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…
Read MoreWhat is the difference between a trademark and a generic term in patent claims?
The distinction between trademarks and generic terms is crucial in patent claims: Trademark: Identifies the source of goods, not the goods themselves. Generic term: Describes the goods or materials directly. The MPEP 2173.05(u) explains: “It is important to recognize that a trademark or trade name is used to identify a source of goods, and is…
Read MoreWhat are the time limits for adding a required claim for interference?
When an examiner requires an applicant to add a claim for interference purposes using Form Paragraph 23.04, specific time limits apply. According to MPEP 2304.04(b), the standard time limit is two months from the mailing date of the communication requiring the claim. The form paragraph states: “Applicant is given TWO (2) MONTHS from the mailing…
Read MoreWhat 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…
Read MoreWhat are “terms of degree” in patent claims according to MPEP?
What are “terms of degree” in patent claims according to MPEP? According to MPEP 2173.05(b), “terms of degree” are a type of relative terminology used in patent claims. These terms attempt to describe a value or characteristic by reference to a degree. The MPEP states: “Terms of degree are not necessarily indefinite. […] If the…
Read MoreHow 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,…
Read MoreWhat claims are considered in a supplemental examination determination?
In a supplemental examination, the Office considers the claims of the patent that are in effect at the time of the determination. Specifically, “The claims of the patent in effect at the time of the determination will be the basis for deciding whether ‘a substantial new question of patentability’ (SNQ) is present.” (MPEP 2816.01) However,…
Read MoreHow 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…
Read MoreWhat is a “substantial new question of patentability” in patent reexamination?
A “substantial new question of patentability” (SNQ) is the key criterion for deciding whether to order reexamination of a patent under 35 U.S.C. 302. According to the MPEP 2242, an SNQ exists when: Prior art patents or printed publications raise a substantial question of patentability for at least one claim, and The same question has…
Read MoreWhat is a substantial new question of patentability in ex parte reexamination?
A substantial new question of patentability (SNQ) is a key factor in determining whether an ex parte reexamination will be ordered. According to MPEP 2246, the examiner must identify at least one SNQ and explain how the prior art raises such a question. The decision should point out: The prior art that adds new teaching…
Read More