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