Can trademarks or trade names be used in patent claims?

While trademarks or trade names can appear in patent claims, their use to identify or describe a particular material or product generally renders the claim indefinite under 35 U.S.C. 112(b). According to MPEP 2173.05(u): “If the trademark or trade name is used in a claim as a limitation to identify or describe a particular material…

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What are the threshold requirements for clarity and precision in patent claims?

The threshold requirements for clarity and precision in patent claims are set forth in 35 U.S.C. 112(b). The MPEP emphasizes: “The examiner’s focus during examination of claims for compliance with the requirement for definiteness of 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph, is whether the claim meets the threshold requirements of clarity…

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How does the USPTO handle requests for supplemental examination that only include correction of factual information?

When a request for supplemental examination only includes information limited to the correction of factual information (such as correcting a foreign priority or domestic benefit claim), it generally does not raise a substantial new question of patentability (SNQ) by itself. The MPEP states: An item of information limited to a correction of factual information, alone,…

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How is “substantially the same subject matter” determined for pre-AIA 35 U.S.C. 135(b)?

Determining “substantially the same subject matter” for pre-AIA 35 U.S.C. 135(b) is crucial for interference proceedings. The MPEP provides guidance on this determination: “The obviousness test is not the standard for determining whether the subject matter is the same or substantially the same. Rather the determination turns on the presence or absence of a different…

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