2.11.5.7 Trade Marks in Claims

Date Published

Note: The information in this part only applies to:

  • standard patent applications with an examination request filed before 15 April 2013.  
  • innovation patents with an examination request filed before 15 April 2013.
  • innovation patents where the Commissioner decided before 15 April 2013 to examine the patent.

For all other standard patent applications/innovation patents, see 2.11.5.7A Trade Marks in Claims.

A trade mark or proprietary name is used to identify the source of a good; see 2.11.3.8 Trade Marks in Specifications. A claim that uses a trade mark to identify an element of an invention may not be clear through an inability to establish the precise scope of the claim.  Where the scope of a claim is uncertain or ambiguous as the result of the use of a trade mark, examiners should object that the claim lacks clarity.

Note: If a trade mark has been used in a claim, it is highly likely that the trade mark will have been similarly used in the description. In this case, an objection of lack of full description may also be relevant (see 2.11.3.8 Trade Marks in Specifications).