KIPO

Previous utility model system

(Quick registration system for applications filed between July 1, 1999 and September 30, 2006)

Background

Since utility model technology has a short life-cycle and is easy to copy, the quick registration system was introduced to protect the technology in its early stage, and promote its development and commercialization for SMEs.

Major revisions

1.Granting rights in early stages by examining only the formality and basic requirements without going through a substantive examination

While the patent system emphasizes the stability of rights and uses a system of registration after examination (registration is made after examining all conditions necessary for granting rights, such as novelty and inventive steps), the utility model system uses a quick registration system where registration is available after briefly checking the formalities and basic conditions (deficiency in description, etc.).

2. Introducing a Technology Evaluation System (TES) to prevent damage by third parties caused by poor enforcement of rights.

A TES check on registered utility models can be requested by anyone. When there are two or more claims, requests for TES checks can be made on all claims.
To enforce punishment of offenders after receiving the right, the applicant can request TES to allow his/her rights prior recognition. In the utility model system, only the owner of rights who received the decision to maintain his/ her rights can accuse offenders of infringement.
Upon receiving notice to submit a written opinion for technology evaluation from the examiner, the applicant shall request correction of specifications or drawings of the utility model. This is not the same as the amendment for the specification or drawing of a patent based on the notice of submitting a written opinion.
When a decision to cancel registration of a utility model is made, it is deemed that such utility model did not exist from the beginning.

Comparison of the major details of the patent system and the quick registration system of utility models

Application procedures for the old utility model

Following procedures are only effective to applications under the previous Utility Model Act before October1, 2006.

Overview

The flowchart shows an outline of the procedure for utility model system of Korea. After a utility model application is filed with KIPO, a utility model right is granted through various steps.

The Korean utility model system is characterized by :

• First-to-File Rule
• Examination of Basic Requirements for Quick Registration
• Request for Technical Evaluation
• Decision of Revocation or Maintenance through Technical Evaluation

Filing an Application

Applicant

Either the deviser or his/her assignee can file a utility model application for a device with KIPO. The applicant may be either a natural person or a juristic person.

Documents Required

A person who desires to obtain a utility model must submit the following documents to KIPO:

• a) an application stating the name and address of the deviser and the applicant(including the name of a representative, if the applicant is a juristic person), the date of submission, the title of the device, and priority date (if the right of priority is claimed);
• b) a specification setting forth the following matters: the title of the device: a brief description of drawings (if any), a detailed description of the device, and claim(s);
• c) drawing(s), if any;
• d) an abstract;
• e) if the right of priority is claimed, a certified copy of the priority application together with its Korean translation; and
• f) a power of attorney, if necessary.

Claim of priority

In order to enjoy the priority right, an application should be filed with KIPO within one year from the earliest filing date of the priority application. The abovementioned priority document may be submitted within one year and four months from the priority date. If the priority document is not submitted within that period of time, the claim of priority will become null and void.

Formality Examination

When a utility model application is submitted, KIPO will check that all requirements necessary to accord the application a filing date have been satisfied. Under Article 7(1) of the Enforcement Regulation of Utility Model Law, in any of the following instances the application will be returned to the submitter without any application number being assigned there to and will be treated as if it had never been submitted:

• where the kind of the application is not clear;
• where the name or address of a person(or juristic person) who is initiating the procedure is not described;
• where the application is not written in Korean;
• where the application is not accompanied by the specification/claims or drawings
• where the application is submitted, by a person who has no address or place of business in the Republic of Korea, without using an agent in the Republic of Korea

Once the application has satisfied the requirements, KIPO assigns an application number and examines as to whether the formality requirements under the Utility Model Law have been met. If KIPO discovers that a document or information is missing, such as a power of attorney or the name of the representative of a juristic person, it will issue a notice of amendment requesting the applicant to supplement the missing data, within the specified time limit. The applicant may obtain an extension of the designated time period.

If the applicant does not comply with such a request with in the designated or extended period, the application will be nullified and then considered as having never been filed.

Basic Requirements Examination

inventive step or industrial applicability under the non-examination system, there will be examination of the basic requirements to avoid and eliminate minimum irrational elements in the application before registration.

The following items are examined during the examination of basic requirements:

① Devices related to the shape or structure of an article or a combination of articles

② Devices unable to be registered

- Devices which are identical or similar to the national flag or decorations

- Devices liable to contravene public order or morality or to injure public health

③ The drafting of claims

④ The unity of the utility model application

⑤ The inclusion of the essential parts of the description or drawings in the application and the clarity of the description

The examination of the basic requirements is performed in each procedural step.

Registration

The examiner shall request registration of the utility model application promptly if no problems concerning the basic requirements can be found, but not within two months prior to the filing date (for the same reason as that of the invalidation procedure).

Technical Evaluation

Technical evaluation is different from the substantive examination in patents. Since the subject matter is already registered in the system, technical evaluation can be requested for each claim while substantive examination should be requested for all claims.

Therefore, the examiner shall only make registration maintenance decisions or registration revocation decisions for those claims which are requested.

If technical evaluation is not requested for all claims and there are reasons of revocation for a part of a claim, only those claims are revoked. For those claims where there is no reason of revocation, a registration maintenance decision is made by the examiner. Each claim which is requested must be technically evaluated. In the case of a registration revocation decision, the reasons shall be written as for the case of a ruling of refusal.

Technical evaluation can be requested by the applicant, owner, exclusive licensee, non-exclusive licensee, interested party, or examiner of KIPO.

Technical evaluation can be requested at filing or at any time after the filing date. Even if the term of utility model right has expired, technical evaluation can be requested when an interest of request exists.

- Requested for registration maintenance decision.

For a utility model to be received as a maintenance decision of registration, it should not fall into any of the categories prescribed in Article 25(1) of the Utility Model Law.

- Registration revocation decision

If the examiner finds grounds for revocation of a registration utility model, a notice of preliminary revocation shall be issued; and the applicant will be given an opportunity to submit a response to the preliminary revocation with a period of time designated by the examiner. Such a time limit is extendable upon the request for an extension by the applicant.

In response to the preliminary revocation, the applicant may file an argument with a correction to the specification and/or claims. If the examiner determines that the argument is without merit and the ground for revocation has not been overcome, he or she will issue a notice of revocation of the utility model registration.

A dual application

An applicant who has first filed a patent application has the opportunity to file a utility model application for the same technical feature and establish a right for it without abandoning the patent application. Also, an applicant who has first filed a utility model application and wishes to prolong the duration of the term of right has the opportunity to file a patent application and simultaneously execute his/her right based on the utility model.

For a dual application, the applicant must also be the applicant of the original application. The decision as to whether both applicants are identical follows the usual procedure for similar cases.

Dual application can be filed at the filing date of the patent application; after filing the patent application and before the reception of decision to grant a patent or within thirty days from the date of reception of ruling of refusal; or within one year from the date of registration of the utility model application.

However, if the original application is an international patent application, the following provisions will be applied:

① Dual application is possible if fees prescribed in Article 82(1) of the Patent Law are paid and the translation prescribed in Article 201(1) of the Patent Law is submitted.

② Dual application is possible after the decision that an international application has turned to be a patent application as prescribed in Article 214 of the Patent Law.

- Non-admittance of double patenting

It shall be noted that double patenting of patent and utility model is not allowed under the dual application system. Therefore when the utility model is firstly registered (after about 3 months) and then the patent is granted, the applicant must abandon the utility model in order to register the patent or abandon the patent and maintain the registered utility model.

Double patenting is a reason for opposition procedure or trial of invalidation but not for registration cancellation decision by technical evaluation. This is because the reason for registration cancellation decision by technical evaluation is restricted to the reasons for registration requirement at filing(with the exception of matters concerning right capacity).

• Last updated 27 May 2016
• Patent Legal Administration Division