A bill containing several amendments to the Design Protection Act ("DPA") has been promulgated on June 20, 2023. The amendments will go into effect on December 21, 2023. The following are the major amendments in the bill. 

1. Related Design Can Be Filed Within Three Years

If an applicant files for a design that can be considered similar to a previously registered or filed design of the applicant, the later design must be filed as a related design application. Although in principle a registered design owner has exclusive rights to use the registered design and any similar designs commercially and industrially, it is common practice in Korea to file a new application to obtain a registration for what would be considered a similar design. Through this related design registration practice, the scope of similarity to an earlier-filed principal design may be clarified if any future dispute arises over what is considered similar to the principal design.

Under the current DPA, an application for a related design must be filed within one year of the filing date of the application for the principal design. 

The amended DPA extends the one-year period to three years. This amendment reflects concerns expressed by various industries to effectively and properly protect new modifications to existing designs.

2. Easier to Claim Presumption of Novelty

The DPA allows for a one-year grace period, such that a design is presumed to be novel and creative over an identical or similar design as long as the application for the design was filed within one year from the date when the identical or similar design was first laid-open (except where the design was disclosed through publication by any patent office in the world).

Under the current DPA, any person seeking to take advantage of the grace period must claim the presumption of novelty (i) at the time of filing the application, (ii) prior to the issuance of KIPO's final decision on whether to grant/reject a design registration, (iii) when filing a response to an opposition filed by a third party, or (iv) when filing a response to an invalidation action filed by a third party.

These restrictions on when the presumption can be claimed has been criticized by many practitioners in Korea, in particular the fact that the presumption cannot be asserted by the petitioner of an infringement action (or scope confirmation trial). To work around this issue, design registrants often have had to use third parties to artificially file invalidation actions against their own designs in order to claim the presumption of novelty. 

The amendments solve these issues by simply eliminating the time restrictions on claiming the presumption of novelty completely.

3. Additional Time for Priority Claim-Related Procedures

Any person seeking to take advantage of priority offered under the Paris Convention must file his/her application within six months from the filling date of the foreign application that serves as the basis for the priority claim, and shall specify in the design application the intention to claim priority to KIPO. In addition, a copy of the foreign priority application certified by the government of the foreign country must be submitted within three months from the filing date of the design application (depending on the country of the priority application, applicants may use the WIPO Digital Access Service to submit priority documents).

Under the amended DPA,

• the six-month period for claiming priority can be extended by two additional months, if there is a justifiable reason; 
• the priority claim can be amended or added to within three months from the filing date of the design application; and
• the three-month period for submitting the priority documents can be extended by two additional months, if there is a justifiable reason for not meeting the original deadline.