed.

Once a utility model registration application has been laid-open, any documents relating to the application are made available for public inspection. Furthermore, any person may submit to the Commissioner of KIPO information relevant to the patentability of the invention concerned together with any supporting evidence.

The Utility Model Act offers a special legal effect upon a laid-open utility model registration application: under Article 65(1), if the applicant sends a warning letter to an alleged infringer after his application has been laid-open, any subsequent computation of a reasonable amount of compensation will be reckoned from the date when the infringer receives the warning letter. The compensation, however, can be collected only upon the publication after examination of the utility model registration application.

(a) Request for substantive Examination

A utility model registration application will be taken up for examination only if a request for examination is made either by the applicant or by any interested party within 5 years (3 years for a utility model)  from the filing date of the application. If no request for examination is made within this five-year period, the utility model registration application is deemed to have been withdrawn.

(b) Requirement for Registration

For a utility model to be registered under the Utility Model Law, it should meet the following requirements:

i) It should fall under the definition of invention under the Utility Model Act,
ii) It should have Novelty, Industrial Applicability, and Inventive Step, and
iii) It should not fall into any of the categories of unregistrable utility model prescribed in Article 38 of Utility Model Act.

If the examiner finds a ground for rejection of a utility model registration application, a notice of preliminary rejection will be issued, and the applicant will be given an opportunity to submit a response to the preliminary rejection within a time limit designated by the examiner. Such time limit is extendable upon the request for an extension by the applicant.

In responding to the preliminary rejection, the applicant may file an argument with or without an amendment to the specification and/or claims. If the examiner determines that the argument is without merit and the ground for rejection has not been overcome, he will issue a notice of final rejection of the utility model registration application

When a utility model registration applicant receives a notice of decision to grant a utility model registration he should pay, as a registration fee, the first 3 years' annuities within 3 months from the date of receipt of such notice.

In case he fails to pay the registration fee within the three-month period the registration can still be made by paying twice the usual fee within 6 months after the expiration of the three-month period. Therefore, if the registration fee is not paid within 9 months from the date of receipt of a notice of decision to grant a utility model registration, the utility model registration application will be deemed to have been abandoned.

Where the examiner finds no grounds for refusal of a utility model registration application, KIPO publishes the utility model registration after the utility model registration applicant pays the registration fee. Once a utility model registration has been published in the Utility Model Registration Gazette, any person may file an opposition against the registration of the utility model within 3 months from the publication date. However, the opposition system will be abolished as from July 1, 2007. Instead of the opposition, the interested party will be able to demand a trial for invalidation of a utility model after the utility model is published in the Gazette.