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.

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