> Korean IP system
Korean IP system
Patent & Utility Model
Purpose of the patent system
The purpose of the patent system is to accelerate the development of technology though the protection, encouragement, promotion, and utilization of inventions, and thereby contribute to the development of industry. The publication of inventions leads to the accumulation and utilization of technology and the advancement of industry. Granting exclusive rights for the commercial usage of a patented invention promotes commercialization, encourages the development of inventions, and leads to the advancement of industry.
Requirements for acquiring patent rights
A patent must have industrial applicability; it must be usable in industry. The technology must have novelty; it must not be known to the public (prior art) before an application is submitted. The technology must have an inventive step; it must not be easily derivable from prior art, even though it differs from prior art.
Effect and term of a patent right
The term of a patent right commences when the establishment of patent right is registered; it ends 20 years after the filing date of the patent application. The corresponding term for a utility model is 10 years. The effect of a patent right is subject to the principle of territoriality; that is, it is valid only in the country where the right is obtained.
Information on patent applications
Regardless of who invented the invention, the rights of an invention are given to the applicant who was the first to file the application at the patent office. If two or more applications for the same invention are filed on the same date, the applicants must consult with one another and try to come to an agreement on who may obtain the patent for the invention. If no agreement is reached or no consultation is possible, none of the applicants can obtain a patent for the invention. The first-to-file rule is practical because it grants rights for the cost of disclosing the technology and it encourages swift disclosure of inventions. This rule is in accordance with the purpose of the patent system because it aims to promote industrial advancement through the swift disclosure of inventions.
Under the first-to-invent rule, the rights of an invention are given to the actual inventor, regardless of the order in which applications are filed. This rule has the strength of protecting inventors. Private inventors who don’t own an enterprise prefer this rule. To benefit from this rule, the inventor must provide a journal of the inventive activities that led to the invention and secure witnesses of the invention. The patent office must confirm the time of the invention.
Inventions and devices
A patent right is granted for inventions, while utility model rights are granted for devices. Under the Patent Act, an invention has a higher degree of technology than a device. Definition of invention: a highly advanced creation of a technical idea using the rules of nature. Definition of device: a creation of a technical idea using the rules of nature. However, the degree of advancement is subjective, and applicants can make that assessment themselves. In other words, a creation filed as a utility model is deemed to be a device, while a creation filed as a patent is deemed to be an invention.
2. Utility Model
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 weaknesses 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.
After the repeal of the quick registration system of the utility model, which examined only the formality and basic requirements of the application, the registration after examination system was introduced so that examiners would consider the registration of a utility model only after substantive examination. The procedure 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 similar to the patent system including request for examination, official notification of reasons for rejection, and an amendment was introduced.
Purpose of a trademark system
The purpose of trademark Act is to contribute to industrial development and to protect the interests of consumers by ensuring the maintenance of the business reputation of persons using trademarks through the protection of trademarks (Article 1 of the Trademark Act).
Definition of trademark
Concept of a trademark under the Trademark Act
A trademark refers to all sensible methods of expression used to distinguish one’s goods from those of another. However, since it is difficult to protect all such methods legally, the Trademark Act places limits on the protectable constituents of a trademark. Previously, these constituents were limited to a symbol, character, diagram, three-dimensional shape, or any combination thereof, as well as color combinations of the mark. On July 1, 2007, protection under the Trademark Act expanded to include a mark formed by a single color or a combination of colors, holograms, motions, and all types of visually recognizable marks.
To reflect the ROK-EU FTA, the Trademark Act was amended to include regulations to reject a trademark application that is identical or similar to a geographical indication already protected by the FTA and Korean laws.
Additional amendments to the Trademark Act based on the ROK-US FTA permit non-visual trademarks such as sounds and smells to be eligible for trademarks. A certification mark was also introduced to guarantee the quality and characteristics of goods (enforced on March 15, 2012).
In addition, marks that do not distinguish one’s goods from another’s are not deemed to be a trademark. If a design is only used to inspire users with its aesthetic nature or as a price mark irrelevant to the identification of owners, it shall not be deemed a trademark in accordance with the Trademark Act. On the other hand, collective marks, and business emblems may be regarded as trademarks.
Concept of a collective mark
A “collective mark” refers to a mark intended to be used directly by a corporation jointly incorporated by persons who produce, manufacture, process or sell goods, or who provide services, or intended to be used by its members.
Concept of a certification mark
A “certification mark” refers to a mark used by a person who commercially certifies and manages the quality, place of origin, methods of production, or other characteristics of goods to certify that goods of others meet quality criteria, the place of origin, methods of production, or other characteristics.
Concept of a business emblem
A “business emblem” refers to a mark used by a person engaged in a nonprofit business like the YMCA or Boy Scouts to indicate that person’s business (e.g. Republic of Korea National Red Cross, Junior Chamber, Rotary Club, Korea Consumer Agency, etc.)
Extinguishment of a trademark right
Trademark rights will be extinguished as a result of the following reasons: the term of the trademark right expires as a result of the owner’s failure to renew the term; the owner abandons the trademark rights at his/her will; or the owner fails to apply for registration of the reclassification of goods within the given period for goods registered under the previous classification of Korean goods. In the case of the passing of the original owner of the trademark rights, if an application to transfer the registered trademark rights is not filed by a successor in title within three (3) years of the death of the original owner of the trademark, the trademark rights are extinguished on the day after the expiry of the three-year period following the death of the original trademark owner.
Information on trademark applications
A single application for a single trademark
According to the Doctrine of a Single Application for a Single Trademark, an applicant shall file a single trademark application for each of the classes of goods he/she has designated as prescribed by an ordinance of the Ministry of Knowledge Economy. The filing of two trademarks in one application is not permitted.
This doctrine is principally applied to an application for new trademark registration, an application for the additional registration of designated goods, and an application for renewal of the term of a trademark right.
Under the Trademark Act enacted in 1997, the “Principle of a Single Application for a Single Trademark” was abolished on March 1, 1998, while the “Principle of One Multiple Class Application for a Single Trademark” was implemented. As a result, an applicant must file an application for each trademark and designate both the trademark and service business in the application.
If an applicant designates one or more goods on his/her application, the application can be divided into two or more applications for each good or classification of goods. In other words, a divisional application does not entail a division of the trademark, but a division of its designated goods.
Application to renew the term of a registered trademark
The term of registered trademark rights is ten (10) years from the registration date. However, the term may be extended by an application to renew the term of the trademark rights every 10 years. As long as the trademark rights are in use, they are considered semi-permanent.
To renew the term of registered trademark rights, an applicant shall file an application to renew the term within one year before its expiration date. If the term has expired, the applicant may file an application to renew the term within six (6) months of the expiration date. In this case, the applicant shall pay a required negligence fine.
Definition of Design
Design in English can be defined as a broad concept including visual communication designs related to products, advertisements, graphics, and multimedia designs, as well as environmental designs related to a living space or environment.
Design, as specified in Article 2 (1) of the Industrial Design Act (hereinafter referred to as “the Act”), refers to the shape, pattern, color or combination of these in an article that produces an aesthetic impression on the sense of sight; the same applies to a part of an article and style of calligraphy.
Therefore, a design in the Act can be defined in relation to the appearance of goods (or movable property) which can be independently transacted.
Design Application Overview
Currently, the Design Protection System in the Republic of Korea is in transition from a Substantive Examination System (SES) to a Non-Substantive Examination System (NSES).
In response to the request of applicants to expedite the procedure for the registration of designs, KIPO revised the Act and introduced the NSES for some short-term life-cycle products as of March 1, 1998.
Under the NSES, applicants may be granted registration within 1 or 2 months from the filing date, as well as enjoy new procedures such as Multiple Application and Post-Grant Opposition for their convenience.
Even though the applications under the NSES are not examined substantially, the effects of rights under the NSES are identical with those under the SES. Nevertheless, the registered rights under the NSES which do not fulfill the requirements will be cancelled or invalidated through the Post-Grant Opposition or Trial.
Term of a Design right
A design right arises on the date in which the granting of the right is registered under Article 90 (1) and continues to exist until the 20th anniversary of the filing date of the relevant application of design registration application; provided that a design right to a related design registered under Article 35 expires at the end of the duration of the design right to its basic design.
Effect of a Design right
Contents of design rights
The owner of a design right has the exclusive right to the workings of the registered design and any similar designs whether it be commercially and industrially as business.
(A) “As business”
“As business” refers to all designs which are repeatedly utilized, including designs which are utilized for profit or not for profit. In other words, designs which are utilized individually, temporarily, and on one occasion are excluded.
“Working” refers to all actions which produce, use, assign, lease, import or export articles related to designs; or offers to assign or lease such articles (including exhibition to transfer or lease).
“Monopoly” refers to the rights of a registered design and its similar designs which are excluded from being worked by others.
Scope of protection of design rights
“The effect of design rights extends to not only the same design as a registered design, but also to designs similar to it since the scope of protection is narrow, and so the original purpose cannot be realized if the design rights are limited to the exact same design.
Therefore, the concept of “similarity” is defined as the extent to which the design has common homogeneity in its formative essence compared to the design represented in an article thus evoking a seemingly similar aesthetic sense.
Design system information
A design is easily copied and sensitive to trends. Therefore, it is subject to several special systems different from other industrial property right laws.
Similar design system
The similar design system features the creation of a basic design that is transformed into variations and continuously created.
As the scope of similarity is abstractive and indefinite, protection by registration is required for similar designs within the scope of similarity to prevent infringement and imitation.
Thereby, a design transformed from the basic design which an applicant has registered or filed can be registered as a similar design.
Similar design rights shall be assigned and extinguished in an indivisible combination with the design rights of the basic design.
However, it is possible to create similar design rights only by an invalidation trial or a trial to confirm the scope of the rights or to cancel the rights.
Set item design system
The Act specifies “the doctrine of one application for one design” through which an application for substantive examination design registration shall relate to only one design so as to clarify application items, accelerate examination, and also define the scope of the rights.
However, if two or more articles are exceptionally used as a set of articles constituting a coordinated whole, the set item design system is applied so that they can be examined and registered through one application.
Items for a design of a set of articles (Addendum 5 of the Enforcement Regulation of the Industrial Design Protection).
Secret design system
A design is easily copied and sensitive to trends, therefore, sometimes if it is disclosed that the owner of the design rights to a design has not completed the proper preparations for a business, the owner may lose all business profits due to imitation by others.
So, an applicant may request that the design be kept secret for a period of three years from the date upon which it is registered or protected.
The request for the undisclosed design must be made from the filing date of the application to the payment date of the initial registration fee so that the applicant can efficiently manage the situation. As aforementioned, the applicant may reduce or extend the period by a maximum of three years.
In any of the following cases, the Commissioner of the Korean Industrial Property Office shall allow persons to have access to a design when:
- The request is made by a person who has obtained the consent of the owner of the design rights;
- The request is made by a party or an intervener in examination, trial, or litigation proceedings;
- The request is made by a person who has clearly stated that he/she was warned about infringement of the registered design; or
- The request is made by a court.