Over the past 20 years, while patent filings have been trending up, Utility Model ("UM") filings have been steadily decreasing (approximately from 40,000 in 2001 to 12,000 in 2011, and then to 5,000 in 2020). We believe a major reason for the shrinking number of UM filings is there has been little practical difference when applying the inventiveness standard to UMs and patents despite having half the protection period of a patent (10 years for UMs compared to 20 years for patents).

Currently, a UM lacks inventiveness if it could have been "very easily" conceived in view of the prior art as opposed to a patent, which lacks inventiveness if it could have been "easily" conceived in view of the prior art. More specifically, a UM should be held inventive over the prior art if it provides an "incremental" level of usefulness over the prior art unlike the inventiveness of a patent which requires a "remarkable" effect over the prior art. However, in practice, Korean patent examiners appear to have been using very similar standards to patents when determining patentability of UMs during prosecution as well as during post grant invalidity challenges. 

In order to better differentiate UMs from patents, the Korean Intellectual Property Office has proposed sweeping changes. The more notable proposals include the following: 

• Inventiveness of a UM invention cannot be denied by a combination of two or more prior art references; 
• Deadline for requesting examination will be within 14 months from the filing date (currently 3 years from filing);
• Document submission showing at least preparations to practice the invention will be required when requesting examination; 
• UM applications will be examined on an expedited track (about 4-5 months); 
• Term of protection will be reduced to 5 years (currently 10 years); and
• Before an injunction can be sought, proof of practicing the UM must be provided. 

If the proposal passes, UMs should become easier to obtain and offer stronger protection in exchange for a narrower scope of protection over a shorter period of time. These proposed changes will soon be reviewed by the Legislative Office and then submitted to the National Assembly before the end of 2021. Since extensive changes are being proposed which may affect your patent filing strategies, we will continue to update you on the progress of the proposed bill.