Revisions made to the Korean Design Protection Act (“KDA”) will go into effect on December 21, 2023. The revised law introduces several applicant-friendly features, as discussed hereunder.

▶Period for Filing Related Designs Extended to Three Years

In Korea, if an applicant intends to register a new design that is similar to its own previously registered or pending design, the new design has to be filed as a related design of the earlier design in order to avoid any rejections based on lack of novelty or violation of the first-to-file rule. Related designs additionally impact the definition of the scope of the right of the principal design in relation to future disputes that may involve issues of similarity with the principal design.

To strengthen the protection of new designs and efficiently combat potential counterfeiters, companies typically prefer to register related designs that are variations of their designs already well received in the market. Under the current KDA, a related design could be filed only within twelve months from the filing date of the principal design, but this filing period drew much criticism for being too short to efficiently protect new modifications of their existing designs. In response, the KDA is now being amended to extend this period to three years, with the expectation that the extended period will help companies build up their design filing strategy in a more efficient and systematic manner.

▶Time Restriction Lifted for Claiming Exception to Loss of Novelty

When reviewing novelty, the KIPO allows a one-year grace period to presume novelty over an identical or similar design that was already disclosed by the design owner, except when the disclosure is a publication from any patent office around the world. Under the current KDA, the exception to loss of novelty can be claimed only during limited time periods, i.e., (1) at the time of filing the application, (ii) prior to issuance of a final Office Action, or (iii) if an opposition or an invalidation action (but not an infringement action or a scope confirmation trial) is lodged by a third party against the pending application, within the designated period to file a response to the opposition or invalidation action.

These time restrictions have been heavily criticized because a design registrant is not allowed to belatedly assert this claim as a petitioner of an infringement action or a scope confirmation trial. Instead, design registrants had to resort to an expedient by lodging invalidation actions against their own designs through third parties to be able to make this claim within the period to respond to the invalidation action.

With the revisions to the KDA, the time restrictions on claiming the exception to loss of novelty have been completely eliminated.

▶Easier to Claim Convention Priority

Under the current KDA, anyone who wishes to enjoy the right of priority under the Paris Convention is required to make the priority claim within six months from the filing date of the foreign design application that serves as the basis of the priority claim. Further, it is strictly required to specify in the application that the priority is claimed, and a certified copy of the foreign priority application must be submitted within three months from the filing date.

The revised KDA ameliorates these requirements by allowing the following.

(i) the priority claim may be amended or added within three months from the date of filing;

(ii) the six-month period to make the priority claim may be extended by two additional months if there is a justifiable reason; and

(iii) the three-month period for submitting priority documents may be extended by two additional months if there is a justifiable reason.