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Design protection is particularly sensitive to trends and timing. Designs can be copied quickly, with multiple similar products appearing during a short commercial season.
Even if a design is filed to protect the rights of the design developed in such a rapidly changing market, if the design is released before the product is released and the imitation is first introduced into the market, the business of the rights holder can suffer a major loss.
Korea's secret design system can help manage this risk by deferring disclosure of a registered design.
What is a secret design?
Patent applications are generally published after 18 months. Trademark applications are published for opposition after examination, while registered designs are generally published following registration. If a design should remain confidential until product launch, a secret design request may defer disclosure of its substantive details.
Using the secret design system, the applicant can keep the design private for a period of up to three years from the date of registration of the design right. This ensures a time-to-market, prevents imitation, and strategically coordinates time to market.
- Available for both fully examined and partially examined design applications.
- Request period: From filing the design application until payment of the initial registration fee.
- Setting Period : Within 3 years from the date of registration
- Public information when applying for secret design: the name and address of the design right, the name and address of the creator, the date of application and application number, the date of registration and registration number, the fact that it is an examination or partial examination registration
- Note: You can shorten or extend the specified period, but not exceed 3 years.
Inspection of a secret design
Inspection may be requested in the following circumstances:
1. With the design owner's consent.
2. By a party or intervenor in specified proceedings concerning an identical or similar design.
3. By a person who has received a warning alleging infringement of the secret design.
4. At the request of a court or the Intellectual Property Trial and Appeal Board.
Advantages and limitations of secret designs
- Advantages
1 The registered design is public in principle, but if you apply with a secret design, you can defer disclosure for a period of time, preventing the imitation of competitors.
2 Companies can coordinate design disclosure at the time of product launch, taking into account the market situation, allowing them to use secret design as part of their marketing strategy.
- Cons
The application of a presumption of negligence is excluded.
Ordinarily, negligence may be presumed for infringement under Article 116 of the Design Protection Act. That presumption does not apply in the same way to an undisclosed secret design.
Prior warning meeting the statutory requirements is needed when seeking an injunction based on a secret design, which can limit immediate civil enforcement.
For a secret design registered through partial examination, the opposition deadline extends to three months after publication of the gazette containing the substantive design details, such as the drawings.
The Secret Design System is a useful tool to help you strategically protect your designs in a fast-changing market and take advantage of your rights in time to market.
However, there are disadvantages such as limiting the exercise of rights or excluding the presumption of negligence, so it is important to take a comprehensive view of product launch schedules, possible design leaks, and exercise strategy to determine the use of the system.
If you need a design protection strategy, we recommend that you consult with an expert to create a customized solution.
This article reflects the information available when it was published. Contact us to discuss your circumstances.