The Strategic Value of U.S. Design Patents

Apple’s smartphone design patent lawsuit against Samsung, which resulted in hundreds of millions of dollars in damages, sent a powerful message to companies around the world.

Not just technology, but design itself can be a key weapon in the patent wars.

The U.S. design patent has long been overshadowed by the utility patent, but it is rapidly emerging as a key intellectual property right directly tied to brand competitiveness in today’s U.S. market.

Section 171 of the U.S. Patent Act (35 U.S.C.) provides that a patent may be granted for "any new, original and ornamental design for an article of manufacture." If a utility patent protects ‘how something works’, a design patent protects ‘how something looks.’ Visual elements such as distinctive tableware shapes, eyeglass frame designs, the rounded corners of a smartphone, UI design, and the pattern of a shoe sole are all eligible for protection.

Filing costs are relatively lower than those of utility patents, and examination periods tend to be shorter. Once registered, the patent holder is granted exclusive rights for 15 years from the date of issuance. When strategically leveraged, this relatively straightforward system becomes both a powerful shield and an offensive tool for any company.

📌 Why Design Patents Matter Now?

1. Consumers choose with their eyes

In an era of rapid technological commoditization, consumers are increasingly making purchasing decisions based on emotional and visual factors. When faced with two products of similar functionality, consumers ultimately reach for the one that looks better. A design patent is the legal right to exclusively own that moment of choice.

2. Imitation is fast while enforcement is slow

As global manufacturing supply chains have become more sophisticated, replicating a competitor’s design in a short period of time is no longer difficult. The problem is that without a design patent, there is little legal recourse to stop it. A registered design patent, by contrast, is a powerful enforcement tool that can be used not only to pursue infringement actions against copycat products, but also to block the importation of counterfeit goods at the customs level.

3. Value as a portfolio strategy

Global companies like Apple, Nike, and Dyson secure dozens of design patents for each individual product. This is not merely a defensive measure, but part of an aggressive intellectual property strategy. A patent portfolio serves as an indicator of corporate value to investors, and as an entry barrier that makes it difficult for competitors to move in.

📌 Key Takeaways for Foreign Companies

In today’s era of global expansion, a design patent strategy in the U.S. market is no longer optional, but essential. While the number of design patents registered by foreign companies at the USPTO has been steadily growing, many experts believe it is still insufficient given the intensity of global competition.

One critical point to keep in mind is the one-year grace period after public disclosure. In the United States, failing to file within one year of the date a product is publicly disclosed results in the loss of patent rights. Exhibiting at a trade show, posting on social media, a press feature - any of these can start that countdown.

📌 Locking In the Value of Design through the Law

U.S. design patents are the most direct means of converting creative output into market competitiveness. Shifting the view of design from a mere aesthetic choice to a strategic asset will define the line between global market leaders and those left behind.

USPTO mandates that all foreign-domiciled patent applicants be represented by a licensed U.S. patent practitioner: Effective July 20, 2026

The United States Patent and Trademark Office (USPTO) has issued a final rule requiring patent applicants and patent owners whose domicile is not located within the United States or its territories to be represented by a USPTO-registered patent practitioner. The rule takes effect 120 days after its publication in the Federal Register on March 20, 2026 (that is, July 20, 2026) and applies to all filings received on or after the effective date.

📌 Key Points

• Applicable Parties: Patent applicants and patent owners domiciled outside the United States or its territories

• Requirement: Mandatory appointment of a USPTO-registered Patent Practitioner (registered patent attorney or registered patent agent)

• Regulatory Basis: Amendments to 37 CFR §§ 1.9, 1.31, 1.32, and 1.33

• Effective date: July 20, 2026 (120 days after Federal Register publication on March 20, 2026)

• Applicable Filings: All filings submitted on or after the effective date

📌 Key Regulatory Changes (37 CFR Amendments)

• § 1.9 — New definition of "domicile": The term "domicile" is defined as the permanent legal place of residence of a natural person, or the principal place of business of a juristic entity.

• § 1.31 — Mandatory representation requirement: Representation by a USPTO-registered patent practitioner is now required in the following three situations: (1) where the applicant or patent owner is a juristic entity (e.g., a corporation); (2) where at least one party identified as the applicant has a domicile outside the United States or its territories; and (3) where at least one party identified as the patent owner has a domicile outside the United States or its territories. Powers of attorney must be signed by all parties identified as the applicant or patent owner to be effective.

• § 1.32 — Definition of "patent practitioner": A formal definition of "patent practitioner" is added to the regulations.

• § 1.33 — Signature requirements: All amendments and other papers filed on behalf of a juristic entity applicant, a foreign-domiciled applicant, or a foreign-domiciled patent owner must be signed by a registered patent practitioner. Documents that are required to be signed by a specific party, such as the inventor's oath or declaration under 37 CFR 1.63, are excluded from this requirement.

📌 Background: Four Justifications Offered by the USPTO

The USPTO provided the following four primary reasons for adopting this rule:

1. Harmonization with international practice: Nearly every patent office around the world already requires foreign applicants to be represented by a locally licensed or registered practitioner. This rule brings U.S. practice in line with that global standard.

2. Increased examination efficiency: Pro se filings by foreign applicants frequently fail to meet the formal conditions required for publication and examination. This places an additional processing burden on the Office of Patent Application Processing (OPAP) and requires patent examiners to spend extra time on procedural matters, thereby increasing overall patent application pendency.

3. Enhanced compliance with statutory and regulatory requirements: Registered patent practitioners are subject to the USPTO Rules of Professional Conduct and may face disciplinary sanctions for violations, including a duty to cooperate with inquiries and investigations. As false micro entity certifications and other fraudulent filings have been on the rise, the practitioner signature requirement serves as a meaningful deterrent.

4. Fraud mitigation and protection of patent system integrity: When a pro se foreign applicant abandons an application, the USPTO’s ability to investigate false certifications or misrepresentations is effectively terminated. Requiring a registered patent practitioner of record preserves the USPTO’s investigative reach beyond the point of abandonment.

📌 Important Practical Notes

This rule does not change the requirements for obtaining a filing date. A foreign-domiciled applicant who files without a practitioner’s signature will still be accorded a filing date under 37 CFR 1.53, but corrective action will be required thereafter.

U.S. citizenship is not an exception to this requirement. The rule is based on domicile, not nationality. Likewise, no exception applies to mixed-domicile applicant groups, even where only one of several applicants has a foreign domicile, a registered patent practitioner must be appointed. Provisional applications are also not exempt, though the practical impact is limited since filing dates are preserved; practitioner involvement is required for any follow-on petitions or filings within the provisional application.

📌 Comparison with Trademark Practice

The trademark side of the USPTO has operated under an equivalent requirement since 2019. Since August 3, 2019, all individuals and entities domiciled outside the United States must be represented by a U.S.-licensed attorney in all trademark matters before the USPTO, and every official submission must be prepared, signed, and filed by an attorney licensed to practice law in the United States.

📌 Action Points for Foreign Applicants and Practitioners

This rule applies to all submissions filed on or after the effective date, regardless of when the underlying application was originally filed. Accordingly, even currently pending applications filed before July 20, 2026 will require a registered patent practitioner’s signature on any amendments, office action responses, petitions, and other correspondence submitted on or after that date.

Foreign applicants, including individuals and companies, and foreign patent law firms are strongly advised to begin establishing a working relationship with a reliable USPTO-registered patent practitioner now, well in advance of the July 20, 2026 effective date.

Why doesn’t a patent have to be “cutting-edge technology”?

In patent law, an “invention” is a novel, useful, and non-obvious technical solution to a problem, encompassing machines, processes, manufactures, or compositions of matter. Many people assume only breakthroughs like AI or quantum computing can be patented. In reality, the bar is often much lower and much more practical.

1. The standard for “non-obviousness”: “Would a skilled person in the pertinent art find it obvious?”

The core requirements for patentability are novelty (something not previously known) and non-obviousness (not something that can be easily conceived).

• Even if it is not high-tech, a patent may be granted if a person having ordinary skill in the field would look at the prior art and think, “Huh, why didn’t we think of doing it that way?”

• In other words, what matters more than the “level” of technology is the cleverness and usefulness of the idea.

2. The power of everyday, practical inventions

Many patents that changed the world started from simple structural improvements.

• The bendable straw (US Pat. No. 2,094,268): Adding a corrugated section so a straw can bend is not advanced chemistry. But it was a useful technical improvement that made drinking easier for patients and children, so it was protectable.

• Cup sleeve (cup holder) (US Pat. No.5,425,497): Sliding a piece of corrugated paper onto a hot coffee cup is a simple design change, but it clearly prevents burns and created significant commercial value.

• Pushpin with a grip (US Pat. No. 654,319): Adding a small handle to a traditional pushpin so it can be removed more easily is also an excellent example of a practical patentable improvement.

3. “New use” inventions and “combinations of known elements”

Even without discovering a new material, patents can cover using something known in a new way, or combining two familiar things to create new convenience.

• Example: If a chemical previously used as fertilizer is found to be effective for treating a particular disease, that discovery may be patentable as a new-use invention.

• Example: Like attaching an eraser to the end of a pencil, combining existing items to create a new convenience can still qualify as a creative technical idea.

4. The purpose of the patent system: “Industrial progress”

The patent system does not exist to honor only the academic achievements of geniuses. Its purpose is to promote **real industrial development.

• Even a simple technology may be worth protecting if it can be turned into a product, create economic value, and reduce real-world inconvenience. From the government’s perspective, that is enough reason to grant protection.

💡 Key takeaway

“Complexity does not determine value.”
A patent is a tool for solving problems. Even for a small inconvenience, if you have a concrete method (a technical idea) to solve it and it is even slightly better than existing approaches, it can be an excellent candidate for patent protection.

The Roots of U.S. Intellectual Property (IP) Rights: The IP Clause of the U.S. Constitution

The U.S. Constitution expressly grants Congress the authority to protect IP rights. This provision is commonly referred to as the “IP Clause” or the “Patent and Copyright Clause.”

1. Text of the U.S. Constitution (Article I, Section 8, Clause 8)

“The Congress shall have Power… To promote the Progress of Science and useful Arts, by securing for limited Times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries;”

2. Key Meaning of the Clause

Within this single sentence are four core principles that form the foundation of the U.S. IP system.

① Purpose: “To promote the Progress of Science and useful Arts”

The Constitution makes clear that the ultimate purpose of IP protection is not merely private enrichment, but rather the advancement of knowledge and technology for society as a whole. In other words, granting rights to individuals is justified as an incentive that encourages creation and innovation for the public benefit.

• “Science”: In historical context, this term broadly meant “knowledge” or “learning,” and is primarily associated with copyright.

• “Useful Arts”: This refers to what we would now call technology or engineering, and is associated with patents.

② Subject: “Authors and Inventors”

The clause specifies who is protected.

• Authors: Those who create books, music, artwork, and other creative works (copyright owners).

• Inventors: Those who devise new technologies or devices (patent owners).

③ Means: “The exclusive Right”

The clause provides a powerful tool: an exclusive right that allows the creator or inventor, for a certain period, to prevent others from using the protected work or invention without permission. Because this exclusive right is guaranteed, individuals can invest time and resources into creation and research with greater confidence.

④ Limitation: “For limited Times”

This is one of the most important elements. Exclusive rights cannot last forever. The Constitution requires protection only for a limited time, after which the knowledge enters the public domain, where anyone may freely use it—ultimately becoming a shared asset of humankind.

3. Why Aren’t Trademarks and Trade Secrets Mentioned?

You may notice that the clause does not mention trademarks or trade secrets.

• Trademarks: They developed primarily under Congress’s authority to regulate interstate commerce (the Commerce Clause), because the main purpose of trademarks is consumer identification, not creation or invention.

• Trade secrets: They were traditionally protected under state law and common law, and only more recently have been more fully unified and strengthened through federal legislation.

4. Impact of the Clause

With this constitutional foundation, the United States was able to enact strong federal patent law (1790) and copyright law (1790) early in its history. From innovators such as Edison and Ford to modern figures such as Steve Jobs and Bill Gates, the legal environment that enabled innovators to create immense value from their ideas traces back to this single line of the Constitution.

The “Invisible Shield” That Protects Your Ideas and Brand: Intellectual Property (IP)

"What if someone copied your innovative device or app, the name of your store, or your company's secret recipe — and put it right on the market?"

The United States has treated intellectual property (IP) as a constitutional right since its founding, making it one of the most active and fiercely contested arenas for IP. From the patent wars between Apple and Samsung to Disney's aggressive defense of its copyrights, these stories regularly make the news. Yet IP is not the exclusive domain of large corporations; it is also a critical tool for individual creators, small business owners, and startups to safeguard the foundations of their businesses. Here is a brief overview of the "Big Four" of IP - patents, trademarks, copyrights, and trade secrets - that permeate our daily lives.

1. Patents: The Right That Protects Technical Inventions

Patents protect new technical inventions and designs for a set period (20 years from the filing date for utility patents; 15 years from the issuance for design patents). Patents cover not only cutting-edge technology but also small, everyday ideas. For example, the simple coffee-cup sleeve that slides onto a hot cup (U.S. Patent No. 5,425,497) became a powerful patent asset. In return, however, the inventor must fully disclose the details of the invention, a requirement rooted in the goal of advancing technology for society as a whole.

2. Trademarks: The Right That Safeguards Brand Trust and Source Identification

A trademark is a symbol that tells consumers the "source" of a product or service. By protecting the goodwill built up in a particular logo or brand name, trademarks help maintain order in the marketplace. Counterfeit goods are illegal precisely because they betray consumer expectations and distort a brand's trust function. Notably, trademarks can theoretically be protected indefinitely, as long as they are properly used and renewed, making them highly valuable as long-term assets.

3. Copyrights: The Right That Protects Creative "Expression"

Copyright is granted to creative works of expression such as music, novels, films, and photographs. Rights arise the moment a work is created, but timely registration significantly strengthens one's position in a dispute, for instance, by enabling claims for statutory damages and attorney's fees. The protection period is also extensive (70 years after the author's death), turning a copyright into an asset that can span generations.

4. Trade Secrets: The Right Protected by Keeping Information Confidential

If a patent is "a right protected in exchange for disclosure," a trade secret is "a right protected by maintaining confidentiality." A classic example is Coca-Cola's secret formula. To receive legal protection, however, reasonable measures to maintain secrecy must be in place. The great advantage of a trade secret is that there is virtually no limit on its duration of protection; the limitation is that, in principle, it is difficult to prevent a third party from independently arriving at the same result.

Which “Shield” Do You Need?

If you are running a business or engaging in creative work in the United States, you need a strategy that combines these four rights to fit your situation. Technology and designs can be protected by patents, business names and logos by trademarks, creative works by copyrights, and manufacturing know-how and recipes by trade secrets. Intellectual property is not some distant, intimidating area of law; it is a practical tool for safeguarding the results of your hard work and creativity. Now is the time to assess which "invisible shield" your ideas and brand need.

Patent Application Process via KORUS PATENT

KORUS PATENT files all provisional, non-provisional, and PCT national stage applications electronically via the USPTO’s Patent Center. Progress can be monitored in real-time through this system.

• Filing requests: Available via phone or email

• Required documents: Send via email or mail.

• Timeline: Electronic filing is completed within 5 business days upon receipt of preparatory documents and confirmation of payment. (If KORUS PATENT performs the English translation of a foreign specification, an additional 3–4 weeks are required).

• Immediate Confirmation: Since we utilize 100% electronic filing, the application number and filing acknowledgement receipt are issued by the USPTO immediately upon filing.

▶ Step-by-Step Procedure

1. Request for Patent Application, by Client

2. Guidance on Required Documents & Fees, by KORUS

3. Transfer of Documents & Remittance to KORUS, by Client

4. Completion of Electronic Filing, by KORUS

5. Issuance of Filing Acknowledgement Receipt with Application Number, by USPTO

6. Completion Reporting & Delivery of Filing Documents and Receipt to the Client, by KORUS

Understanding the U.S. Patent Filing System: Provisional, Non-Provisional, and PCT National Stage Entry

I. Provisional Patent Application

A Provisional Patent Application is filed primarily to secure an early filing date. It does not undergo substantive examination. If a corresponding non-provisional (regular) application is not filed within 12 months of the provisional filing date, the application is automatically deemed abandoned. Note that provisional applications are not available for design patents.

Since 1995, this system has been in effect to balance the benefits given to foreign-priority applications. While a non-provisional application can claim the benefit of the earlier provisional filing date, the patent term is calculated from the filing date of the non-provisional application, not the provisional one.

This route allows for securing a U.S. filing date at a relatively low cost. While a detailed description must be submitted, unlike a non-provisional application, there is no requirement to include claims. Furthermore, it does not require an oath/declaration or the filing of an Information Disclosure Statement (IDS) to disclose prior art. If a non-provisional application is filed within 12 months, the claims supported by the provisional disclosure will receive the benefit of the earlier provisional filing date.

▶ Advantages of a Provisional Application

• Urgent Deadlines: If the one-year grace period under 35 U.S.C. § 102(b) is about to expire and there is insufficient time to draft a full specification, a priority date can be secured quickly without claims and at a lower cost. It can also be filed in languages other than English without an immediate translation. (However, a translation must be submitted within a designated period when filing the subsequent non-provisional application).

• Preventing Third-Party Interference: When filing in the U.S. within one year of a foreign filing, there is a risk that a third party might file in the U.S. in the interim. Simultaneously filing a U.S. provisional application alongside the foreign application can prevent this disadvantage.

• Consolidating Improvements: An applicant can file an initial provisional and subsequent provisionals for improvements. By merging these into one non-provisional application within one year of the first filing, the applicant can secure the earliest possible priority dates for various parts of the technology in the most advantageous way.

• Strategic Delay: It effectively defers the examination of the invention for one year, providing time to monitor competitors or verify the commercial viability of the invention.

II. Non-Provisional Patent Application

In contrast to the provisional application, this is the standard procedure performed to obtain a patent. It requires the submission of an oath or declaration, a specification, claims, and an Information Disclosure Statement (IDS). To claim priority based on a foreign application, the U.S. application must be filed within 12 months for utility patents and within 6 months for design patents from the foreign filing date.

▶ Utility Patent This corresponds to Korea's "Patent" and "Utility Model." It covers any new and useful process, machine, manufacture, or composition of matter, as well as any new and useful improvement thereof. Generally, the term "patent" refers to a utility patent.

▶ Design Patent This covers new, original, and ornamental designs for an article of manufacture. It does not include inventions related to structural or functional characteristics. A design patent application must be drafted with a single claim, and independent or distinct designs must be filed separately. While design rights are separate from patents in Korea, they are treated as a type of patent in the United States.

III. National Stage Entry of PCT Patent Application

Based on the Patent Cooperation Treaty (PCT) signed in 1970 and effective since 1978, this allows an applicant to file a single PCT application with their national patent office (Receiving Office) and then enter the "national stage" of desired member countries within a specified period. The PCT filing date is recognized as the filing date in all designated countries.

The PCT does not grant a "world patent"; rather, it provides a centralized convenience so that one international filing has the effect of filing in all member states simultaneously. To claim priority from a previous filing, the PCT international application must be filed within 12 months of that priority date.

▶ U.S. National Stage Entry The U.S. national phase begins by submitting the required documents—such as the basic filing fee, a copy of the international application, and an English translation (if filed in another language)—to the USPTO within 30 months of the priority date. Up to this point, procedures are uniform under the PCT; thereafter, the application proceeds independently according to U.S. domestic law.

Guide to U.S. Patent Filing Routes and Application Types

Routes of Filing a Patent Application

To obtain a U.S. patent, you may generally proceed in one of the following ways:

1. File separate national applications in each country where you seek patent protection (including the United States), i.e., filing via the Paris route; or

2. File an international application under the PCT (Patent Cooperation Treaty) and then enter the U.S. national stage based on that PCT application.

Types of U.S. Patent Applications

Types of U.S. patent applications include Provisional Applications and Non-provisional Applications (such as Original Applications, Continuation Applications, Continuation-in-Part (CIP) Applications, Divisional Applications, etc.).

1. Provisional Application

A provisional application is filed primarily to secure an earlier filing date. No substantive examination is conducted on a provisional application. If a non-provisional application is not filed within 12 months from the provisional filing date, the provisional application is automatically regarded as abandoned.

2. Non-provisional Application

A non-provisional application is the standard application procedure used to obtain a patent. It generally requires submission of documents such as an oath or declaration, specification, claims, and an Information Disclosure Statement (IDS), among others.

• Original Application: The first-filed application (before any division or amendment) in a series of patent applications filed by the same inventor(s).

• Continuation Application: A procedure for pursuing the same invention as the earlier (parent) application. A continuation may be filed before the parent application is concluded (e.g., before it is abandoned or issues as a patent). When a final rejection is issued during examination, a continuation can provide a means to overcome the rejection by more precisely presenting the subject matter disclosed in the parent application.

• Continuation-in-Part (CIP) Application: A CIP is filed when technology has advanced or been improved after the original filing and the applicant wishes to add new subject matter not included in the parent application. By combining newly developed technical content with the parent application, a CIP can help overcome rejections while maintaining continuity with the earlier invention. For subject matter common to the prior application, the filing date of the prior application serves as the effective date for examination purposes, while the CIP filing date serves as the effective date for the newly added subject matter.

• Divisional Application: A divisional application is filed by dividing the original application into two or more separate inventions. This is commonly done when the examiner issues a Restriction/Election Requirement. A Restriction/Election Requirement is issued to limit the scope of inventions that may be examined in a single application, helping keep the examiner’s technical scope and search burden reasonable. If the examiner determines that the claims include two or more distinct inventions, the examiner may require the applicant to elect one invention for examination. Claims not elected may be pursued in a Divisional Application, and a divisional application generally retains the same filing date as the original (parent) application.

Overview of U.S. Patent System

Types of Patents:

There are three types of U.S. patents - Utility Patents, Design Patents, and Plant Patents. Korea's "patents" and "utility models" correspond to U.S. Utility Patents, and while designs are categorized separately from patents in Korea, they are covered under the patent system in the United States. Accordingly, inventions filed as patents, utility models, or designs in Korea may all be filed as patents in the United States. For reference, Plant Patents cover plants that have been developed through asexual reproduction.

In addition to the patent types mentioned above, there are Reissue Patents and Reexamination Patents, which allow correction of defects in or amendment of the claims of an issued patent.

• A Reissue Patent is filed when there are defects in the specification or drawings of an issued patent, when the scope of the claims is too narrow or too broad such that the patent — in whole or in part — may be at risk of being invalidated, or when there is a justified reason to amend the claims or specification. Reissue applications are most commonly filed to cure defects in the context of infringement litigation or challenges to patent rights. It is also possible to broaden the scope of the claims within the bounds of the specification through a reissue, provided the application is filed within two years from the date of patent grant.

• A Reexamination Patent involves a procedure in which anyone — including the patent owner — may request reexamination during the term of the patent to review its validity. This mechanism is primarily used by opposing parties seeking to invalidate a patent.

Grace Period:

U.S. Patent Law §102(a)(1) provides that, as a general rule, a patent cannot be obtained if the claimed invention was patented, described in a printed publication, in public use, on sale, or otherwise made available to the public before the effective filing date of the claimed invention. However, where such disclosure was made by the inventor or by another who obtained the subject matter directly or indirectly from the inventor, an exception applies: a one-year grace period is granted from the date of public disclosure to the date of patent filing, allowing the inventor to file a patent application within that period. For utility patents, an applicant may first file a provisional patent application to secure an earlier filing date and subsequently obtain a patent through a non-provisional patent application, or alternatively, proceed directly with a non-provisional application.

Patent Term and Maintenance:

The patent term for a Utility Patent is 20 years from the filing date of the patent application, and for a Design Patent, it is 15 years from the date of patent issuance. For applications entering the national phase through the PCT, the patent term is 20 years from the PCT international filing date.

To maintain a Utility Patent, maintenance fees must be paid at 3.5 years, 7.5 years, and 11.5 years after the patent is issued. No maintenance fees are required for Design Patents or Plant Patents.

Duty to Submit an Information Disclosure Statement (IDS):

When filing a U.S. patent application, the applicant has a duty to disclose to the USPTO, through an Information Disclosure Statement (IDS), all prior art references known to the applicant, including the attorney or agent and anyone substantively involved in the application process, that are believed to be material to patentability of the claimed invention.

Accordingly, prior art cited in foreign counterpart applications (including those in Korea) must be submitted through an IDS as information material to patentability. If an applicant fails to submit prior art references known to be material to patentability, the resulting patent, even if granted, may be rendered unenforceable on the grounds of inequitable conduct. For this reason, the IDS submission is a critically important procedure in U.S. patent prosecution that requires careful attention.