Incapable Information Matter Examination Guide

Please review and comment on this draft Examination Guide on Incapable Information Matter.

Incapable Information Matter Examination Guide

IBM Comments to the Examination Guide on Informational Matter

By Leonora Hoicka (IBM Associate General Counsel, IP Law), Lisa Ulrich (IBM Senior Attorney, IP Law), and Jenny Greisman ( IBM Attorney, IP Law) IBM thanks the United States Patent and Trademark Office (Office) for the opportunity to comment on the Draft Examination Guide on Incapable Informational Matter (1/19/2017). The following comments discuss IBM’s concerns with respect to having informational matter as a separate ...more »

Submitted by (@lisaulrich)

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Incapable Information Matter Examination Guide

Subject Matter Insufficiently Defined

If this is a legitimate basis for refusal, it should not apply in cases where the proper refusal is merely descriptive or generic, which should be stated expressly in the guide. Beyond that, the guide does not provide any guidance on what the distinction is between "incapable" versus "merely descriptive," "generic," "ornamental" or "use as a mark." As noted by others, saying that the matter "merely [] imparts information" ...more »

Submitted by (@pchestek)

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