How does the MPEP address the use of trademarks or trade names in patent claims?
The MPEP addresses the use of trademarks or trade names in patent claims through form paragraph 7.35.01. This paragraph is used when a trademark or trade name is used as a limitation in a claim to identify or describe a particular material or product.
The form paragraph states:
Claim [1] contains the trademark/trade name [2]. Where a 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 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph. […] The claim scope is uncertain since the trademark or trade name cannot be used properly to identify any particular material or product.
The MPEP explains that a trademark or trade name is used to identify a source of goods, not the goods themselves. Therefore, it cannot properly identify or describe the goods associated with it in a patent claim. This leads to indefiniteness in the claim scope.
Examiners are instructed to specify the material or product which is identified or described in the claim by the trademark/trade name when using this form paragraph.
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