What are Beauregard Claims in United States patents?

What are Beauregard Claims in United States patents?

A patent is a set of exclusive rights granted to an inventor that successfully proves their invention is new novel and not obvious.  The theory behind patents is that inventors should be encouraged to share their inventions with the public.  In exchange for teaching the public how to make and use an invention, the inventor is allowed to exclude others from using the invention for a limited period of time.  Patents are made up of different sections.  The section of a patent that holds the greatest importance is the claims section.  Patent claims define what the patent actually covers. If a part of the invention is not described in the claim section of the patent then that part of the invention is not covered by the patent.

Writing patent claims is not an easy task.  The United States Patent Office only allows twenty claims in a patent application, but more claims can be added for an additional fee.  Because the cost of a patent application increases as more claims are added, patent attorneys try to fit as much information into patent claims as possible. The language of any patent claim must be carefully chosen to provide the most protection while safeguarding against the risk of invalidation during litigation.  Over time many different styles of writing patent claims have developed.  One method of writing patent claims is called Beauregard Claims.

Beauregard Claims are named for the first case which acknowledged this claim style as valid.  In re Beauregard, 53 F. 3d 1583 (Federal Circuit 1995).  In that case the United States Patent and Trademark Office denied Beauregard’s patent application because it was for computer software.  The United States Patent and Trademark Office and Beauregard eventually settled the issue and software was deemed something which could be patented under certain circumstances.  Beauregard Claims are essentially use only for claims in patents on software.  For this reason Beauregard Claims are sometimes called Computer Readable Medium claims.

A number of United States Supreme Court cases in the past few years have changed how software patents are viewed.  Some academics feel that software patents are almost impossible to get now in the United States.   The purpose of this article is not to give a complete analysis on the law surrounding software patents but merely to educate the reader on how Beauregard Claims are written.

The key thing which signals a patent claim is a Beauregard Claim is a preamble which mentions instructions which can be read by a computer.  The following is an example of a valid start to a Beauregard Claim: “A computer readable storage medium having data stored therein representing software executable by a computer, the software including instructions to….”  Here is another example for a Beauregard Claim: “A computer readable medium containing program instructions for detecting fraud in a credit card transaction between a consumer and a merchant over the Internet, wherein execution of the program instructions by one or more processors of a computer system causes the one or more processors to carry out the steps of….”  Phrasing a Beauregard Claim slightly differently is acceptable, but the United States Patent and Trademark Office likes things to be uniform so it is best to not get too creative.

After the preamble each element of the invention are linked together using phrases like: “instructions to” or “steps of”.

Beauregard Claims offer some advantages in litigation over other claims styles.  Beauregard Claims let a patent owner focus on proving function rather than composition.  For instance, if a patent on a medical device has an apparatus claim, then the patent owner must prove that infringing devices have all the elements listed in the patent claim.  But if a patent on a medical device has an Beauregard Claim, then the patent owner only needs to prove that the infringing device is capable of performing the same functions as the patented device.  This also means that the patent holder does not need to prove actual use of a device and that manufacturers of infringing devices can be pursued as direct infringers.

If you are thinking about applying for a patent in the United States it is best that you consult with an experienced patent attorney to determine the best was to draft you patent application.

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