Received a Notification of Refusal from KIPO for Your Hague International Design?

You expected a smooth registration for your international design submitted through the Hague system, but instead, you've received a "Notification of Refusal" from the Korean Intellectual Property Office (KIPO). This can be unsettling, but there's no need to be overly concerned. This is a common step in the registration process and does not signify a final rejection.

At Pine IP Firm, we're here to help you analyze KIPO's notification and guide you on how to respond effectively to secure your design rights in South Korea.

Understanding the Korean System: A Substantive Examination Approach

First, it's helpful to know that South Korea employs a substantive examination system for design rights. This means that unlike some countries that may register designs upon filing with only a formal review, KIPO conducts a thorough assessment of each application. An examiner actively evaluates whether your design meets specific legal requirements for protection, such as novelty and creativity.

Therefore, a Notification of Refusal is a direct outcome of this examination. It is the examiner’s initial report stating that, in their opinion, your design does not yet meet these standards. This is a standard part of the dialogue in a rigorous review system, not a procedural failure.

1. Decoding the 'Notification of Refusal'

The notice from KIPO may seem complex, but it boils down to a few key points. Based on the typical notices we see, here are the crucial sections you need to understand.

• Time Limit for Response: This is the most critical piece of information to find first. Typically, you are given two months from the date the notification is issued to respond. Missing this deadline can result in the final rejection of your design.
• Mandatory Appointment of a Korean Representative: The "Notes on the procedure" section will state that foreign applicants (those without a residential or business address in Korea) must appoint a local patent attorney in Korea to handle all subsequent procedures. This is a mandatory requirement under Korean patent law.
• Grounds for Refusal: This section provides the examiner's specific explanation for why they believe the design cannot be registered in its current form.

2. Crafting a Strategic Response

Here is our recommended strategy for addressing KIPO's points and increasing your chances of successful registration.

Step 1: Submit a Written Opinion and/or an Amendment

To counter the examiner's reasons for refusal, you must submit a Written Opinion and, if necessary, an Amendment.

• Amendment: In many cases, the most effective solution is to submit additional drawings that clearly illustrate the design's complete form. It is highly recommended to provide a full set of six standard views (front, back, left side, right side, top, and bottom) to perfectly represent the design.
• Written Opinion: This document logically explains how the amended drawings resolve the examiner's concerns. It also argues that the changes do not alter the essence (or "gist") of the originally filed application.

⚠️ Important: When amending drawings, you must strictly adhere to the "prohibition of new matter" principle (as stipulated in Article 48(1) of the Korean Design Protection Act). This means you cannot add new design features that go beyond the scope of the drawings submitted in the initial application.

Step 2: Appoint a Professional Korean Representative

As mentioned, all response procedures must be handled by a Korean representative. A professional patent attorney does more than simply file documents; they play a crucial role by:

• Analyzing the Examiner's Intent: Accurately interpreting the KIPO examiner's standards and the core issues behind the grounds for refusal.
• Proposing Effective Amendments: Suggesting the best way to amend drawings to maximize the chances of registration while staying within legal boundaries.
• Drafting a Persuasive Written Opinion: Constructing a compelling argument based on legal precedent and logical reasoning to effectively persuade the examiner.

Conclusion

A Notification of Refusal from KIPO for your Hague International Design isn't the end of the road; it's an opportunity to refine your application and secure your rights. By clearly analyzing the grounds for refusal and responding strategically with the help of a professional representative within the set deadline, you can successfully protect your valuable design in the Korean market.

If you're facing challenges with your international design application or responding to a refusal, please don't hesitate to contact us at Pine IP Firm. Our experienced and expert team is ready to provide you with the optimal solution.

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