[Patent Talk] What If You Find Copycat Products but Never Registered a Patent or Design?

<Source: KIPO Guidelines on Responding to Imitation of Product Configuration>

Mr. A, the head of a furniture company, began manufacturing and selling a new, functional ready-to-assemble piece of furniture, X. Six months after sales began, furniture X became a sensational hit, and Mr. B, the head of a competitor, began manufacturing furniture X-1, which is extremely similar to X, and selling it through online shopping malls. Regretting too late that he had not filed a patent application or design application, Mr. A began looking into whether he could take legal action against Mr. B's sales. Let us look at the measures available in a case like this.

Under the Patent Act and the Design Protection Act, even if you have disclosed your own invention or design, an application filed within one year of the disclosure while claiming the exception to loss of novelty will not be rejected on the basis of your own disclosure and can be registered. Unfortunately, although in the case above the one-year deadline has not passed and the timing requirement is satisfied, there is also a disclosure by competitor Mr. B in addition to Mr. A's own disclosure, so even if Mr. A files, the application will be rejected over the competitor's copycat furniture X-1. It is therefore difficult for Mr. A to obtain and enforce a patent or design right.

The next option to consider is a copyright infringement suit over the furniture design. Copyright arises automatically upon creation, and registration is not a requirement for it to take effect, so Mr. A can bring a copyright infringement suit by proving when furniture X was created and that Mr. B sold the copies. In doing so, Mr. A must prove the subjective element that Mr. B knew of the existence of his copyright and infringed it.

<Source: KIPO Guidelines on Responding to Imitation of Product Configuration>

Measures under the Unfair Competition Prevention Act may also be considered. Article 2(1)(i) of the Unfair Competition Prevention Act prohibits, as an act of unfair competition, selling goods that imitate the configuration of another person's goods. However, it is not an act of unfair competition if three years have passed since the configuration of the goods was completed, or if the configuration is one that is commonplace in the trade. In the case above, only six months have passed since Mr. A began selling furniture X, and the design of furniture X is new and functional, so Mr. A can assert infringement under this provision.

In summary, Mr. A can take legal action against Mr. B, such as claiming damages and filing a criminal complaint, based on copyright and the Unfair Competition Prevention Act. If, unlike the case above...