How does the MPEP address the use of trademarks in patent claims?

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Source: FAQ (MPEP-Based) BlueIron Update: 2024-09-30 10 Rules 5 Related FAQs This page is an FAQ based on guidance from the Manual of Patent Examining Procedure. It is provided as guidance, with links to the ground truth sources. This is information only: it is not legal advice. The MPEP addresses the use of trademarks in patent claims in MPEP 2173.05(a) . According to the manual: “If the trademark or trade name is used in a claim as a limitation to identify or describe a particular material or product, the claim does not comply with the requirements of the 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph.” This is because a trademark or trade name identifies a source of goods, not the goods themselves. Using a trademark in a claim may render the claim indefinite, as the material or product could change over time while retaining the same trademark. However, the MPEP also notes that if the trademark has a fixed meaning in the art, it may be acceptable in rare instances. Examiners are advised to suggest substituting generic terminology for the trademark where possible. Related Rules from the Manual of Patent Examining Procedure 10 rules Collapse Precision Requirement for New Terminology MPEP 2173.05(a) Required Claim Must Be Definite Under Section 112(b) MPEP 2173 Definiteness Requirement for Claims MPEP 2173 Required Claims Must Particularly Point Out and Distinctly Claim the Invention MPEP 2173 Required Claims Must Particularly Point Out and Distinctly Claim the Invention MPEP 2173 Claims Must Be Clear and Definite MPEP 2173 Requirement for Clear Claim Language MPEP 2173 Permitted Claims Must Clearly Define Boundaries MPEP 2173 Required Requirement for Clear Claim Boundaries MPEP 2173 Required Clarity and Precision for New Terms MPEP 2173.05(a) Other Related FAQs 5 FAQs Collapse What is the &#8220;broadest reasonable interpretation&#8221; in patent examination? What is the importance of clear terminology in patent claims? Can an inventor define terms diff...