Can you patent a shape from nature, say a clam shell, that you intend
to replicate in plastic?

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Clarification of Question by brudenell-ga on 27 Nov 2002 14:00 PST

The shape would have a mechanical application and could be classified
as an invention.

Hello brudenell-ga

I'm a qualified industrial designer (BA hons. Industrial Engineering)
and in my opinion unfortunately you can't. However I'm not a patent
expert and as researchers we always furnish an answer with reputable
researched resources than rely on personal judgement alone.

Excerpt from the Derwent Information web site, who describe themselves
as:
"...the world’s leading patent and scientific information provider. We
help top Fortune 500 companies stay ahead of their competitors by
providing them with key technical, scientific and business information
drawn from patents, research journals and conference proceedings...

...The world’s top companies trust Derwent’s patent information
because:
- our global coverage ensures patent searches are comprehensive 
- we add intellectual value to our patent information - saving
searching time and money
- our customer service team can offer expert guidance at every stage
of patent searching
- all major patent offices, plus top FT100 companies, use our patent
information."
Corporate Profile, Derwent.com
http://www.derwent.com/profile/

They cover the States, Europe, and Asia
( http://www.derwent.com/contact/ )

Excerpt from their web site showing their viewpoint:
"The rules governing what is "patentable" vary slightly from one
country to another. Most inventions are new machines, products or
industrial processes, and these generally can be patented. [Note the
following sentence] However aesthetic creations, or scientific
discoveries without specified application, cannot be patented. Things
that exist in nature, which are discovered and not invented, machines
that defy the laws of nature, scientific theories or mathematical
methods cannot be patented...
...In general a patent will be granted for an invention so long as it
:
- is new or "novel": the invention must never have been made in public
in any way, anywhere, before the date on which the application for a
patent is filed.
- involves an inventive or "unobvious" step: this step must not be
obvious to others with good knowledge and experience of the subject of
the invention.
- is capable of industrial/useful application: an invention must be
capable of being made or used in some kind of industry
 "What is a Patentable Invention?" Derwent Information, 2002
http://www.derwent.com/patentfaq/invent.html

The unpatentable 'aesthetic creation' is echoed by
The Irish Patent Office 
(paragraph "Discoveries and aesthetic creations")
http://www.patentsoffice.ie/what-is-patentable.html
European Patent Office
(paragraph "Further exclusions from patentability"
http://www.european-patent-office.org/epo/pubs/brochure/granting/html/grant1_e.htm
mit.edu "Is my Idea Patentable?"
http://web.mit.edu/invent/www/handbook/chapter03.html
excerpt:
"Being new isn't enough. Being different isn't enough. For your
invention to be patentable, it also must be useful. The invention must
perform a function, do what you say it does, and benefit society in
some way."

However you could trademark the shape instead.
For example Rickett and Coleman argued that their Jiff lemon juice
which was packaged in a plastic yellow lemon shaped container was
their trademark. They even stopped another manfacturer from producing
lemon juice in a lemon shaped container as shoppers would mistake
their competitors product for theirs and dilute their brand. The House
of Lords (UK) ruled it was a passing-off case. So if you have a
specific use and market for your shape it 'might' benefit at least
from brand protection. If a shampoo manufacturer put their shampoo
into a lemon shaped container this wouldn't be 'passing-off' as
clearly the product is in a different market segment.
Reference this thread at cni.org
http://www.cni.org/Hforums/cni-copyright/1997-01/0808.html

Please do not disclose any specifics of your ideas here, as you are
probably aware, once your ideas are in the public domain, they are no
longer patentable (if you intend to do so or have a different angle on
your original idea).


Search Strategy:
"what is patentable"
://www.google.com/search?q=%22what+is+patentable%22&hl=en&lr=&ie=UTF-8&start=10&sa=N

I hope that helps, if you need any clarification of the answer just
ask.
Kind regards
lot-ga

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Clarification of Answer by lot-ga on 27 Nov 2002 15:43 PST

In a follow up to your clarification of your original question, 
the patent application would apply to your mechanical application (if
it is a new process) rather than the shape, or maybe the combination
of the mechanical application and the shape, than the shape alone.
regards
lot-ga

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Request for Answer Clarification by brudenell-ga on 27 Nov 2002 17:24 PST

Can you elaborate on the "passing off" reference?

I very much appreciate your interest in this question

Brudenell

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Clarification of Answer by lot-ga on 27 Nov 2002 18:33 PST

Hello Brudenell,

My research collegue expertlaw-ga (who is a lawyer) has explained it
very well.

Established brands have invested both time and money to ensure their
product has a high profile. Other new brands in the same market may
'piggy back' on the wave of this success and copy visual cues to try
and make an association with this leading brand, as the public are
already familar with the strategy that the leading brand is already
using to sell to the public.

To copy and to imitate is the safest and fastest route to gain a slice
of the cake, rather than to invest time and money in new and unproven
marketing. This Jif lemon case was particulary memorable for me and my
design collegues as it almost appeared unbelievable that Jif were
claiming rights over the shape of a lemon shaped container.
You will find some details here at aippi.org
http://www.aippi.org/reports/q148/gr-q148-e-greatbritain.htm

Kind regards
lot-ga

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Clarification of Answer by lot-ga on 27 Nov 2002 18:40 PST

Hello Brudenell

Many thanks for the generous tip!

regards
lot-ga

Thanks lot-ga

I only required basic guidance and 101 level facts (as you could tell
by the minimum fee offered) and you answered what I needed to know.

THANKS!!!

"Passing off" occurs when (a) goods are sold in a manner that leads
the public to believe that they were sold by someone other than the
actual seller; or (b) an order for a particular good is fulfilled with
a good of a different brand. In the context of the lemon-shaped bottle
described above, the court apparently concluded that the rival
manufacturer intended to "pass off" its lemon juice as Jiff brand, by
utilizing packaging that would confuse the consumer.

Thank you expertlaw-ga!

Your comment is very much appreciated.. and so is your contribution time.

Regards

Brudenell

Also lot-ga

I appreciate the quick answer.

Brudenell

There may also be difficulty in obtaining a trademark. It really
depends on the design.  If the design appears generic and can be
considered ubiquitous, then the filer will probably be turned down.

If the design can be redesigned so that it is stylized, or if
additional elements can be added to the design, i.e. a branding mark,
or product name, etc. then the chances that it will be approved
increase markedly.