New IP laws in Korea

Out of a number of revisions introduced to each act, the following is a brief review of the most significant.

In the revised Patent Act, which became effective on July 1, 2013, the requirements for novelty have been strengthened. The revised act stipulates that an invention made accessible to the public through any telecommunication lines may not be patented, while the old act read “telecommunication lines that were prescribed by the Enforcement Decree” instead of “any telecommunication lines”.

According to the revised Trademark Act, which will come into force as of October 6, 2013, the applicant for a trademark application needs not abandon his application when he lodges a cancellation action against another party’s earlier-registered trademark registration. Under the current act, the registrability of a trademark applied for is determined at the time of the filing date, so when an earlier-registered mark was cited in the rejection of a trademark application, the application could not proceed to registration even though the earlier-registered trademark was cancelled or expired at a later time.

After the revised Trademark Act comes into force, the applicant can request the examiner to postpone the examination of his trademark application until the cancellation action is decided.

"In conformity with the Hague agreement and an international trend, the duration of a registered design will be prolonged to 20 years from the filing date of the design application."

Further, if an applicant fails to respond to an office action by the prescribed time limit, the applicant may request for reinstatement of the application within two months of the expired time limit under the revised Trademark Act.

The revised Design Act contains quite drastic changes to the existing design protection system in Korea. In order for the applicant and the Korean Intellectual Property Office (KIPO) to be fully prepared for the new system, the effective date of the revised Design Act has been delayed until July 1, 2014.

As Korea plans to join the Hague Agreement Concerning the International Registration of Industrial Design in October 2013, the revised Design Act has provisions corresponding to those in the Hague Agreement with regard to the procedures and exceptional clauses for national implementation of the Hague Agreement.

Under this new system, a foreigner would be able to apply for design registration in Korea by filing an application with WIPO, not directly with the KIPO.

In addition, in conformity with the Hague Agreement and an international trend, the duration of a registered design will be prolonged to 20 years from the filing date of the design application, in contrast to 15 years under the current act.

Another significant change in the revisions is that a single design application may claim up to 100 designs. Even articles of different natures can be claimed in a single design application, if they fall under the same class in the Locarno Classification.

Besides, a design application for an article identical with or similar to a portion of an article which is the subject of an earlier-filed design application (even if it is laid open after the filing date of the former application), may not be registered. However, this provision is not applied when both design applications were filed by a same applicant.

Currently, Korea operates the so-called Hybrid Examination System, under which design applications for articles of specific categories are registered through the non-substantive examination system (NSES) and applications for articles of the remaining categories are registered through the substantive examination system (SES).

The respective categories of articles for the NSES and SES systems will be changed by way of a revision to the enforcement regulation, so that they correspond to the Locarno Classification system.

Finally, the revised Design Act adopts the Associated Design system, which will replace the current Similar Design system. Under the new system, a registered associated design can be enforced independently from the basic registration. However, the associated design right shall expire when the basic design right expires. The associated design should be filed no later than a year after the basic design is filed.