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".
Beauregard In United States patent law, a Beauregard claim is a claim to a computer program written in the form of a claim to an article of manufacture: a computer-readable medium on which are encoded, typically, instructions for carrying out a process. This type of claim is named after the 1995 decision In re Beauregard. The computer-readable medium that these claims contemplate is typically a floppy disk or CD-ROM, which is why this type of claim is sometimes called a "floppy disk" claim.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. 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.The court remanded to the PTO on the agency's motion for permission to reopen examination in the light of proposed Guidelines on patent-eligibility. The court did not expressly decide whether Beauregard claims are patent-eligible. 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 long-standing doctrine held that media that contained merely "non-functional" data (i.e., data that did not interact with the substrate on which it was printed) could not be patented. This was the "printed matter" doctrine which ruled that no "invention" that primarily constituted printed words on a page or other information, as such, could be patented. 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 was for a time accepted.Ex parte Bo Li, Appeal 2008-1213, at 9 (BPAI 2008) and MPEP 2105.01, I.
However, although time has rendered the issue essentially moot with regard to conventional media, such claims were originally and perhaps still can be more widely applied.Richard H. Stern, An Attempt To Rationalize Floppy Disk Claims , 17 J. Marshall J. Computer & Info. L. 183 (1998). The particular inventions to which Beauregard-style claims were originally directed—i.e., programs encoded on tangible computer-readable media (CD-ROMs, DVD-ROMs, etc.)—are no longer as important commercially, because software deployment is rapidly shifting from tangible computer-readable media to network-transfer distribution (Internet delivery). Thus, Beauregard-style claims are now less commonly drafted and prosecuted. However, electronic distribution was practiced even during the time when the Beauregard case was decided and patent drafters therefore soon tailored their claimed "computer readable medium" to encompass more than just floppy disks, ROMs, or other stable storage media, by extending the concept to information encoded on a carrier wave (such as radio) or transmitted over the Internet.
Two important developments have occurred since the mid and late 1990s, which have impacted the form or viability of Beauregard claims. First, in In re Nuijten,500 F.3d 1346 (Fed. Cir. 2007). the Federal Circuit held that signals were not patent eligible, because their ephemeral nature kept them from falling within the statutory categories of 35 U.S.C. § 101, such as articles of manufacture. Practice accordingly evolved to recite Beauregard claim matter as being stored on "non-transitory" computer-readable media.August 24, 2009 PTO memo, "Interim Examination Instructions for Evaluating Subject Matter Eligibility Under 35 U.S.C. § 101."
Second, the decisions of the Supreme Court leading up to Alice Corp. v. CLS Bank International573 U.S. __, 134 S. Ct. 2347 (2014). appeared to exclude what amounted to a patent on information from the patent system. In CyberSource Corp. v. Retail Decisions Inc.,654 F. 3d 1366 (Fed. Cir. 2011). the Federal Circuit first held a method for detecting credit card fraud patent ineligible and then held a corresponding Beauregard claim similarly patent ineligible because it too simply claimed a "mere manipulation or reorganization of data."The PTO's internal appeals board had held, "A computer readable media including program instructions . . . to an otherwise nonstatutory process claim is insufficient to make it statutory."Ex parte Cornea-Hasegan, 89 U.S.P.Q.2d 1557, 1561 (B.P.A.I. 2009); accord Ex parte Mewherter, 107 U.S.P.Q.2d 1857, 1859 (PTAB 2013). After the Cybersource decision, the Supreme Court's decision in the Alice case made the status of some Beauregard claims even more uncertain. If the underlying method claim is not patent-eligible, recasting the claim in Beauregard format will not improve its patent eligibility.
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.Technical Board of Appeal Decision T1173/97
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,2008 EWHC 85 (Pat). so that now they are again allowable in the UK as well, as they have been continuously at the EPO.
Exhausted combination
In United States patent law, an exhausted-combination claim comprises a claim (usually a machine claim) in which a novel device is combined with conventional elements in a conventional manner.
An example would be a claim to a conventional disc drive with a novel motor,Minebea Co. v. Papst, 444 F. Supp. 2d 68 (D.D.C. 2006). to a personal computer (PC) containing a novel microprocessor,Quanta Computer, Inc. v. LG Electronics, Inc.,128 S. Ct. 2109 (2008). or to a conventional grease gun having a new kind of nozzle.Lincoln Engineering Co. v. Stewart-Warner Corp., 303 U.S. 545 (1938).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." 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.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). In its 2008 decision in Quanta Computer, Inc. v. LG Electronics, Inc.,128 S. Ct. 2109 (2008). however, the Supreme Court seems to have assumed without any discussion that its old precedents are still in force, at least for purposes of the exhaustion doctrine.The Court held that the sale of a patented microprocessor "exhausted" not only the microprocessor 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 exhausted combination claims.
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. 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.Richard H. Stern, Tales From the Algorithm War: Benson to Iwahashi, It's Deja Vu All Over Again, 18 AIPLA Q.J. 371 (1991).
Functional
A functional claim expresses a technical feature in functional terms such as "means for converting a digital electric signal into an analog electric signal". Similar language may be used to describe the steps of a method invention ("step for converting... step for storing...").
Functional claims are governed by the various statutes and laws of the country or countries in which a patent application is filed.
United States
In the U.S., functional claims, commonly known as "means-plus-function" or "step-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."
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.
Jepson
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 .