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Markush structures

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Markush structures

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".


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.[1] 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.[2] 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.[3]

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.[4] 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 Nuijten[5] 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.[6]

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,[7] 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 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,[8] to a personal computer (PC) containing a novel microprocessor,[9] or to a conventional grease gun having a new kind of nozzle.[10][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.[11][12] In its 2008 decision in Quanta Computer, Inc. v. LG Electronics, Inc.,[13] 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.[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. 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.[14]



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 § 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.[16]

According to the USPTO, the proper format for a Markush-type claim is : "selected from the group consisting of A, B and C." [17]

In August 2007, the USPTO unsuccessfully proposed a number of changes to the use of Markush-type claims.[18]


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.

United States

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.[19][20] 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.[19][20]


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".[21][22][23] Other patent offices, such as the United Kingdom Patent Office, are more receptive to this claim style.[24]

United States

Under U.S. patent law, omnibus claims are categorically disallowed in 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 claim directed to a product where the product is defined by its process of preparation, especially in the chemical and pharmaceutical industries.[25] 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.[26]

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.[27] 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.

Programmed computer

Main article: Software patent

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."[28] 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.[29] It is an "attempt to capture the value of a discovery before it may be a full invention." [30] 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." [31]

A reach through claim can be thought of as an exception to the general rule about claims.[32]

An example of a denied claim was when the United States Federal Circuit refused to recognize a reach-through claim for Celebrex.[31]


A "signal" claim is a claim for an electronic signal that can, for example, embody 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 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 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 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 also object to the characterization of "signal" as abstract "energy," and often reference the relativistic fungibility of matter and energy. Accordingly, such proponents 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.[5] A petition for rehearing en banc by the full Federal Circuit was denied in February 2008,[33] and a petition for certiorari to the Supreme Court was denied the following October.[34]


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 combating 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

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,[37] the Philippines, China, Israel and Canada, methods of medical treatment are not patentable either (see MOPOP section 12.04.02),[38] however "Swiss-type claims" are allowed.



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