When developing a product, businesses often share it on social media, display it at an exhibition or test demand through crowdfunding before launch.
However, did you know that design registration may be rejected if disclosure is made before the design application?
In principle, design rights only protect new designs, so designs that have been disclosed to the public before filing an application may be judged to have lost their novelty.
However, Korea's Design Protection Act provides for an 'exception from loss of novelty' system that allows for recognition of the possibility of registration even if a design was disclosed before application if certain requirements are met.
In this article, we will learn about the exception system for loss of novelty, application requirements, and precautions that allow for recognition of the possibility of registration even if the design is disclosed before filing the design application.
Why is it difficult to register a design if it is disclosed before filing?
In order to acquire a design right, several registration requirements must be met, but the most basic requirement is novelty.
Novelty means that the same or similar design has not been disclosed to the public prior to filing.
Novelty can be an issue in the following cases:
- When product photos or videos are posted on social media
- If you start selling products in an online shopping mall
- When a product is revealed at a domestic or overseas fair or exhibition
- When the product design is introduced through a press release or media interview
- When the product design is released on a crowdfunding platform
In principle, if a design is disclosed before filing, it may become difficult to register the design.
What is the exception system for loss of novelty?
The Design Protection Act establishes an 'exception for loss of novelty' system to protect the rights of creators.
If certain requirements are met, there is a possibility that a design may be registered as a design that has not lost its novelty, even if it was made public before the application was filed.
However, just because the design has been made public, this does not automatically mean that an exception is granted. You must meet the requirements set by law and go through the necessary procedures.
Conditions for the exception to loss of novelty
The exception to loss of novelty is not recognized simply by filing within 12 months of publication.
Typically, the following requirements must be met:
- The disclosure must fall within the statutory grace-period provisions, such as disclosure by the person entitled to obtain design registration or disclosure against that person's will.
- The application must be filed within 12 months from the date of public disclosure of the design.
- Claim an exception to the loss of novelty in accordance with the procedures prescribed by law and submit the necessary supporting documents.
As exceptions may vary depending on the circumstances of disclosure or rights, review is required for each individual case.
How should we claim an exception for loss of novelty?
In order to apply for the exception to the loss of novelty, you must claim the exception to the loss of novelty at the time of application or within the period specified by law and submit supporting evidence.
Proof materials generally include materials that can objectively confirm when, how, and by whom the design was disclosed, as well as the contents of the disclosed design.
Additionally, in cases where the person with the right to receive design registration at the time of disclosure is different from the actual applicant, data may be required to confirm the fact of succession of rights.
In this way, the exception to loss of novelty is not recognized simply by the fact that the application was 'filed within 12 months', but is judged by comprehensively reviewing the circumstances of disclosure and submitted materials.
Therefore, if the design has already been disclosed, it is important to review the possibility of applying an exception for loss of novelty rather than simply checking whether or not it is possible to apply.
Exceptions for loss of novelty may not be granted
In the following cases, it may be difficult to apply an exception, so you must be careful.
- When it is difficult to objectively prove the timing of disclosure
- If the application is filed more than 12 months after disclosure
- Failure to properly prepare procedures or proof materials to claim an exception to loss of novelty
- When the circumstances of disclosure or rights relations do not meet legal requirements
In particular, in the case of disclosure by a third party, individual review is required as the application of exceptions may vary depending on the circumstances and facts of disclosure.
Once a design is revealed, its novelty can in principle be an issue.
However, the exception system for loss of novelty is an important system established to protect the rights of creators under certain conditions. However, since the exception system can only be applied if certain legal requirements and procedures are met, applications after disclosure require more careful review than general applications.
Therefore, if you are planning a product launch or marketing schedule, the safest strategy for securing rights is to consider not only the timing of design disclosure but also the timing of application.
If you are about to disclose a product or are considering filing an application after already disclosing a design, please comprehensively review the circumstances of disclosure and rights relations and come up with an appropriate plan to secure rights.
This article reflects the information available when it was published. Contact us to discuss your circumstances.