Subject to Utility Model

Under Korea law, unlike patents, the subject of utility model is limited to the creation of a technical idea using the rules of nature regarding the shape, structure, or combination of subjects. As such, invention of method, goods without specific shape are not subject to protection.

Current Utility Model Law

With the shortening of the pendency period for patent applications, the merits of the quick utility model registration system (registration before examination) are also diminishing, while the weaknesses of the system are standing out. These weakness include the abuse of obtaining registration without examination, the difficulty of a complicated examination procedure for applicants, and the decline of examination efficiency. To resolve these problems, the utility model system has been replaced by a system of registration-after-examination. 

Main revised content

After the repeal of the quick registration system of the utility model, which examined only the formalities and basic requirements of the application, the registration-after-examination system was introduced so that examiners would consider the registration of the quick registration system such as the basic requirements examination, the TES (Technology Evaluation System) after examination, and the request for correction system were all repealed. An examination procedure is now similar to the patent system including requests for examination, official notifications of reasons for rejection, and amendment practice was introduced.

Unregistrable Designs

Designs which are similar to national flags, national emblems, indications of international organizations, medals of honor, etc.

- Designs which are liable to contravene morality or public order.
- Designs which are liable to cause confusion with the articles related to the business of others
- Designs which are dictated solely by the function of the article to be protected

Examination-free Designs for Goods of a Short Life Cycle

Designs for the below indicated goods shall be granted free of substantive examination.

- Processed foods. Items of preference
- Clothing
- Accessories (clothing)
- Accessories (ornaments)
- Bags
- Parts of clothing or ornamental accessories
- Shoes
- Healthcare goods for home use
- Wedding or funeral products
- Small home organization goods
- Teaching goods
- Office supplies
- Advertisement goods
- Electric calculators
- Bedding goods, floorings, curtains, etc.
- Papers for stationery, printed matters, etc.
- Packing materials, packing containers, etc.
- Woven fabrics, knitted fabrics, synthetic fiber fabrics

For those examination free goods, one application may cover several designs of different goods not exceeding twenty items, unlike other goods for which one application may cover only one design and which must be examined before grant.

Oppositions After Grant for an Examination free Design

Any person who believes that the registration for an examination free design should not have been granted pursuant to the design law may file an opposition thereto within three (3) months after it is advertised in a design gazette and where a panel of three (3) opposition examiners determines that the opposition is sustained, the registration shall be cancelled.

Similar Design Registration

In order to encourage creation of improved designs based on a basic design and also to prevent imitation or counterfeit of a registered design of a person, applications for registration of similar designs with respect to their own basic application or registration would be allowed. The similar design registrations shall be assigned together with the basic design registration and they shall lapse when the basic registration lapses.

Design of a Set Articles

As an exception to the general rule that one application may cover only one article, a set of articles that are customarily sold or used together as a set may be covered in one application/registration, provided that the set of articles constitutes a coordinated whole, e.g., a smokers set; a coffee set comprising cups, spoons, plates and pots; a set of audio equipment's, etc.

Secret Design

Purported to the protection of a design from being imitated when a design registration is advertised in the official gazette, an applicant for a design registration may request that the design be kept secret for a period not exceeding three (3) years after the design is registered. However, the KIPO shall allow persons to have access to the design kept secret, in cases:

- where the request is made by a person who obtained the design owners consent
- where the request is made by a party or intervenor in the examination, trial or litigation related to the design registration
- where the request is made by a person who has been warned that he infringed the design registration
- where the request is made by a court

Application of Patent Law mutatis mutandis

The provisions of the patent law shall apply mutatis mutandis to the procedures for design registrations, e.g., for the trial against the examiner's decision for refusal, trial for the invalidation of a design registration, trial to confirm the scope of a design registration, trial against the cancellation decision of a design registration, etc.

First to file rule

Use of a trademark is not required for obtaining its registration. The registration would be granted to the person who first files an application where there are two or more conflicting applications, unless the examiner finds reasons to refuse its registration.

Examination before being published

To determine registrability of a trademark, substantive examination will be carried out including absolute and relative grounds of rejection, as well as formality examination. One of the characteristic features is that even a trademark registration which already lapsed or was invalidated can effectively bar another party's registration of a conflicting mark which was applied for registrationwithin 1 year from the lapse or invalidation of the trademark right.

Publication and Opposition before grant

The trademark application is made public in the trademark gazette when no reason for refusal is found, and registration is granted if no opposition is filed within a period of 60 days. When an opposition is filed by any person, and if the examiner finds the opposition to have a sufficient ground, the examiner renders a decision to refuse the registration.

Trial System

Trial against the examiners decision of refusal

- When the applicant is dissatisfied with the examiner's decision of refusal, the examiner may demand a trial against it to the Korean Intellectual Property Tribunal within 30 days after receipt of the decision.

Trial for the invalidation of a trademark registration

- When an interested party believes that a registration should not have been granted because it was contrary to the trademark law, the interested party may demand a trial for the invalidation of the registration to the KIPT. Depending upon the reasons for the invalidation, for certain cases the trial may only be demanded within five (5) years after the registration.

Trial for the cancellation of a registration for non-use

- When a registered trademark has not been used for three consecutive years, it may be cancelled with respect to those goods on which the mark has not been used, upon complaint of an interested party at the KIPT. One of the characteristic features of the system is that when a registered trademark has been cancelled for non-use, its owner is precluded from filing an application for its re-registration for three years, while to the party who prevailed in the proceeding would be given a period of three months in which only the prevailing party is allowed to file an application for a trademark which is identical with or confusingly similar to the cancelled one.

Other trials at the KIPT

- There are other trials, e.g., for the invalidation of the renewal registration of the term, for the cancellation of registration for improper use of the mark, etc.

Appeal before the Patent Court

- If dissatisfied with the decision in any of the trials at KIPT, the dissatisfied party may bring an appeal before the Patent Court and further on to the Supreme Court.

Goods Classification and a Multiple Class Application

KIPO adopted the International Classification system in 1998 and now the applicants can obtain a trademark registration for multiple classes of goods by a single application. However, in order to maintain consistency in the examination, the examiners continue to regard goods which have been classified as conflicting under the old classification system to be also conflicting under the new classification system, though they may fall in different classes.

Assignment Recording

A deed of assignment for a registered trademark must be recorded in the KIPO in order to be recognized as valid and enforceable between the parties, against third parties, in administrative agencies, such as KIPO and in the courts. The effective date of an assignment is the date for its recorded, which is the date when the deed of assignment is submitted for recording, not any other date agreed between the parties as giving rise to the effect.

License Recording

The effect of recording a license is to enable a licensee to continue using the trademark even after the trademark ownership is transferred to another party, within the terms of the license. If the owner wishes to give the licensee an exclusive right including enforcement of the trademark right against an infringer the license must be recorded, otherwise the license agreement does not give rise to an exclusive right to the licensee.

Duration and Renewal of a Trademark Registration

The registration can be renewed every ten (10) years by filing a renewal application within one year preceding the expiration. Even in the event that the owner missed the renewal deadline it can still be renewed by filing the renewal application within the grace period of six (6) months, with payment of a surcharge. No evidence of use is required for the renewal. Unlike in many countries, in Korea the renewal of a registered trademark would not be completed simply by filing the renewal application with payment of official fee. A renewal application would be examined as in the case of a new application, though the renewal would rarely be refused.

Duration and Renewal of a Trademark Registration

A three-dimensional trademark may be registered, if it is distinctive enough and is not dictated solely by the function of the goods.

Ex Parte Cases

Trial against Ruling of Refusal or Revocation (Patent Law Article 132, Clause 3)

- When an applicant has received a decision of rejection or revocation from an examiner, that person may demand an appeal within 30 days of the date of receipt of the certified copy of the examiner's decision. A provision for exception is established in cases where a person resides in an area that is remote or difficult to access. The President of the Intellectual Property Trial and Appeal Board may extend the time limit to 2 months for the benefit of a person in this situation.With respect to a patent application filed on or after July 1, 2009, the applicant may make a request for reexamination or trial, selectively, following a decision of rejection; however, the applicant is not allowed to make a request for reexamination once a request for trial has been submitted (Article 67-2 of the Patent Act).When a patent application has been reexamined at the request of the applicant and a decision of rejection is made by the examiner, the applicant may appeal against such decision of rejection by filing a request for trial.

- Under the reexamination before trial system, a patent application must be reexamined upon submission of amended specifications within 30 days after the filing of a request for trial. However, as a request for reexamination system has been introduced, even if there has not been a request for trial, a patent application with the attached amendments to specifications or drawings may be reexamined by the examiner upon request of the applicant.

Trial against Decision to Reject Amendment

- When an applicant receives a decision of rejection on the basis of his/her amendments, he/she may demand an appeal within 30 days from the date of receipt of the certified copy of the decision.

- The 2001 Revised Patent Law provides that the then existing appeal against the examiner¡¯s decision to reject the amendment be repealed and only an appeal against a decision of rejection be allowed; this is in order to expedite the proceedings of examination and hearing (Article 51 of the Revised Patent Law, Clause 3, 2001, 7. 1).

Trial for Correction (Patent Law Article 136)

- A patent holder may demand a trial for corrections to specifications or drawings for the following reasons only: (1) to narrow a claim; (2) to correct a clerical error; or (3) to clarify an ambiguous description.

- However, this provision shall not apply where an opposition to the patent is pending.

- This trial is intended to protect an invention by providing the opportunity for a patentee to make corrections on the condition that there are not any unexpected losses or damages incurred upon any third parties.

- When a trial decision stating that the corrected specifications or drawings of a patented invention become final and conclusive, the patent application, the laying-open of the decision and the registration of the establishment of the patent right shall be deemed to have been made on the basis of such corrected specifications or drawings.

- Under the present provision, a trial for invalidation can be requested independently of a trial for correction.

- When a decision that a correction of the specifications or drawings is to be invalidated becomes final and conclusive, the correction shall be deemed never to have been made.

Trial for Invalidation of Correction (Patent Law Article 137)

- An interested party or examiner may demand a trial for the invalidation of a correction, where the specifications or drawings of a patented invention has been corrected in violation of Article 136.

- When a decision that a correction of the specifications or drawings is to be invalidated becomes final and conclusive, the correction shall be deemed never to have been made.