Client Alert: Long-Standing Software Patent Claim Format Under Attack

The Court of Appeals for the Federal Circuit has held that a long-standing patent claim format widely used for claiming software, called a "Beauregard" claim, is now unpatentable under 35 U.S.C. §101 of the Patent Act if the underlying method steps otherwise could be carried out by the human mind. Essentially, the court held that Beauregard claims are to be analyzed under Section 101 as a process claim. As such, tying the process steps to more significant computer hardware may be one way to try and overcome this unfortunate decision, but its full effect on prosecution before the USPTO and interpretation before the courts remains to be seen. 

Patent Counseling & Prosecution

Sixteen of our attorneys are licensed to practice before the U.S. Patent and Trademark Office. Our patent professionals conduct prior art searches and prepare domestic and international patent applications that are related to various technologies, including electrical, mechanical, software and business methodologies.

We also counsel on infringement matters, including preparing written opinions on the infringement and validity of patents owned by our clients or their competitors. Our attorneys are well-versed in responding to examiners’ rejections and objections, appealing to the Board of Patent Appeals and Interferences or the Court of Appeals for the Federal Circuit and representing clients in reissue and reexamination proceedings.