Many clients disclose inventions with titles suitable for trademarking and brand naming. It is not uncommon for a patent practitioner to scrutinize the invention title and update it before filing. Many clients ask questions related to the name change and worry about the implications for their product name and their brand. However, the update in title is generally to the inventor’s benefit and has little to no impact on the inventor’s end product. Updating the title prior to submission of the patent application can avoid objections during examination and allow the patent office to more readily process and classify the invention after submission.
The following is a quick overview of patents title requirements and what (if any) weight is given to the title during prosecution and after patent issuance.
Patent titles are short and specific descriptions of the invention, where the patent office requires the description to be technically descriptive and accurate. As stipulated in 37 C.F.R § 1.72 and in MPEP § 606, “[t]he title should be brief but technically accurate and descriptive and should contain fewer than 500 characters.” The title provides the patent office with a brief understanding of the patent claims and the nature of the invention. The patent title also assists the patent office with classifying and indexing the patent, therefore creating an accurate and succinct title is an important step to proper classification. Proper classification and an accurate title also improve others’ ability to identify and search for your patent application after it has published.
Trademark names, by contrast, can be vague or unrelated to the technical and physical attributes of the invention. Therefore, trade names should generally be removed from the invention title when preparing the patent application in favor of a more technically descriptive title. While this descriptive title may be dry and more direct (boring even!), failure to properly title the patent can lead to objections during prosecution of the patent and added expense for the inventor(s).
Once the patent title is chosen, the inventor or owner of the patent can choose a suitable product name or trademark name without regard to the patent title. The title of the product and the title of the invention do not need to be the same to be protected by the patent. Therefore, it is best practice to allow your patent practitioner to suggest a new title if the invention title is a trade name or brand name, as opposed to one that is simply “technically descriptive”, while brand names and logos can be protected by registering a trademark.