『(Former) Patent Law Firm Donghang → (Current) Patent Law Firm Elves』

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This is Patent Law Firm ELPS, dedicated to doing our best for our clients' success.

In the case of Lee Sang-yeol, Attorney at Law, representing the plaintiff, which was appealed to the Supreme Court (Supreme Court 2021후104XX Right Scope Confirmation),
a successful verdict was obtained on February 23, 2023, ultimately annulling the decision and remanding it to the Patent Court.

This case was particularly significant as there were no existing precedents in the Supreme Court, making it a landmark ruling likely to be applied to similar cases in the future.

In summary, the plaintiff (Senior Attorney Lee Sang-yeol) argued that their design had been leaked during a distribution agreement,
and after terminating the contract, they proceeded with the design application, resulting in the loss of novelty.

Subsequently, the defendant (the opposing party) claimed that their design, which had already been leaked,
should be considered a "Free Use Design" as they did not assert the loss of novelty exception when applying for registration.

As a result, a legal battle ensued, questioning whether the leaked design could be exempted from the loss of novelty exception or if it fell under the claim of a "Free Use Design."

However, since the plaintiff did not assert the loss of novelty exception when applying for the design registration,
the Patent Court and the Patent Court of Appeal recognized the "Free Use Design" defense raised by the defendant.

Nevertheless, in the subsequent Supreme Court appeal, the plaintiff emerged victorious. How did this happen?

After the appeal to the Supreme Court, the defendant filed for the invalidation of the plaintiff's registered design.
Traditionally, the loss of novelty exception could only be asserted during design application.
However, after the amendment of the Design Protection Act in 2014, it became possible to assert the loss of novelty exception during design invalidation proceedings.

As a result, during the response process, the plaintiff was able to assert the loss of novelty exception.
This critical assertion ultimately played a decisive role in securing the victory in the Supreme Court.

[Summary of the Case Decision]

Since the registered design in this case claimed the loss of novelty exception in accordance with Article 36(2) of the Design Protection Act,
and the registration was maintained, the argument that the subject design was a "Free Use Design" that could be easily created from the publicly disclosed prior design is not permitted.

However, the lower court wrongly concluded that the subject design, which could be easily created from the prior design
that formed the basis for claiming the loss of novelty exception in this case, was a "Free Use Design" falling outside the scope of the rights of the registered design.
This misinterpretation of the law had a significant impact on the judgment. The grounds for appeal challenging this aspect are valid.

Small and medium-sized businesses, as well as individual entrepreneurs,
can often find themselves entangled in disputes related to patents, trademarks, and designs. It might seem unfair to give up your rights,
but continuing the dispute can be costly in terms of both time and money, not to mention the stress it can cause.

However, I encourage you not to give up easily. Instead of surrendering, let us fight to secure your rights.
Our team of experts at ELPS Law Firm, led by Attorney Lee Sang-yeol, will stand by your side until the end.
If you encounter any related issues, please do not hesitate to reach out. Thank you.