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Clarity and conciseness of claims (Section 25(5)(b))

Trademarks and industry standards

5.133 Reference to trademarks should be avoided since it is an indication of origin rather than of composition or content. However, there is likely to be no issue if the properties of a feature are initially described in structural terms and subsequently further characterised by reference to a material by its trade mark. A trademark should be indicated as being such in order to recognise the proprietor’s rights.

5.134 If a specification refers to a proprietary article or similar material that prima facie is not known, then the description should provide sufficient information for the skilled person to obtain or prepare such. Alternatively, the applicant may provide submissions, and if necessary evidence, to show that the skilled person would be able to determine the meaning of the reference.

5.135 Nevertheless, trademarks should be avoided in claims as they are indicative of the origin of goods and not a definitive characterisation of the product they contain. In particular the composition of a trademarked product can change over time. The use of a trademark in a claim should only be permitted where the applicant is able to show that its use is unavoidable and does not introduce ambiguity. Similarly, claims defined by an industry standard which could change over time should be objected to under clarity.

5.136 However, some judgment may be exercised as to whether an objection is warranted. For example, if the trademark is used in relation to an optional feature, then objection may not be necessary. Similarly if the invention is defined in a manner that clearly sets out the characteristics of a component and an appended claim uses a trademark to characterise a preferred embodiment of that component, it could be assumed that the skilled person would be able to determine the scope of the claim.