The Korean National Assembly has approved a bill to amend the Korean Design Protection Act (“Design Act”) on May 25, 2023, in order to facilitate obtaining and protecting their design rights for design holders. The amendments address several procedural shortcomings in the current Design Act that have impeded design holders from effectively safeguarding their rights.
The current Design Act includes various flaws pertaining to the protection of design holder’s rights, which necessitated the need for the amendment. The key issues included:
(i) Limited timeframe for filing related designs: The period for filing related designs, which include partial improvements or variations, is limited to within one year from the filing date of the basic design application.
(ii) Stringent timeframe for claiming the benefit of grace period for novelty: This timeframe is limited to within 30 days from the date of filing a Korean design application or before issuance of a Notice of Final Refusal and/or a Notice of Allowance.
(iii) Strict requirements on priority claiming: Design holders have encountered challenges in protecting their rights due to the absence of remedies for unintentional failing to claim priority.
The revised Design Act addressed the above deficiencies of the current Design Act by implementing the following changes:
(i) Extension of period for filing related design applications: The revised Design Act extends the timeframe for filing a related design application to within 3 years from the filing date of the basic design application. This revision will empower companies and enhance their competitiveness by providing stronger protection of their design rights.
(ii) Removal of limitation of timeframe for claiming the benefit of grace period for novelty: This removal will likely mitigate the risk of disadvantageous judgement on their design rights in design infringement or invalidation disputes based on loss of novelty. By removing the time constraints imposed by the Current Design Act, design holders are now able to claim of the benefit of grace period for novelty without being bound by specific timing requirements.
(iii) Introduction of remedies for failing to claim priority: Design holders who fail to claim priority under the Paris Treaty within 6 months priority period from the earliest priority date due to justified reasons can file a Korean application claiming priority within 2 months from the expiration date of the priority period. Additionally, design holders who claim priority under the Treaty are now allowed to amend or add information related to priority within 3 months from the filing date of a Korean design application. This alignment of priority claiming requirements with those in other leading countries would ease the burden of design applicants to meet the requirements for claiming priority.
The revision to the Design Act will strengthen the protection of rights of legitimate design holders and enable companies to effectively and efficiently manage their design portfolios.
The revised Design Act is set to come into effect six months from the date it is promulgated by the government.