[Patent Talk] Use the 'Secret Design' System When a Product Launch Is Delayed

Bag manufacturer A filed a design application for a new bag design before putting it on sale. Because bags fall under partial-examination registration (a system that registers designs quickly by examining only some requirements when the application designates goods with markedly short life cycles), the design was approved for registration just two weeks after filing. However, the launch of the product embodying the design was postponed due to manufacturing problems. Company A paid the registration fee on the last day of the three-month payment period, but the launch schedule was still uncertain. Competitor B saw Company A's published registered design, released an imitation first, and the product became a sensation in the market.

Company A had a patent attorney send B a warning letter for design right infringement, but imitations were being sold not only by B but also by many other companies, seriously disrupting the sales strategy of Company A, which had ambitiously planned the launch of its new bag design. This kind of problem arises when the design registration date comes before the product launch date.

In the case above, Company A could have delayed the registration date as much as possible by paying the registration fee, with a surcharge, during the additional six-month payment period after the three months from receipt of the decision to grant had passed. But if the product launch were delayed even beyond that, the design would inevitably be disclosed before the product launch, because the Design Registration Gazette is published once a design is registered.

To address this problem, KIPO operates the secret design system. Under this system, at the applicant's request, a design can be kept secret for up to three years from its registration date (Article 43 of the Design Protection Act). In the case above, had Company A requested secret design status for a period of about one year before paying the registration fee, the design would not have been disclosed even after registration. The secrecy period can later be shortened or extended depending on the stage of commercialization.

When secrecy is requested, the Design Registration Gazette shows the name and address of the design right holder...