One useful feature of Korean design practice is the “related design” system, which currently allows a one-year period for filing designs similar to an existing “principal design” that would otherwise be refused protection based on similarity to said existing design. This one-year period starts from the filing date of the principal design.
By utilizing this system, the scope of protection of the principal design can effectively be expanded. A practical use case is when incremental improvements/changes are made to an earlier design — by securing design protection for these changes, it becomes more difficult for other parties to circumvent the design rights and produce copycat designs.
Applicants can indicate that their designs are a “related design” at the time of filing, or, if a later-filed application is refused based on similarity to a senior design owned by the same applicant, it can be designated as a related design of the principal design to overcome such a refusal ground. This principle also applies to embodiments within the same multiple-design application; if several embodiments are deemed to be similar, the applicant must select one as the principal design, and the others as related designs.
Aside from the fact that related designs expire at the same time as the principal design on which they are based (i.e. a maximum of 20 years from the filing date of the principal design), related designs are effectively treated as separate and independent rights. For example, invalidation of the principal design does not result in automatic invalidation of any related designs.
Some important considerations are that related designs cannot be “daisy-chained”, and must always be similar to the principal design. In other words, once a design is designated as a related design, it cannot subsequently act as a principal design for other later-filed designs. Further, if an exclusive license is recorded against a principal design, it cannot form the basis for any later-filed related designs.
While this system is useful, there has been criticism that the one-year period for filing related designs was too short. To rectify this, an amendment to the Design Protection Act extending this period from one year to three years will come into effect from December 21, 2023.
The new provisions will apply to related designs filed on or after December 21, 2023, but will not apply retroactively to designs for which the previous one-year deadline had already passed. Practically speaking, this means that designs with a filing date of December 22, 2022 or later will be able to act as a principal design for any related designs which are filed up to three years afterwards. The revision also clarifies that the principal design must be valid and in force at the time the design rights in a related design are established.
This development will be of keen interest to applicants in all fields who wish to protect their designs in Korea, and we anticipate the longer window for filing related designs to be widely utilized once in effect.
Written by Jonathan MASTERS