Intellectual Property Directions

Is “shape” claimable?

Every so often a client wants to get a patent that includes “shape” as at least one of the claims. In one case the item in question was a printed circuit card shaped to fit the non-rectangular boundaries of his equipment’s housing. At the other extreme, consider a surgical or dental tool shaped to perform a specialized function. How about you – is everything you make a simple rectangular solid or is there a [claimable] shape in your future?

Of course, no one knows for sure what the patent examiner will or will not allow, but from experience we can make some good guesses. We all know that an invention must be novel and non-obvious to be patentable. In addition, many people seem to forget, an invention must be useful. So the first question to ask about your “shape” claim is whether the particular shape is needed to make your invention work – if not, maybe you should think about filing a design patent, which covers purely ornamental aspects of an invention. Think about a Mickey Mouse watch or clock, where the hands of the clock are Mickey’s arms and hands. Do the shapes of the watch hands make a difference for telling the time? No. So getting a utility patent on the shape of the watch hands would be hard to imagine.

Well then, how about the printed circuit card shaped to fit the non-rectangular boundaries of the equipment housing. It’s not ornamental. But again, the circuit card is identical to millions of other circuit cards, except for its outer periphery. So again, probably no allowable claim. In this case the examiner would probably reject the claim as an obvious design choice (to shape the circuit board to fit the space available).

At the other end of the “shape-claim” spectrum are those inventions wherein the “shape” is what is new and is what makes the invention perform its function; for example, in a new dental tool the shape of the tool is what make the tool novel and non-obvious. In these cases the “shape” in question can usually be defined very precisely: a probe made from 1 millimeter stainless steel wire, having a first 45 degree bend 4 millimeters from its distal end, etc. etc.

Finally, there are the inventions that are based on shape, but only loosely. Patent claims are supposed to “particularly point[ing] out and distinctly claim[ing] the subject matter which the applicant regards as his or her invention.” Claims that are fuzzy are rejected as indefinite. So what happens when you invention depends on its shape…but not in a hard and fast way. Assuming you can develop a mathematical formula describing the ideal shape, how do you describe how closely a competitor’s product must match that ideal shape to still be infringing; after all, you can’t claim the entire world. If you write a broad claim it may/will be rejected as indefinite; if you write a narrow claim your competitors can easily avoid infringement.

So shape up! Consult with your IP professionals to figure out if your shape-based claims are worth pursuing.

A couple of days ago the Pew Research Center released the results of a research study they performed. The essence of the study is that the tweets on Twitter don’t generally agree with results of (properly performed) national surveys. Well, knock me over with a feather. A self-selecting subset of twitter users (those who tweet on a particular topic), themselves a self-selecting subset of the population, are not representative of all Americans. Who paid for that bit of insight.

“The reaction on Twitter to major political events and policy decisions often differs a great deal from public opinion as measured by surveys. This is the conclusion of a year-long Pew Research Center study that compared the results of national polls to the tone of tweets in response to eight major news events, including the outcome of the presidential election, the first presidential debate and major speeches by Barack Obama.”

…and this took them a year of research to figure out! To be fair, I didn’t read the whole post, but, like movie trailers, your headline and opening paragraph(s) are generally the best of the rest.

I know we are just past the holiday period – you know, peace on earth and good will toward men – but a couple of recent office actions have me convinced that patent examiners are anything but men of good will. How do they annoy me… let me count the ways I’ve seen in blogs etc.:

1) rejecting a claim with a “bouyant” flap because a similar flap in the prior art was a hydrofoil and therefor rose toward the surface [uh...only when moved through the water!]

2) rejecting a claim with a “translationally stationary” scanning element because a prior art scanner, which moved across the surface of an object, disclosed “a translational stationary scan mechanism with respect to said surface” – wait for it now – “in the vertical direction”. [Emphasis added]

3) rejecting a claim with a remote [microwave] imaging element because “as a radar guy” he thought the system doing the imaging OF the remote element.

4) rejecting an invention with removable legs because, the examiner stated,“the legs of [the prior art reference] are capable of being removed, even if it requires a blow torch.” [Emphasis added.]

5) Rejection of an invention that involved flexible padding because, again, with enough force even a steel plate is flexible. [Emphasis added.]

6) Rejection of a processing system that used a browser applet because the examiner equated the client-server relationship to a terminal on a mainframe.

The good news is that these dumb rejections are (generally) overcome…

The bad news is that overcoming them costs you, the inventor, money. Either in extended examination costs (i.e., having to have your attorney file an “RCE”, a request for continued examination) or by going before the patent office’s board of appeals.

In any case, these stupid examiner tricks are the result of bad management at the PTO, where examiners are not judged by the quality of their examinations (as measured at least in part by the validity of their office actions).

I doubt that it’s news to many people that the US is changing from a so-called first-to-invent priority system for awarding patents to a first-(inventor)-to-file system. And that pending change (March of 2013) has a lot of people running around as if the sky were falling. It’s not. You aren’t really in a race to the patent office to beat another inventor.

For most inventors this switch, per se, will have no effect on their patent applications. The chances that you and another inventor more or less simultaneously invent and file the same invention is small. After all, there are currently just a handful of “interference” procedures to sort out who was the first to invent. And in those procedures, the first inventor to file usually comes out on top anyway.

That’s not to say the switch will not have an impact on you. The collateral damage from the switch to first to file is that the scope of problematic prior art is significantly increased. In the present system you can “swear behind” a piece of prior art by presenting evidence that your date of invention was earlier than the date of the prior art.

Such swearing behind only makes sense when the date of invention is important (as it is now). Essentially you are proving that you had fully conceived your invention before the piece of prior art was known to the public; even if it took a year of diligent work to reduce your invention to practice (during which time the prior art became public) you are still entitled to the patent.

Under first-to-file, the idea of using the date of conception to provide priority goes out the window… all first to file cares about is, not surprisingly, when you file. But even this change is not a totally new concept to wrap your head around. If you’ve even been interested in getting a patent outside the US you have seen this issue before. In virtually the rest of the world, “absolute novelty” reigns; if your invention has been disclosed to the public, you lose.

Admittedly, under the new US rules things are even more difficult since prior art can be invalidating for both novelty AND obviousness, but the basic principle of needing to file before someone else makes a public disclosure is the same.

So, after March 16, 2013, there’s no race to beat another inventor to the patent office but there is an imperative to file before some (academic sort?) publishes something that will destroy your right (and everybody else’s) to get a patent. But right now, before first to file, you should make a concerted effort to file (at least a provisional application) on any potentially patentable invention you’ve been working on.

If you don’t, the piece of prior art you can swear behind on March 15th will be invalidating on March 16th.