Under the New Design Protection Act, a Design applicant may claim 12-months Grace Period in Korean instead of the former 6 months from September 22, 2017.

l  Grace Period for Design Applications Will Be Extended to One Year

 

Under the current Design Protection Act (DPA), a design shall not be deemed to lose novelty over an identical or similar design as long as the application for the design is filed within six (6) months from the date when the identical or similar design was first published. From September 22, 2017, under the new DPA, the current six months grace period extends to one year.

 

Based on 12 months grace period under the new law, an inventor, a designer or his assignee may obtain a design protection certificate like patent through filing an application for any already disclosed design within 12 months from the date of novelty destroying event. The disclosure as novelty destroying event might be done by a designer, his assignee or a 3rd party.

 

In order obtain such benefit of grace period under the Korean law, a foreign applicant must meet substantive and procedural requirements as follows:

 

The applicant must claim the novelty grace period (i) at the time of filing the application (documentation of the previous disclosure can be submitted within 30 days from the application date), (ii) "up until KIPO issues a final decision whether to grant a design registration" (so an applicant can now claim the grace period at any time while the application is still pending), (iii) when filing a response to an opposition filed by a third party, or (iv) when filing a response to an invalidation action filed by a third party.

 

l  Evidence of Priority

 

Under the old DPA, in order to claim priority, an application must include drawings substantially identical to the drawings in the foreign priority application, and a copy of the priority application certified by the foreign government must also be submitted.

 

Under the new law, KIPO furthermore will accept other documents to confirm the details of the foreign priority application. The applicant may use the WIPO Digital Access Service to submit priority documents (the Service allows priority documents to be securely exchanged between IP offices directly).

l  Procedural Points

 

1.      Priority claim under the Paris Convention or PCT may not apply beyond 12 months from the first disclosure.

 

A foreign applicant must file a Korean patent application at KIPO with 12 months from the first disclosure event regardless of claiming priority under the Paris Convention or PCT. Otherwise, a foreign applicant will lose a chance to obtain a design or patent in Korea under 12 months grace period.

2.     An applicant must disclose all and each event of invention disclosures when files an application at KIPO

 

When a designer or an inventor had disclosed his design or invention several times before he has filed a patent application before KIPO, the applicant must disclose all of them and request benefits of 12 months grace period for all and each events of disclosures. Otherwise, the unreported event may be a basis to deny the novelty of the filed design or invention.

 

For example, (1) an inventor disclosed an abstract about his invention in a brochure of a conference on October 1, 2013 and (2) gave a detailed presentation about his invention before audience in the conference on October 10, 2013 and then (3) published his article about the invention on November 1, 2013 and further (4) the organizer of the conference uploaded the inventor's presentation at an official website of the conference on November 10, 2013.

 

In order to be safe based on benefits of grace period under the Korean law, a designer or an inventor must disclose all of the above 4 events and claims benefits of 12 months grace period for all of them when he files an application at KIPO within October 1, 2014. For example, if an applicant did not report No. 4 event of posting his presentation at the conference website, it may be a basis for denying novelty of the invention.

However, it may be possible to argue that the designer or the inventor could not know the event and did not have any intent to deceive KIPO. Accordingly an applicant may probably overcome such a hurdle but it is better to check all possible events of disclosures and report all and each of them to KIPO. On the other hand, in case an applicant did not disclose No. 2 event or No. 3 event, he cannot save his application from loss of novelty by his disclosures before the filing date.