The Korean Utility Model Act ("KUMA") was first enacted as Law No. 952 on December 31, 1961, and has undergone sixteen revisions since then. The current version of the KUMA, which took effect on July 1, 2002 as Law No. 6626, is composed of 11 Chapters and 86 Articles, and is characterized by the following principles: first-to-file, dual application, non-substantive examination, technical evaluation, and post-grant opposition.
As in other jurisdictions adopting a utility model system, the KUMA provides for the protection of "petty inventions". The KUMA defines a petty invention as "a creative result of a technical concept utilizing the laws of nature." This means that the petty invention requires a lower standard of inventiveness than that for an invention under the Korean Patent Act (KPA). Except for the subject matter and term of protection, and the manner of examination, most of the provisions under the KPA are mutatis mutandis applied to utility models, from filing requirements to penal provisions.
Basic differences between the utility model and the patent systems are as follows:
Subject Matter to be Protected - The subject matter to be protected under the KUMA is an industrially applicable article having a definite shape and/or structure, or combinations of such articles.
Necessity of Drawings - The invention claimed in an application for a utility model registration must always be described with reference to drawings.
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1. First-to-File rule
Where two or more utility model registration applications relating to the same device are filed on different dates, only the first applicant may obtain a utility model registration for the device.
2. Requirements for filing Utility Model Application
the name and the domicile of the applicant
the name and the domicile, or place of business of the agent, if designated
the date of filing
the title of the device
the name and the domicile of the deviser
A specification, a drawing or drawings, and an abstract shall be attached to the utility model registration application, giving:
- the title of the device;
- a brief explanation of the drawing(s);
- a detailed description of the device; and
- the claim(s).
3. Conversion of Application / Dual Application
An applicant for patent, utility model registration, or design registration may convert his the original application was filed before July 1, 1999. For applications filed on or after July 1, 1999, such conversion is impossible.
If a patent application was filed on or after July 1, 1999, an applicant of a patent application may file a dual U.M. application in parallel with the patent application, within the scope of the claims in the specification originally attached to the patent application, before the date of receipt of a certified copy of the examiner's decision that a patent is to be granted or within 30 days from the receipt of an examiner's first final rejection ("Dual U.M. application"). In such case, the dual U.M. application is deemed to have been filed at the time of filing of the patent application.
Similarly, an applicant of a U.M. application may file a patent application in parallel with the U.M. application within the scope of the claims of the specification originally attached to the U.M. application within one year from the date of the U.M. registration ("Dual patent application"). In such case, the dual patent application is deemed to have been filed at the time of filing of the U.M. application.
4. Registration
Any application for utility model registration is automatically registered, provided that the formality requirements are fulfilled. The first-year annuity must be paid concurrently with the filing of the application.
1. Request for Technical Evaluation on Utility Model
Any person may file a request for a technical evaluation of a registered utility model, with the Commissioner of the Korean Intellectual Property Office (KIPO), for all the claims therein. When a request for a technical evaluation of a registered utility model is filed, this fact is announced in the Utility Model Registration Gazette without delay. Once filed, this request cannot be withdrawn. If such a request has been made by a person other than the owner of the utility model right concerned, the Commissioner must notify the owner of the fact. The technical evaluation is conducted with respect to the industrial applicability, novelty and/or inventiveness and other statutory prerequisites for registration of a utility model as provided for in the KUMA, by an examiner appointed by the Commissioner.
2. Technical Evaluation by Examiner
When the examiner finds the claimed utility model to be industrially applicable, novel and inventive, and to fulfill the statutory prerequisites for registration, he/she must issue a "decision to sustain the registration." Otherwise, he/she must issue a "decision to revoke the registration," designating the time limit for submission of an argument against the decision. Within this time limit, the owner of the utility model right which has been decided to be revoked may cure the defects or insufficiencies in his/her registered utility model, by making the needed corrections to the specification, claims and/or drawings thereof. No appeals can be made against a decision to sustain the registration.
