List of patent claim types

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 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.

[3] 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.

[4] 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).

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,[5] 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.

Practice accordingly evolved to recite Beauregard claim matter as being stored on "non-transitory" computer-readable media.

In CyberSource Corp. v. Retail Decisions Inc.,[8] 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The Federal Circuit held in 1984 that the doctrine of exhausted combination is outdated and no longer reflects the law.

[15][16] In its 2008 decision in Quanta Computer, Inc. v. LG Electronics, Inc.,[17] 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.

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."

Jepson claims were also successfully used in In re Ehrreich, 590 F.2d 902, 909-910, 200 USPQ 504, 510 (CCPA 1979) to avoid a double patenting rejection in a co-pending application.

[22] On the other hand, Jepson 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.

Omnibus claims are allowed under the European Patent Convention (EPC), but only "when they are absolutely necessary".

[31] Under U.S. patent law, omnibus claims are categorically disallowed in utility patents, and examiners are advised to reject them[32] 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.

[34] 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.

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.

If it is later found to have a second medical use (such as combating hair loss), the discoverer of this property will want to protect that new use by obtaining a patent for it.

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".

[46] 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.