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CHAPTER II REQUIREMENTS
FOR UTILITY MODELS AND APPLICATIONS THEREFOR
Article 5 ーRequirements for Utility Models―
(1) A utility model may be granted for devices
which are industrially applicable and which
relate to the shape or structure of an article
or a combination of articles, unless they fall
under any of the following subparagraphs:
(ァ) devices publicly known or worked in
the Republic of Korea prior to the filing of
the utility model application; or
(ア) devices described in a publication distributed
in the Republic of Korea or in a foreign country
prior to the filing of the utility model application.
(2) Notwithstanding paragraph (1), where
a device could easily have been made, prior
to the filing of the utility model application,
by a person having ordinary skill in the art
to which the device pertains, on the basis of
a device referred to in either subparagraph
of paragraph (1), a utility model registration
shall not be granted.
(3) Notwithstanding paragraph (1), where
a device for which a utility model application
is filed is identical with a device or an invention
described in the specification or drawings originally
attached to another utility model application
or a patent application, and where such another
utility model application was filed prior to
said utility model application and published
after registration for public inspection after
the filing date of said utility model application,
or such patent application was filed prior to
said utility model application and laid open
or published after grant for public inspection
after the filing date of said utility model
application, a utility model shall not be granted
for the device of said utility model application.
However, this provision shall not apply where
said utility model application falls under a
situation in any of the following subparagraphs:
(ァ) where the deviser of said utility model
application and the deviser or inventor of the
another utility model or patent application
are the same person; or
(ア) where, at the time of filing of said
utility model application, the applicant of
said application and the applicant of the other
utility model or patent application are the
same person.
(4) Where the other utility model or patent
application under paragraph (3) is an international
application deemed to be a utility model application
under Article 57(1) of this Law, or an international
application deemed to be a patent application
under Article 199(1) of the Patent Law (including
an international application considered to be
a utility model or patent application under
Article 71(4) of this Law or a patent application
under Article 214(4) of the Patent Law), in
applying the provisions of paragraph (3), "laid
open" shall read "laid open or the
subject of an international publication under
Article 21 of the Patent Cooperation Treaty,"
and "a device or an invention described
in the specification or drawings originally
attached" shall read "a device or
an invention described both in the specification,
claims or drawings of the international application
as of the international filing date and in the
translated version thereof."
Article 6 ーDevices Deemed to be Novel―
(1) If a registrable device falls under any
of the following subparagraphs, it shall be
deemed to be novel provided that the utility
model application therefor is filed within six
months of the applicable date:
(ァ) where a person having the right to obtain
a utility model registration has caused his
device to fall within the terms of any of the
subparagraphs in Article 5(1) by conducting
an experiment thereon, publishing the device
in printed matter or presenting it in writing
at a scientific meeting held by an academic
organization;
(ア) where the device falls under any of
the subparagraphs in Article 5(1) against the
intention of the person having the right to
obtain a utility model registration;
(ィ) where a person having the right to obtain
a utility model registration has caused his
device to fall within the terms of any of the
subparagraphs of Article 5(1) by displaying
his device at an exhibition which satisfies
any of the following requirements:
(a) exhibitions held by the Government or
a local governmental entity;
(b) exhibitions held by persons authorized
by the Government or a local governmental entity;
(c) exhibitions held in a foreign country
with the authorization of the foreign government;
or
(d) exhibitions held in the territory of
a country which is a party to a treaty and by
the government of said country or by persons
authorized by said government.
(2) Any person desiring to take advantage
of the provisions of paragraph (1)(i) or (1)(ィ)
shall submit, simultaneously with his utility
model application, a written statement to that
effect to the Commissioner of the Korean Industrial
Property Office, to whom he shall also submit,
within thirty days from the filing date of the
utility model application, a document proving
the relevant facts.
Article 7 ーUnregistrable Devices―
Devices falling under any of the following
subparagraphs shall not be registrable, notwithstanding
the provisions of Articles 5(1) and 5(2):
(ァ) devices which are identical or similar
to the national flag or decorations; or
(ア) devices liable to contravene public
order or morality, or to injure public health.
Article 8 ーFirst-to-File Rule―
(1) Where two or more applications relating
to the same device are filed on different dates,
only the applicant having the earlier filing
date may obtain a utility model registration
for the device.
(2) Where two or more applications relating
to the same device are filed on the same date,
only the person agreed upon by all the applicants
after consultation may obtain a utility model
registration for the device. If no agreement
is reached or no consultation is possible, none
of the applicants shall obtain a utility model
registration for the device.
(3) Where a utility model application has
the same subject matter as a patent application
and the applications are filed on different
dates, the applicant of the utility model application
may obtain a utility model registration for
the device only if the utility model application
has the earlier filing date.
(4) Where a utility model application has
the same subject matter as a patent application
and the applications are filed on the same date,
a utility model application may be registered
only if an agreement, to the effect that only
the utility model application is to be registered,
is reached between the utility model applicant
and the patent applicant.
(5) Where a utility model application or
a patent application is invalidated or withdrawn,
such application shall, for the purposes of
paragraphs (1) to (4), be deemed never to have
been filed.
(6) A utility model application or patent
application filed by a person who is not the
deviser, inventor or successor in title to the
right to obtain a utility model registration
or a patent shall, for the purposes of paragraphs
(1) to (4), be deemed never to have been filed.
Article 9 ーApplication for Utility Model
Registration―
(1) Any person desiring to obtain a utility
model registration shall file a utility model
application with the Commissioner of the Korean
Industrial Property Office stating the following:
(ァ) the name and the domicile of the applicant
(in the case of a legal entity, its title, place
of business and the name of its representative);
(ア) the name and the domicile, or the place
of business, of the agent, if any;
(ィ) the date of filing;
(イ) the title of the device;
(ゥ) the name and the domicile of the deviser;
and
(ウ) matters prescribed in Article 54(3)
of the Patent Law as applied mutatis mutandis
under Articles 18(2) and 20 of this Law (only
when claiming a priority right).
(2) The utility model application under paragraph
(1) shall be accompanied by a specification,
drawing or drawings, and an abstract stating
the following:
(ァ) the title of the device;
(ア) a brief explanation of the drawings;
(ィ) a detailed description of the device;
and
(イ) the claim(s).
(3) The detailed description of the device
under paragraph (2)(ィ) shall state the purpose,
construction and effect of the device in such
a manner that it may easily be carried out by
a person having ordinary skill in the art to
which the device pertains.
(4) The claim(s) under paragraph (2)(iv)
shall describe the matter for which protection
is sought in one or more claims (hereinafter
referred to as "claim(s)"), and the
claim(s) shall comply with each of the following
subparagraphs:
(ァ) the claim(s) shall be supported by a
detailed description of the device;
(ア) the claim(s) shall define the device
clearly and concisely; and
(ィ) the claim(s) shall define only the features
indispensable for the constitution of the device.
(5) Details concerning the drafting of claim(s)
under paragraph (2)(iv) shall be prescribed
by Presidential Decree.
(6) Details concerning the description of
an abstract under paragraph (2) shall be prescribed
by the Ordinance of the Ministry of Industry
and Energy.
Article 10 ーScope of One Utility Model
Application―
(1) A utility model application shall relate
to one device only.
(2) The requirements for one utility model
application under paragraph (1) shall be prescribed
by Presidential Decree.
Article 11 ーAmendment of Procedure―
The Commissioner of the Korean Industrial
Property Office, the President of the Industrial
Property Tribunal or a presiding trial examiner
(hereinafter, the same presiding trial examiner
as under Article 145 of the Patent Law) may
order amendments to a procedure relating to
a utility model, designating a time limit if
such a procedure falls under any of the following
subparagraphs:
(ァ) where the procedure has not complied
with the provisions of Article 3(1) or 6 of
the Patent Law as applied mutatis mutandis under
Article 4 of this Law;
(ア) where the procedure has not complied
with the formalities specified in the Utility
Model Law or the Presidential Decree thereof;
(ィ) where a registration fee for the first
year has not been paid in violation of the provision
of Article 29(2) of this Law; or
(イ) where fees required in accordance with
Article 30 have not been paid.
Article 12 ーAmendment of Basic Requirement―
The Commissioner of the Korean Industrial
Property Office may order amendments to the
specification and drawings attached to a utility
model application, designating a time limit,
if the utility model application falls under
any of the following subparagraphs:
(ァ) where the device in the utility model
application is not related to the shape or the
structure of an article or a combination of
articles;
(ア) where the device in the utility model
application is not registrable under Article
7 of this Law;
(ィ) where the utility model application
was not drafted pursuant to the provisions of
Article 9(5) of this Law, or does not meet the
requirements pursuant to the provisions of Article
(10) of this Law; or
(イ) where the specification or drawing attached
to the utility model application does not contain
essential elements or the descriptions therein
are substantially unclear.
Article 13 ーAmendment of Utility Model
Application, etc.―
(1) A person who initiates a filing, request
and other procedures relating to a utility model
application (hereinafter referred to as "procedure
relating to a utility model application")
may amend the application only when the utility
model application is pending in the Industrial
Property Office or the Industrial Property Tribunal.
However, a specification, drawings and an abstract
attached to a utility model application may
not be amended after a time limit from the filing
date of the utility model application designated
by the Ordinance of the Ministry of Industry
and Energy.
(2) The specification and drawings shall
be amended in accordance with paragraph (1),
to the extent that they do not change the subject
matter of the specification or drawings as originally
attached to the utility model application.
Article 14 ーAmendment deemed not to Change
the Subject matter―
An amendment enlarging, restricting or changing
the scope of utility model claims, under Articles
12 and 13(1) of this Law, with regard to features
disclosed in the specification or drawings originally
attached to a utility model application, shall
be deemed not to change the essential subject
matter of the specification and drawings.
Article 15 ーAmendments to the Specification,
etc., and Change of Subject Matter―
(1) Where an amendment to the specification
or drawings attached to a utility model application
under Article 12 and the proviso of Article
13(1) of this Law is determined, after the registration
of the utility model right, to have changed
the subject matter of the specification or drawings,
the utility model application shall be deemed
to have been filed at the time when such written
amendments were submitted.
(2) Where a dual application under Article
17 of this Law is determined to have changed
the subject matter of the claims originally
attached to a patent application after the registration
of the utility model right, the dual application
shall be deemed to have been filed at the time
when said written dual application was submitted.
Article 16 ーDivision of Utility Model
Application―
(1) An applicant who has filed a utility
model application comprising two or more devices
may divide the application into two or more
applications within the time limit prescribed
in Article 12 and the exception proviso of Article
13(1) of this Law.
(2) A divided utility model application under
paragraph (1) (hereinafter referred to as a
"divisional application") shall be
deemed to have been filed at the time the original
utility model application was filed. However,
the divisional application shall be deemed to
have been filed on the date it was submitted
where any of the conditions in the following
subparagraphs applies:
(ァ) in cases where Article 5(3) of this
Law or Article 29(3) of the Patent aw is applicable,
when a divisional application falls under another
utility model application prescribed in Article
5(3) of this Law or a utility model application
prescribed in Article 29(3) of the Patent Law;
(ア) in cases where Article 6(2) of this
Law is applicable;
(ィ) in cases where Article 18(2) of this
Law is applicable; or
(イ) in cases where Article 54(3) of the
Patent Law as applied mutatis mutandis under
Article 20 of this Law is applicable.
(3) Any person claiming the right of priority
for a divisional application, under Article
54 of the Patent Law as applied mutatis mutandis
under Article 20 of this Law, may file the documents
as prescribed in paragraph (4) of Article 54
of the Patent Law with the Commissioner of the
Korean Industrial Property Office within three
months after filing the divisional application,
regardless of the period prescribed in paragraph
(4) of Article 54 of the Patent Law.
Article 17 ーDual Application―
(1) Any person who has filed a patent application
may file a utility model application which is
within the scope of the original specification
attached to the patent application (hereinafter
referred to as a "dual application"),
if the utility model application is filed prior
to the receipt of a certified copy of the decision
to grant a patent under Article 66 of Patent
Law. However, this provision shall not apply
in the event more than 30 days (or the extended
period when a period for demanding a trial against
ruling of refusal under Article 132ter of Patent
Law is extended pursuant to Article 15(1) of
Patent Law as applied mutatis mutandis under
Article 4 of this Law) have elapsed following
the transmittal of the examiner's first decision
rejecting the patent application.
(2) A person who initiates a dual application
pursuant to paragraph (1) shall so specify at
the time of filing the utility model application
and identify the initial patent application
and effects thereof.
(3) Where a dual application is carried out
pursuant to paragraph (1), the utility model
application shall be deemed to have been filed
on the date the patent application was filed.
However, if any of the following subparagraphs
apply, the utility model application shall be
deemed to have been filed on the date the dual
application was submitted:
(ァ) in cases where Article 5(3) of this
Law or Article 29(3) of the Patent Law is applicable,
when the utility model application falls under
another utility model application under Article
5(3) of this Law or a utility model application
under Article 29(3) of the Patent Law;
(ア) in cases where Article 6(2) of this
Law is applicable;
(ィ) in cases where Article 18(2) of this
Law is applicable;
(イ) in cases where Article 54(3) of the
Patent Law as applied mutatis mutandis under
Article 20 of this Law is applicable.
(4) Any person claiming the right of priority
in accordance with paragraph (1) for a utility
model application may file documents as prescribed
in Article 54 of the Patent Law as applied mutatis
mutandis under Article 20 of this Law, to the
Commissioner of the Korean Industrial Property
Office within three months after filing the
dual application, regardless of the provisions
of Article 54(4) of the Patent Law.
Article 18 ーPriority Claim Based on Utility
Model Application etc.―
(1) A person desiring to obtain a utility
model registration may claim the right of priority
for a device claimed in a utility model application
which has been disclosed in the specification
or drawings originally attached to a utility
model application or patent application (only
for which he has the right to obtain a patent
or a utility model registration, hereinafter
referred to as an "earlier application"),
which he has filed earlier than the later utility
model application. However, if any of the following
subparagraphs apply, he may not claim the right
of priority.
(ァ) where the later utility model application
is filed after more than one year from the filing
date of the earlier application;
(ア) where the earlier application falls
under any of the following subparagraphs:
(a) a divisional application under Article
16(1) of this Law;
(b) a dual application under Article 17 of
this Law;
(c) a divisional application under Article
52(1) of the Patent Law;
(d) a dual application under Article 53 of
the Patent Law.
(ィ) where the earlier application has been
abandoned, withdrawn, or invalidated at the
time the later utility model application is
filed;
(イ) where an examiner's decision, or a trial
or appellate trial decision rejecting the earlier
application has become final and conclusive
at the time the later utility model application
is filed; or
(ゥ) where the earlier application has been
registered under Article 35(2) of this Law at
the time the later utility model application
is filed.
(2) A person intending to claim the right
of priority under paragraph (1) shall make such
a claim simultaneously with the filing of the
utility model application and identify the earlier
application in the utility model application.
(3) For devices described in a utility model
application which claims the right of priority
under paragraph (1), which are disclosed in
the specification or drawings originally attached
to the earlier application which is the basis
for the priority claim (excluding those devices
disclosed in an application which claims priority
to an earlier application which also claims
priority under paragraph (1) of this Article
or which claims priority under Article 4D(1)
of the Paris Convention for the Protection of
Industrial Property), the utility model application
shall be deemed to have been filed at the time
when the earlier application was filed for purposes
of Articles 5(1), 5(2) and 5(3) (principal sentence),
6(1), 8(1) to 8(4), 38(ィ), 39, 41(1) and 41(2)
of this Law; Article 103 of the Patent Law as
applied mutatis mutandis under Article 42 of
this Law; Articles 36(3) and 98 of the Patent
Law; and Articles 45 and 52(3) of the Design
Law.
(4) For devices described in the specification
or drawings originally attached to a utility
model application which claims priority under
paragraph (1), which are disclosed in the specification
or drawings originally attached to the earlier
application which is the basis for the priority
claim (excluding those devices disclosed in
an application which claims priority to an earlier
application which also claims priority under
paragraph (1) of this Article or which claims
priority under Article 4D(1) of the Paris Convention
for the Protection of Industrial Property),
the laying open or publication for public inspection
of the earlier application shall be deemed as
effected at the time of laying open after registration
of a utility model right was effected, for purposes
of Article 5(3) of this Law or Article 29(3)
of the Patent Law. For purposes of this paragraph,
the "earlier application" is deemed
to be an international application deemed to
be a utility model application under Article
57(1) of this Law or an international application
deemed to be a patent application under Article
199(1) of the Patent Law (including an international
application considered to be a utility model
application or a patent application under Article
71(4) of this Law or Article 214(4) of the Patent
Law); and the phrase "a device or invention
described both in the specification, claims
or drawings of the international application
as of the international filing date and in the
translated version thereof" in Article
5(4) of this Law shall read "a device or
invention described in the specification, claims
or drawings of the international application
as of the international filing date."
Article 19 ーWithdrawal of Earlier Application,
etc.―
(1) The earlier application from which the
right of priority is claimed under Article 18(1)
shall be deemed withdrawn at the expiration
of one year and three months from the filing
date of that earlier application. However, this
provision shall not apply where that earlier
application falls under any of the following
subparagraphs:
(ァ) where it has been abandoned, withdrawn
or invalidated;
(ア) where an examiner's decision or a trial
or appellate trial decision rejecting the application
has become final and conclusive;
(ィ) where priority claims based on the earlier
application have been withdrawn; or
(イ) where the earlier application has been
registered under Article 35(2) of this Law.
(2) The applicant of a utility model application
containing a priority claim under Article 18(1)
may not withdraw the priority claim after the
expiration of one year and three months from
the filing date of the earlier application.
(3) Where the utility model application containing
a priority claim under Article 18(1) is withdrawn
within one year and three months from the filing
date of the earlier application, the priority
claim shall be deemed withdrawn simultaneously
therewith.
Article 20 ーMutatis Mutandis Application
of the Patent Law Provisions―
The provisions of Articles 33, 35, 37 to
41, 43, 44 and 54 of the Patent Law shall apply,
mutatis mutandis, with respect to the requirements
for utility models and applications therefor.
In such operation, "on the basis of Article
69(1)(ii)" in Article 35 of the Patent
Law shall read "on the basis of Article
25(1)(ii) or on the basis of Article 47(1)(ii)."
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