2. Utility Model
Korea protects so called "devices"
through the Utility Model Law. Compared to an
invention which is considered as advanced technological
idea, a device only requires creation of any technological
idea based on the rules of nature that is not
based on any advanced technology.
Utility Model Applications are completely in
line with that of Patent Applications in terms
of procedure and processes such as "first-to-file"
rule, request for amendment and registration and
publication system except for the followings.
(1) Subject of Protection:
Patent protects an invention whereas utility
model protects only a device. Inventions protected
under the Patent Law can be separated as inventions
on an article and inventions on the process of
an article. Utility model only protects devices
in relations to an article and not the process
of an article. An article can also be divided
into commodities with a fixed form and substances
with no fixed form. Again, the utility model only
protects commodities with a fixed form and not
the substances without fixed form such as Agricultural
Medicine, Medicine, DNA Structures, Microorganisms,
Glass Constructions and Cement Constructions.
Korean utility model limits its protection to
devices capable to be practiced in relations to
shape, structure and mixture of commodities.
(2) Conditions of Registration:
Patentability of an invention and elements of
utility models are regulated under the same categories
such as industrial utility, novelty and inventive
steps, but the requirement of inventive steps
in utility models is applied more leniently. In
other words, the device is not considered obvious
as long as the prior arts do not allow those skilled
in art come up with the device "very"
easily. As result, one can say that the criteria
for examining obviousness in the patents and utility
models are quite different.
(3) Registration without Substantive Examination:
Since July 1, 1999, utility model applications
are registered without substantive examination
in Korea. All applications are now subjected to
only a procedural and basic examination. However,
where an applicant wishes to exercise his/her
right to file a suit against an infringer or a
third party, then a technical evaluation with
the KIPO must be filed to obtain a decision regarding
the patentability of the utility model right.
(4) Importance of a Drawing:
Drawings are submitted only on a need basis when
filing Patent Applications, whereas drawings are
an essential element and must be included in Utility
(5) International Application under PCT:
Any international applications based on Patent
Cooperation Treaty apply different rules to Utility
Model Applications when it comes to submitting
drawings. The applicant of the international Utility
Model Application must produce relevant drawings
within the time specified. In case of failure
to produce drawings in time, the application may
be considered as withdrawn.
1) Design Registrations
Design of goods and commodities ("Articles")
are protected by the "registration"
system and "first to file" rule. Therefore,
in order to protect a design, one must file an
application to the Korean Intellectual Property
Office (KIPO) and rights for designs are obtained
only when an applicant who wishes to register
a design has filed the first application with
Under the Korean Design Law, "design"
means the shape, pattern, or color, or part thereof,
or a combination of these in an article which
produces an aesthetic impression in the sense
Upon filing of a design applications subject
to substantive examination, the KIPO will examine
registration requirements such as industrial utility,
novelty, creativity and extended "first to
file" rule before granting registration,
but for design applications that are not subject
to substantive examination, satisfying only part
of the requirements is enough.
For applications subject to substantive examination,
they will be laid open to the public only upon
request made by the applicant on the registerable
application. However, the applicant may request
the KIPO to keep the application confidential
for maximum period of 3 years when lodging a Design
Rights to a design are created when the examiner
grants an application and when it is properly
registered. The term for a design is 15 years
from the date of the registration.
2) Revisions to the Korean Design Law effective
on July 1, 2001.
(1) Design as to the Part of an Article
Registration of part of an article has been adopted
to protect the creativity and its worth, and to
prevent any disputes arising out of misappropriating
certain parts of an article.
(2) Priority status to the Part of an Article
Following the adoption of allowing the registration
of part of an article, the system of granting
the status of principal application to the application
for the part of an article has also been adopted.
As a result, the filing date of the application
for the part of an article relates back to the
filing date of the principal application giving
an advantageous status.
(3) Exclusion of Functionality
Design protection does not extend to the features
of shape or configuration dictated solely by the
function which the article has to perform because
it is protected under the patent or utility model
(4) Set of Articles
Any combination of products that is used or traded
as a single product, such as set of articles or
compositions of items will now be registered as
a single application, and previous requirements
to register them separately have been abolished
for a broader protection of articles.
(5) Registration without substantive examination
In order to maintain the speedy registration
process and reduce the number of faulty registrations
resulting from the system of registration without
substantive examination, applications are now
subjected to examination as to its basic requirements
of designs, industrial utility, and non-registrable
(6) Extension of opposition period
To expand public participation on the process
of design registration without substantive examination
and to be compatible with the allowable time to
file an invalidation action to the Korean Intellectual
Property Tribunal, an opposition period has been
extended to 3 months from the registration date.
(7) Recovery of design rights
If the registration fee is not paid within the
due date, an application or a design right will
be forfeited except in a situation where such
delay in payment is not from a certain adverse
circumstance of applicant's control and the registration
fee is paid within 14 days from the time the adverse
Under Korean Trademark Law of "first to
file" rule, anyone who wishes to register
a trademark/servicemark may file an application
with the Korean Intellectual Property Office (KIPO)
regardless of whether the trademark has actually
According to the Korean Trademark Law, no specific
rights have been granted to the original user
of a trademark. However, where the trademark is
well-known or famous, its original user may be
protected as a rightful owner of that trademark.
Furthermore, any trademarks that are well-known
abroad shall also be protected as long as they
meet certain prescribed condition.
The examiner examines all trademark applications
as to whether they are distinguishable from one
another in terms of the marks and their goods
or services and whether they fall within a prohibited
category. If the examiner finds no reason to reject
the application, they will render a decision to
publish it and the application is published in
the Official Gazette for 30 days for public inspection.
Trademark rights are created when it is properly
registered upon the examiner granting an application,
and its original term of 10 years from the date
of registration is renewable for further terms
of 10 years.
Korea, in preparation of joining the Trademark
Law Treaty and the Madrid Protocol, has amended
Trademark Law in 1997 and 2001 respectably. Major
changes are as follows (Korea became a party to
the Madrid protocol on January 10, 2003 and the
legislation came to effect on April 10, 2003):
1) NICE Classification
Korea has adopted NICE International Classification
system as of March 1, 1998 for all trademark applications.
2) Multiple Class Application/Registration
Consistent with the Trademark Law Treaty, the
revised Korean Trademark Law allows a single application
and registration to cover one or more classes.
3) Three-Dimensional Marks
The revised Trademark Law also adopts the three-dimensional
trademark system in response to growing international
demands and to adapt to the diversified market
4) Foreign Marks
Foreign Trademarks that are well-known and famous
outside of Korea may also be protected as the
revised law grants power to reject any applications
which is merely an imitation of well-known and
famous foreign trademarks.
5) Similar Marks
As of March 1, 1998, the United Trademark System,
which prohibited the owners of the trademarks
that owns number of trademarks that are similar
to one another from transferring some of their
trademarks to a third party, was abolished. As
a result, owners of the similar trademarks can
now freely transfer some of their similar trademarks
to any third party.
6) Protection of Pending Marks
In line with the Madrid Protocol, revisions to the
Trademark Law confer the applicant the right to
collect reasonable compensation from a third party
for unauthorized use of the marks that are waiting
to be registered.
7) Abolition of Substantive Examination on Renewal
Consistent with the Trademark Law Treaty which eschews
any substantive examination of a renewal application,
all renewal applications are now examined only on
8) Adoption of Product Classification Conversion
All renewal applications must now use newly adopted
NICE International Classification system by lodging
a Conversion Application together with a Renewal