Revision of the Intellectual Property Laws in Korea (2007)

Revision of the Patent Act, the Utility Model Act, the Industrial Design Act, and the Trademark Act passed the National Assembly and it will be enforced after July 1, 2007. Major changes contained in the revised Acts include the following:

Revision of the Patent Act and the Utility Model Act

A. Moderation of the description requirement of the “detailed description of the invention” and “the claims.” (§42(3),(4))
(1) Under the current system, the purpose, construction and effect of an invention must be described in the detailed description of the invention separately. However, as inventions are becoming more diversified and complicated, inventors have difficulty in describing the contents of the invention in detail.
(2) For the above reason, the revised Act abolished the requirement of separately describing the purpose, construction and effect of an invention. In addition, the requirement that “the claim(s) must define only the features indispensable for the construction of the invention” has been abolished.

B. Postponement of the submission regarding the patent claims (§42(5), newly enacted)
(1) Under the current system, the patent claims must be submitted at the time of filing of patent application. Inventors had to define the range of protection accurately and in detail before applying for a patent.
(2) The revision allows inventors to postpone their submission regarding the patent claims until the laying open of the application, that is, for a period of a year and a half. Where a request for an examination is made before the laying open of the application, the patent claims should be submitted before the request for an examination.

C. Definite description of the notification of the refusal reasons (§63(2), newly enacted)
(1) Under the current system, in the refusal notification against the application with two or more claims, the refusal sometimes did not provide reasons on each and every claim.
(2) The revision stipulates that the refusal reasons on each claim that is rejected must be described specifically on the notification.

Revision of the Trademark Act

A. Expanded scope of protection in trademark rights (§2(1)(i))
(1) The market value of trademarks has increased and new forms of trademarks are continuously being devised; however, the current Trademark Act fails to provide a wide enough protection for the trademark users’ rights.
(2) In the past, trademark registration was limited to a sign, a character, a figure, a three-dimensional shape, or any combination of color with any of the above items. However, from now on, trademarks, such as color marks, holograms, motion trademarks, and also those that could be visually recognized will be candidates for registration.

B. Expansion of scope in conversion of an application (§19)
(1) Prior to the current revision, application conversion was allowed only between trademark and servicemark applications. Thus, a lay person who filed under the wrong category of trademark, servicemark or collective mark (except a collective mark of geographical indication) had to re-file the application under the corrected category instead of conveniently converting the application.
(2) Under the revised Act, the conversion between any trademark, servicemark, or collective mark application will be allowed. Further, renewal of the term of a registered mark and application for supplementary registration of designated goods will be allowed their applications to be filed as a new trademark application.

C. Extension of window of time for filing an opposition against trademark applications (§25(1))
(1) A published trademark application can be opposed its registration by anyone; however, so far, the window of time to file an opposition has been deemed short.
(2) The revised Act provides an extended window of time of 2 months from the date of notice of publication, which used to be 30 days.

D. Acknowledgment of any prior use of a trademark and continued use of such trademark (§57 (3), newly enacted)
(1) Any mark that is being used, but whose identical or similar mark has been registered by someone else beforehand, will be given the right of continuous use within a limited scope.
(2) The revised Act provides such right of continued use to those who have been continuously using a mark domestically without any underlying intention of unfair competition against an identical or similar mark whose application is filed by someone else at a later time and the continuously used mark is recognized by the domestic consumers to be representing the source of the user’s goods at the time of filing of said application.

Revision of the Industrial Design Act

A. Extended designated period for secret designs to be kept secret (§13(2))
(1) A person making a request that the design be kept secret had difficulties whereby product development using such design within the given time period was feasible because the time period could not be extended.
(2) Previously, a request that the design be kept secret could be made only when filing a design application; however, from now on, the request can be made from the time when filing a design application through a period set by the Ministry of Commerce, Industry, and Energy.

B. Exception to the First-to-File rule (§16(3))
(1) Previously, even when an application is withdrawn or refused, other applications that are same or similar to said application filed afterwards could not be registered. For this reason, any third party with good faith who filed a similar or same application as those that have been refused or withdrawn could not acquire design registration.
(2) According to the revised Act, an application that is withdrawn or refused will be deemed to have never been filed in order to provide design registration opportunity to third parties who filed in good faith.

C. Decision to Refuse Design Registration (§26(2))
(1) Un-examined design registrations are allowed in applications for designs for clothing or beddings and also those designs that could easily have been created by a person with ordinary skill in the art. For this reason, a person who failed to file an application in advance could not take advantage of the rights afforded through registrations.
(2) According to the revised Act, designs that have previously enjoyed waiver of examination may be refused its registration if those designs could have been easily created on the basis of a shape, pattern, color or a combination of those widely known in the republic of Korea.