Last revised October 10, 1996.
A utility model application, as well as a patent application, is prescribed by legislation and must usually be filed through a utility model administrator(e.g. patent attorney) where an applicant(resident abroad) does not have his domicile or residence in Korea.
A request bearing following entries is required.
The request shall be accompanied by the specification mentioning the following, the drawings and the abstract.
The procedures for claiming the priority in respect of a utility model application by the Provision 4D(1) of the Paris Convention and claiming the internal priority are all the same to the procedures in respect of a patent application.
An application filed with the Application Division, is allocated an application serial number after being recorded into a file, and the number is notified to the applicant later.
A formality check is made to see whether the application meets the prescribed formality requirements. If any defects are found, a notification is sent to the applicant, and the applicant can make amendments. If the defects are not rectified, the application may be invalidated.
When an application is found satisfactory as to formalities, it is assigned its International Patent Classification (IPC)
All utility model applications are laid open, after the expiration of 18 months from the filing date whether a request for examination has been filed or nor, in the utility model gazette describing the content of the application.
However, as regards priority claiming applications, the term of 18 months is counted from the original filing date, and for applications with more than one priority claims, it is counted form the earliest priority date.
Under the revised Utility Model law, which is effective on Julu 1, 1996, a utility model application can be laid open before the normally required time of 18 months has not passed from the filing date if the applicant so desires.
In Korea, examination is carried out only on applications for which request for examination has been filed. This system enables the applicant to review whether examination is necessary and also to choose the timing to file such a request. Examination becomes unnecessary on those for which no such request is filed and, as a result, the system contributes to the acceleration of examination work.
For an application to be examined, a request for examination is required. The period in which such a request may be filed is limited to 3 years from the filing date. If no such request is filed within the prescribed period, the application is deemed to be withdrawn.
An application for which a request for examination has been filed is forwarded to a division in the Examination Department in accordance with the International Patent Classification (IPC) assigned to that application, and subsequently, to the examiner in charge. The examiner assigned to the IPC which was given that application becomes the examiner in charge for that application.
The requirements for one utility model registration application shall be an application describing a single independent claim concerning goods; Provided, That if it is unproper to describe only with one independent claim, the application may be described with two or more independent claims.
In the detailed description of the device, the object, construction and effect of the device shall be described to the extent that any person having ordinary knowledge in the technical field to which the device belongs, is able to work it easily.
(1) Any device on the shape, structure or combination of industrially usable articles may obtain the utility model registration for the device except in case where it falls under any of the following Subparagraphs;
(2) Notwithstanding the provisions of Paragraph(1), if a device is one which any person having ordinary knowledge in the technical field to which the device belongs before the application for utility model registration is filed, is able to device extremely easily on the basis of the device as referred to in any of Subparagraphs of Paragraph(1), it may not obtain the registration of the utility model.
No person may have the utility model registered with respect to the following devices;
If a plurality of applications claiming the same device are filed, the earliest filed application has the right to be registered, regardless whether the devisers or applicants are identical or not.
Where the device was described in the specification or drawings of another earlier filed application, a utility model registration is not granted for the device.
If the claimed device is identical with a device described in the specification or the drawings(s) of an earlier filed application, it cannot be registered even if the utility model registration application for the claimed device was filed prior to the publication of the earlier filed application. However, this provision does not apply if the deviser or the applicant of the later application is identical to those of the earlier application.
If any reason for refusal is found in the process of examination by an examiner, that examiner formulates a notification of reasons for refusal and sends it to the applicant.
On receipt of a notification of reasons for refusal, the applicant may present a written argument and/or an amendment if necessary, within one month for applicants residing in Korea or two months for those residing in foreign countries, in order to resolve the reason for refusal.
Examine closely the reasons for refusal mentioned in the notification, to comprehend the substance of the reasons for refusal. If there are points that are not clear, it is recommended that the applicant consults his/her utility model registration administrator, or make inquiries to the examiner through the utility model registration administrator.
In the case where a reference is cited, the content of the reference should be closely examined, and compared to the device of the application. If the cited reference is a Korean published specification, it is recommended that the applicant consult with the patent attorney to compare the content of the device against the cited reference.
Depending solely on the translation of the abstract or claim may result in failure in finding what the examiner is referring to, which will in turn result in an unsatisfactory response to the examiner and will lead to failure to obtain a utility model right.
If differences are found as a result of the above comparison, and if the applicant considers them significant, the applicant may prepare a written argument and/or amendment.
In the case of the reasons for refusal being in the question of formalities such as insufficient writing of a specification, amendments should be prepared on the points where such insufficiencies are indicated by the examiner.
If the defect pointed out concerns scope of one application or description of claims, the applicant is recommended to consult fully with his/her administrator to respond adequately.
In making amendments, the Korean translation may not always convey correctly the meaning of the original amendment, so the applicant is advised to contact his/her administrator to confirm the accuracy of translation.
To amend the specification is the most effective way of resolving the reasons for refusal. But there are restrictions in timing and in content of amendments.
When the reasons for refusal are resolved by the response of the applicant or when no reason for refusal is found, the examiner makes a decision for publication of the application for opposition. Then the Commissioner of the Patent Office issues a Publication of examined patent application. This is to make public in the Official Gazette the content of the device that the examiner, as a result of examination, deems worthy of granting a right.
This does not mean that a utility model right is established at that stage. However, after the publication of the application for opposition, an exclusive right almost identical to a utility model right is conferred. The application documents of the published application may be freely inspected at the Patent Office for two months from the date of publication.
During the two months following the date of publication for opposition, any person may file an opposition to utility model registration. Filing an opposition is carried out by filing a document stating the grounds of opposition.
The grounds and evidence for opposition may be amended within 30 days from the expiration of the statutory period for filing opposition.
When an opposition is filed, the examiner in charge will consider the arguments presented by both the applicant and the opponent and makes a decision concerning the opposition to utility model registration. The applicant may contest the credibility of the evidence used for opposition.
If the examiner decides that there is reason in the opposition, he then makes a decision to refuse the application. On the other hand, if he/she finds no reason in the opposition, he/she makes a decision to register utility model.
If no opposition is filed, the examiner normally makes a decision to register utility model. The system of filing opposition contributes to the stability of the utility model right. This may be seen from the low rate of the decision of invalidity in trials for invalidation after a utility model right has been established.
After an application is published for opposition after examination and if no reason for refusal is found in the statutory period for filing an opposition, a decision to register a utility model is made.
When a decision to register a utility model is made, a certified copy of the decision is sent to the applicant. The utility model right takes effect when the applicant, on receipt of the copy, pays the prescribed fee within a prescribed period.
The term of the patent right shall be 15 years from the filing date under the revised utility model law, which is effective on July 1, 1996.
Under the old law, the term of right was 10 years from the date of publication of the patent application, however, this term shall not exceed 15 years from the filing date.
The Utility Model right entitles its owner the exclusive right to work the device for which utility model is registered.
The "working" of the Utility model means acts of manufacturing, using, assigning, leasing, or importing, or offering for assigning or leasing (including displaying for the purpose of assignment or lease) an article to which the device has been applied.
A decision of refusal is made when the reason(s) for refusal found by the examiner in charge is not resolved by written argument or amendment presented by the applicant(or no response is made by the applicant).
If the applicant is dissatisfied with the decision, he/she may appeal to the Department of Appeals and Trials within 30 days form the date of transmittal of the certified copy of the decision.
When an amendment is presented by the applicant at the time an appeal is filed against a decision of refusal, the examiner who was in charge of examination of the application concerned is assigned to reconsider the application .
This method has been adopted as there are many instances where the reasons for refusal are resolved by amendment. As the former examiner is familiar with the content of the application and with the case history, the method contributes to the acceleration of trial procedures.
At the Department of Appeals, 3 trial examiners form a collegial body for deliberation of the case and render a trial decision.
If a person upon whom the decision of the appellate trial is given is dissatisfied with it, he may bring a final appeal in the Supreme Court within 30 days after he is served a copy of the trial decision only in case where the final appeal is brought by the reason that the decision on trial is in contravention of laws and regulations.
