List of patent claim types
This is a list of special types of claims that may be found in a patent or patent application. For explanations about independent and dependent claims and about the different categories of claims, i.e. product or apparatus claims (claims referring to a physical entity), and process, method or use claims (claims referring to an activity), see Claim (patent), section "Basic types and categories".
- 1 Beauregard
- 2 Exhausted combination
- 3 Jepson
- 4 Markush
- 5 Means-plus-function
- 6 Omnibus
- 7 Product-by-process
- 8 Programmed computer
- 9 Reach-through
- 10 Signal
- 11 Swiss-type
- 12 Notes
- 13 References
In United States patent law, a Beauregard claim is a claim to an article of manufacture embodied as a computer-readable medium and instructions, named after decision In re Beauregard. Beauregard claims involve a computer-readable medium such as a floppy disk or CD-ROM, containing a set of instructions that causes a computer to perform a process. In the past claims to pure instructions were generally considered not patentable because they were viewed as "printed matter," that is, like a set of instructions written down on paper. However, in In re Beauregard the Federal Circuit vacated for reconsideration in the PTO the patent-eligibility of a claim to a computer program encoded in a floppy disk, regarded as an article of manufacture.[Notes 1] Consequently, such computer-readable media claims are commonly referred to as Beauregard claims.
When first used in the mid-1990s, Beauregard claims held an uncertain status, as contemporary cases (In re Lowry (1994)) implied that computer-readable media that contained merely "non-functional" data was unpatentable under the "printed matter" doctrine (which ruled unpatentable any "invention" that primarily comprised printed words on a page or other information, as such). The case from which this claim style derives its name, In re Beauregard (1995), involved a dispute between a patent applicant who claimed an invention in this fashion, and the PTO, which rejected it under this rationale. The appellate court (the United States Court of Appeals for the Federal Circuit) accepted the applicant's appeal - but chose to remand for reconsideration (rather than affirmatively ruling on it) when the Commissioner of Patents essentially conceded and abandoned the agency's earlier position. Thus, the courts have not expressly ruled on the acceptability of the Beauregard claim style, but its legal status has been well accepted.
However, although time has rendered the issue essentially moot with regard to conventional media, such claims were originally and can still be more widely applied. The particular inventions to which Beauregard-style claims were originally directed—i.e., inventions involving computer-readable media—are no longer as important commercially, because software deployment is rapidly shifting from computer-readable media (CD-ROMs, DVD-ROMs, etc.) to network-transfer distribution (Internet delivery). Thus, Beauregard-style claims are less commonly drafted and prosecuted, although electronic distribution was practiced even during the time when the Beauregard case was decided and patent drafters tailored the "computer readable medium" to encompass more than just floppy disks or other "insertable" media. To the extent that encoded signals were claimed under the Beauregard rubric, that expedient has been shut down by the Federal Circuit's decision in In re Nuitjen that signals are patent-ineligible.
Claims of this type have been allowed by the European Patent Office (EPO). However, a more general claim form of "a computer program for instructing a computer to perform the method of [allowable method claim]" is allowed, and no specific medium needs to be specified.
The UK Patent Office (aka IPO) began to allow computer program claims following this revised EPO practice, but then began to refuse them in 2006 after the decision of Aerotel/Macrossan. The UK High Court overruled this practice by decision, so that now they are again allowable in the UK as well, as they have been continuously at the EPO.
Recent developments in wake of Bilski
In the wake of the Federal Circuit's late-2008 en banc decision in In re Bilski, the PTO Board of Appeals (BPAI) has challenged the validity of Beauregard claims and has held that they are not directed to statutory subject matter. In Ex parte Cornea-Hasegan, a January 2009 non-precedential decision of the BPAI, the Board considered method claims and Beauregard claims concerning a method of performing mathematical calculations when the outcome is likely to be "tiny." The form of the Beauregard claims was "a computer readable media including program instructions which when executed by a processor [using software] cause the processor to perform" the claimed method. The assignee was Intel.
The method claims were rejected because they did not meet the machine-or-transformation test stated in Bilski. Under that test, a claim that "neither recites a particular machine or apparatus, nor transforms any article into a different state or thing, is not drawn to patent-eligible subject matter." Intel argued that the specification made it clear that the claim was directed to an article of manufacture, because the "computer readable media" was defined to be a fixed magnetic disk, floppy disk drive, optical disk drive, magneto-optical disk drive, magnetic tape, or non-volatile memory. The Board held that the same Bilski analysis nonetheless applied, and the computer readable media "does not transform physical subject matter and is not tied to a particular machine." The claim, in substance was drawn to making a mathematical calculation. "Limiting the claim to computer readable media does not add any practical limitation to the scope of the claim." As Bilski states, the machine-or-transformation test under § 101 "cannot be circumvented by attempting to limit the use of the formula to a particular technological environment." A subsequent district court opinion, CyberSource Corp. v. Retail Decisions Inc., reached the same conclusion, citing the board opinion with approval.
Earlier, however, in Ex parte Bo Li, a November 2008 decision, the BPAI reversed the rejection of a claim written in similar Beauregard format. The Board's principal reason for upholding the format as statutory was stare decisis: "It has been the practice for a number of years that a 'Beauregard Claim' of this nature be considered statutory at the USPTO as a product claim." The Bo Li case perhaps could be distinguished from Ex parte Cornea-Hasegan by the additional links to a machine or apparatus present in Bo Li's claims: "a number of software components, such as the claimed logic processing module, configuration file processing module, data organization module, and data display organization module, that are embodied upon a computer readable medium." The value of Bo Li as a precedent is limited, however, because the BPAI found the subject matter obvious and sustained the rejection on that ground, making the § 101 ruling an obiter dictum.
In United States patent law, an exhausted combination claim is a claim, usually a machine claim, in which a novel and inventive device is claimed in combination with other elements that are conventional and with which the novel device cooperates in a conventional manner.
An example would be a claim to an otherwise conventional disc drive having a novel motor, to a personal computer (PC) containing a novel microprocessor, or to a conventional grease gun having a new kind of nozzle.[Notes 2] A far-fetched example, but one that illustrates the principle, would be a claim to an automobile containing a novel brake pedal.
The Federal Circuit held in 1984 that the doctrine of exhausted combination is outdated and no longer reflects the law. In its 2008 decision in Quanta Computer, Inc. v. LG Electronics, Inc., however, the Supreme Court seems to have assumed, at least in this writers opinion, without any discussion that its old precedents are still in force, at least for purposes of the exhaustion doctrine.[Notes 3]
Exhausted combination claims can have practical significance in at least two contexts. First is royalties. On the one hand, there is the possibility of the royalty base being inflated (since a car containing a novel brake pedal sells for more than the brake pedal itself would) or creating at least an opportunity to levy royalties at more than one level of distribution (an issue in the Quanta case). On the other hand, the royalties may not be just without a proper combination of elements. In a case where an improvement is lower in cost and makes the car worth much more, for example, a 20 cent trickle charger connected to the body of the car makes the car have 50% improvement in fuel efficiency, such case would make the car itself worth much more while any royalty obtained from the trickle charger would amount to a mere pittance. In such cases, a combination claim citing the car and the trickle charger has practical significance from a different perspective, i.e. rewarding the inventor for his just contribution to the technological arts. A second context is that of statutory subject matter under the machine-or-transformation test. By embedding a claim that does not satisfy the machine-or-transformation test in a combination with other equipment, it may make it possible to at least appear to satisfy that test.
In United States patent law, a Jepson claim is a method or product claim where one or more limitations are specifically identified as a point of novelty, distinguishable over at least the contents of the preamble. They may read, for instance, "A system for storing information having (...) wherein the improvement comprises:". The claim is named after the case, Ex parte Jepson, 243 Off. Gaz. Pat. Off. 525 (Ass't Comm'r Pat. 1917). They are similar to the "two-part form" of claim in European practice prescribed by Rule 43(1) EPC.
In a crowded art, a Jepson claim can be useful in calling the examiner's attention to a point of novelty of an invention without requiring the applicant to present arguments and possibly amendments to communicate the point of novelty to the Examiner. Such arguments and amendments can be damaging in future litigation, for example as in Festo.
On the other hand, the claim style plainly and broadly admits that that subject matter described in the preamble is prior art, thereby facilitating the examiner's (or an accused infringer's) arguments that the improvement is obvious in light of the admitted prior art, as per 35 U.S.C. § 103(a). Prosecutors and applicants are hesitant to admit anything as prior art for this reason, and so this claim style is seldom used in modern practice in the U.S.
Mainly used in chemistry, but not only, a Markush claim or structure is a claim with multiple "functionally equivalent" chemical entities allowed in one or more parts of the compound. According to "Patent Law for the Nonlawyer" (Burton A. Amernick; 2nd edition, 1991),
- "In claims that recite... components of compositions, it is sometimes important to claim, as alternatives, a group of constituents that are considered equivalent for the purposes of the invention.... It has been permissible to claim such an artificial group, referred to as a 'Markush Group,' ever since the inventor in the first case... won the right to do so."
If a compound being patented includes several Markush groups, the number of possible compounds it covers could be vast. No patent databases generate all possible permutations and index them separately. Patent searchers have the problem, when searching for specific chemicals in patents, of trying to find all patents with Markush structures that would include their chemicals, even though these patents' indexing would not include the suitable specific compounds. Databases enabling such searching of chemical substructures are indispensable.
Markush claims were named after Eugene Markush, the first inventor to use them successfully in a U.S. patent (see, e.g., U.S. Patent Nos. 1,506,316, 1,982,681, 1,986,276, and 2,014,143), in the 1920s to 1940s. See Ex parte Markush.
According to the USPTO, the proper format for a Markush-type claim is : "selected from the group consisting of A, B and C." 
In August 2007, the USPTO proposed a number of changes to the use of Markush-type claims.
A means-plus-function claim is a claim including a technical feature expressed in functional terms of the type "means for converting a digital electric signal into an analog electric signal". A variant known as a "step-plus-function" claim style may be used to describe the steps of a method invention ("step for converting... step for storing...")
Means-plus-function claims are governed by the various statutes and laws of the country or countries in which a patent application is filed.
In the U.S., means-plus-function claims are governed by various federal statutes, including 35 U.S.C. 112, paragraph 6, which reads: "An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof." Interpreting this seemingly simple statement has proven to be a surprisingly difficult task.
First, most claim styles are intended to be a succinct summary of the invention that stands alone and is interpreted largely on their own merits. By contrast, this claim style tacitly imports and relies upon the entire specification for interpretation, which is implausible (and also the reason for disallowing "omnibus" patent claims - see below.)
Second, the courts, as well as the patent office, have been somewhat inconsistent in specifying rules for when the "means-plus-function" interpretation is triggered. A claim reciting "means for [a specific function]" probably triggers the rule. The courts have construed variations like "means of," "means by," or even "component for [a specific function]", with inconsistent results.
Third, the courts and the patent office have rapidly proposed, modified, and deprecated several tests for determining the scope of "equivalents" of a means-plus-function element. This problem is exacerbated by the use of the term "equivalents," which is apparently similar to but not identical to the use of the same term in the "doctrine of equivalents" test of patent infringement.
Extensive analysis has been done on interpretation of the scope and requirements of the means- and step-plus-function claim style. Despite the complexity of this area of law, which includes many ambiguous and logically contradictory opinions and tests, many practitioners and patent applicants still use this claim style in an independent claim if the specification supports such means-plus-function language.
A so-called omnibus claim is a claim including a reference to the description or the drawings without stating explicitly any technical features of the product or process claimed. For instance, they may read as "Apparatus as described in the description" or "An x as shown in Figure y".
European Patent Organisation
Omnibus claims are allowed under the EPC, but only "when they are absolutely necessary". Other patent offices, such as the United Kingdom Patent Office, are more receptive to this claim style.
Under U.S. patent law, omnibus claims are categorically disallowed in utility patents, and examiners will reject them as failing to "particularly point out and distinctly claim the subject matter which the applicant regards as his invention" as required by 35 USC 112 paragraph 2. By contrast, design patents and plant patents are required to have one claim, and in omnibus form ("the ornamental design as shown in Figure 1.")
A product-by-process claim is a product claim where the product is defined by its process of manufacture, especially in the chemical and pharmaceutical industries. They may read for instance "Product obtained by the process of claim X," "Product made by the steps of . . .," and the like.
According to the European practice, they should be interpreted as meaning "Product obtainable by the process of claim...". They are only allowable if the product is patentable as such, and if the product cannot be defined in a sufficient manner on its own, i.e. with reference to its composition, structure or other testable parameters, and thus without any reference to the process.
The protection conferred by product-by-process claims should not be confused with the protection conferred to products by pure process claims, when the products are directly obtained by the claimed process of manufacture.
In the U.S., the Patent and Trademark Office practice is to allow product-by-process claims even for products that can be sufficiently described with structure elements. However, since the Federal Circuit's 2009 decision in Abbott Labs. v. Sandoz, Inc., 566 F.3d 1282, 1300 (Fed. Cir. 2009), such claims are disadvantageous compared to "true product" claims. To prove infringement of a product-by-process claim under Abbott, a patentee must show that a product meets both the product and the process elements of a product-by-process claim. To invalidate a product-by-process claim, however, an accused infringer need only show that the product elements, not the process elements, were present in the prior art. This can be compared to a "true product" claim, where all limitations must be proven to invalidate the claim.
A programmed computer claim is one in the form—a general-purpose digital computer programmed to carry out (such and such steps, where the steps are those of a method, such as a method to calculate an alarm limit or a method to convert BCD numbers to pure binary numbers). The purpose of the claim is to try to avoid case-law holding certain types of method to be patent-ineligible. The theory of such claims is based on "the legal doctrine that a new program makes an old general purpose digital computer into a new and different machine." The argument against the validity of such claims is that putting a new piano roll into an old player piano does not convert the latter into a new machine. See Old Piano Roll Blues.
A reach-through claim is one that attempts to cover the basic research of an invention or discovery. It is an "attempt to capture the value of a discovery before it may be a full invention."  Specifically, a reach-through claim is one in which "claims for products or uses for products when experimental data is provided for screening methods or tools for the identification of such products." 
A reach through claim can be thought of as an exception to the general rule about claims.
An example of a denied claim was when the United States Federal Circuit refused to recognize a reach-through claim for Celebrex.
A "signal" claim is a claim for an electronic signal that can, for example, embodies information that can be used to accomplish a desired result or serve some other useful objective. One claim of this style might read: "An electromagnetic signal carrying computer-readable instructions for performing a novel method... " In accordance with such an example, patent coverage might be obtained for the transmission of software via digital signals, e.g., by the internet.
The patent eligibility of this claim style is hotly contested. Opponents[who?] cite 35 USC 101, which authorizes the issuance of patents only for "processes, machines, manufactures, and compositions of matter," and characterize "signals" as falling outside all of these "statutory classes." Opponents[who?] also cite the long-standing principle that "abstract concepts," such as mathematical formulae and laws of nature, are not "inventions" as defined by U.S. patent law, and neither can be an abstract arrangement of data embedded on an electromagnetic carrier wave - which is essentially nothing more than a form of energy.
Proponents[who?] of this claim style characterize the "signal" as an "article of manufacture," albeit one manufactured by a digital transmitter rather than by a foundry. Proponents[who?] also object to the characterization of "signal" as abstract "energy," and often reference the relativistic fungibility of matter and energy. Accordingly, such proponents[who?] argue, objections to signal claims as "ephemeral and transitory" are contrary to the teachings of modern physics.
The law on this issue is similarly split. In its Interim Guidelines for Examination of Patent Applications for Patent Subject Matter Eligibility, the U.S. Patent & Trademark Office instructs its examiners to reject categorically any patent claim that "recites nothing but the physical characteristics of a form of energy," and dismisses such claimed concepts as "nonstatutory natural phenomena." However, the Board of Patent Appeals and Interferences (an administrative law board within the same patent office) has previously reversed an objection that recited this same logic and categorically affirmed the patent eligibility of signal claims (Ex parte Rice.)
In the United States, transitory signal claims are no longer statutory subject matter under In re Nuijten. A petition for Rehearing En Banc and Certiorari to the Supreme Court were both denied.
In Europe, a Swiss-type claim or "Swiss type of use claim" is a formerly used claim format intended to cover the first, second or subsequent medical use (or indication of efficacy) of a known substance or composition.
Consider a chemical compound which is known generally, and the compound is known to have a medical use (e.g. in treating headaches). If it is later found to have a second medical use (such as combatting hair loss), the discoverer of this property will want to protect that new use by obtaining a patent for it.
However, the compound itself is known and thus could not be patented; it would lack novelty under Article 54 EPC (before the entry into force of the EPC 2000 and new Article 54(5) EPC). Nor could the general concept of a medical formulation including this compound. This is known from the first medical use, and thus also lacks novelty under EPC Article 54. Only the particular method of treatment is new. However methods for treatment of the human body are not patentable under European patent law (Article 53(c) EPC). The Enlarged Board of Appeal of the European Patent Office solved this by allowing claims to protect the "Use of substance X in the manufacture of a medicament for the treatment of condition Y". This fulfilled the letter of the law (it claimed the manufacture, not the medical treatment), and satisfied the EPO and applicants, in particular the pharmaceutical industry. Meanwhile, in view of new Article 54(5) EPC, on 19 February 2010, the EPO Enlarged Board of Appeal issued its decision G 2/08 and decided at that occasion that applicants may no longer claim second medical use inventions in the Swiss format.
In courts, the validity of claims drafted as if they were directed to a manufacturing process, when they are directed to a non-patentable subject-matter, remains to be seen. Because such claims had first been devised in Switzerland, they became known as "Swiss-type claims".
In certain countries, including New Zealand, the Philippines, China, Israel and Canada, methods of medical treatment are not patentable either (see MOPOP section 12.04.02), however "Swiss-type claims" are allowed.
- ^ The court remanded to the PTO on the agency's motion for permission to reopen examination in the light of proposed Guidelines on patent-eligibilty. The court did not expressly decide whether Beauregard claims are patent-eligible.
- ^ In Lincoln Engineering, the inventor invented a new and improved coupling device to attach a nozzle to a grease gun. The patent, however, claimed the whole combination of grease gun, nozzle, and coupling. The Supreme Court stated that "the improvement of one part of an old combination gives no right to claim that improvement in combination with other old parts which perform no new function in the combination." It then concluded that the inventor’s "effort, by the use of a combination claim, to extend the monopoly of his invention of an improved form of chuck or coupler to old parts or elements having no new function when operated in connection with the coupler renders the claim void."
- ^ The Court held that the sale of a patented microprocessor "exhausted" not only the microproceesor patent (i.e., removed the legal effectiveness of the patent's statutory monopoly) but also the patent on the personal computer (PC) containing the microprocessor, because both were based on the same inventive concept. It is therefore unclear what effect, if any, the Quanta decision will have on the validity of exhauseted combination claims.
- ^ In re Beauregard, 53 F.3d 1583 (Fed. Cir. 1995).
- ^ See Victor Siber and Marilyn S. Dawkins, Claiming Computer-Related Inventions As Articles of Manufacture, 35 IDEA 13 (1994). The Beauregard case was a test case brought by Victor Siber, IBM's chief patent lawyer at the time, to test the legal theories advanced in his IDEA article.
- ^ Ex parte Bo Li, Appeal 2008-1213, at 9 (BPAI 2008) and MPEP 2105.01, I.
- ^ Richard H. Stern, An Attempt To Rationalize Floppy Disk Claims, 17 J. Marshall J. Computer & Info. L. 183 (1998), .
- ^ 500 F.3d 1346 (Fed. Cir. 2007),
- ^ Technical Board of Appeal Decision T1173/97
- ^ 2008 EWHC 85 (Pat).
- ^ 545 F.3d 943 (Fed. Cir. 2008) (en banc).
- ^ BitLaw, 89 U.S.P.Q.2d 1557 (B.P.A.I. 2009).
- ^ 2009 WL 815448 (N.D. Cal. Mar. 23, 2009).
- ^ Minebea Co. v. Papst, 444 F. Supp. 2d 68 (D.D.C. 2006).
- ^ Quanta Computer, Inc. v. LG Electronics, Inc.,128 S. Ct. 2109 (2008).
- ^ Lincoln Engineering Co. v. Stewart-Warner Corp., 303 U.S. 545 (1938).
- ^ Radio Steel & Mfg. Co. v. MTD Products, Inc., 731 F.2d 840, 845 (Fed. Cir. 1984).
- ^ In re Bernhardt, 417 F.2d 1395 (Ct. Cus. & Pat. App. 1969).
- ^ 128 S. Ct. 2109 (2008).
- ^ Richard H. Stern, Tales From the Algorithm War: Benson to Iwahashi, It's Deja Vu All Over Again, 18 AIPLA Q.J. 371 (1991).
- ^ http://www.1201tuesday.com/1201_tuesday/2009/06/jepson.html
- ^ Ex parte Markush, 1925 Dec. Comm’r Pat. 126, 128 (1924).
- ^ MPEP Section 803.02
- ^ Notice of Proposed Rulemaking regarding Examination of Patent Applications That Include Claims Containing Alternative Language
- ^ a b Armstrong, James. Essentials of Drafting US Patent Specifications and Claims. pp. 47–51. ISBN 4827105561.
- ^ a b Landis, John. Mechanics of Patent Claim Drafting. pp. 41.
- ^ Rule 43(6) EPC
- ^ Decision T 150/82, O.J. EPO issue: 1984,309.
- ^ Guidelines for Examination in the EPO c.iii.4.17
- ^ UK IPO Manual of Patent Practice 14.124
- ^ Article 64(2) EPC
- ^ See 3 Chisum on Patents § 8.05[a]-[c]
- ^ In re Johnston, 502 F.2d 765, 773 (CCPA 1974), from the dissenting opinion.
- ^ Patently-O web site
- ^ Dorsey law firm web site
- ^ a b Hodgson, Russ law firm web site
- ^ National academies web site Power Point required.
- ^ In Re Petrus A.C.M. Nuijten, United States Court of Appeals for the Federal Circuit, 2006-1371 (Serial No. 09/211,928)
- ^ Dennis Crouch, Signal Claims Are Not Patentable: Nuijten Stands -- Rehearing Denied, Patently-O, February 11, 2008.
- ^ Opinion G5/83 of the EPO Enlarged Board of Appeal
- ^ "Patents Act 1977: Second medical use claims", UK IPO, Practice notices. Consulted on October 3, 2010.
- ^ 
- ^ CIPO - Manual of Patent Office Practice - Chapter 12
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