Invalidation Search – Trademark in Claims

As described in my earlier post that searching for relevant prior art is NOT the ONLY way to invalidate a patent.

Look for trademark in claims.

Now what do I mean when I say ‘trademark in claims’. There are many patents that mentions trademark products in claims. For example, a claim in a patent defines “a VELCRO fastener” as one of the elements. The specification describes the use of a VELCRO fastener in the invention, but doesn’t describe the structure of such a fastener.

Where is the problem?

A trademarks used in claims are indefinite under 112 paragraph 2, pursuant to section 706.03(d) of the MPEP. Thus, anytime a Velcro trademark is used in a claim, it fails to recite sufficient structure and should be rejected. The applicant is relying solely on the trademark to define the element, without reciting any specific structural limitations. The velcro example courtesy MyPatentBar

Therefore during invalidation, read the claims carefully not just to understand the technology of the invention but also to check if it confirms to other criterias as well.

Tags: Claims, indefinite, Invalidation