Printed matter (patent law)
Encyclopedia
The term printed matter, in United States patent law
, refers to information associated with an article of manufacture
that is claimed to distinguish an article from similar articles already in the prior art
. It was long used as a basis for rejecting claims, but in recent years the United States Court of Appeals for the Federal Circuit
has disapproved of its use.
The legal analysis of this issue speaks in terms of "printed matter" that is imprinted upon a "substrate." For example, letters might be printed on a piece of paper as substrate, in an extreme case. Or digitized information (the printed matter), such as a jpeg file representative of the Mona Lisa
, might be encoded in an EPROM memory chip as substrate. A computer program (the printed matter) might be encoded in a computer-readable medium such as a hard disk (the substrate)----and thus be the subject of a so-called Beauregard claim. The current legal analysis, as expressed in the definitive decision on printed matter, In re Gulack, is as follows: The differences between a newly claimed substrate bearing printed matter and a prior art substrate, where the only point of departure from the prior art is in the printed matter itself, are not entitled to patentable weight unless the printed matter and the substrate have a new and unobvious functional relationship. The analysis is thus essentially an obviousness analysis under section 103 of the patent law, rather than (as it was in earlier times) an analysis of statutory subject matter under what is now section 101 of the patent law.
Patents of this type still issue. One example is Seagate's SeaShield patent, No. U.S. Pat. 5,732,464 (method of informing users how to configure disc drive by putting label on shield), which is claimed to provide a functional relationship between the printed information and the metal shield on which it is imprinted.
United States patent law
United States patent law was established "to promote the Progress of Science and useful Arts, by securing for limited Times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries;" as provided by the United States Constitution. Congress implemented these...
, refers to information associated with an article of manufacture
Article of manufacture
In United States patent law, an article of manufacture is one of the four principal categories of things that may be patented. The other three are a process , a machine, and a composition of matter...
that is claimed to distinguish an article from similar articles already in the prior art
Prior art
Prior art , in most systems of patent law, constitutes all information that has been made available to the public in any form before a given date that might be relevant to a patent's claims of originality...
. It was long used as a basis for rejecting claims, but in recent years the United States Court of Appeals for the Federal Circuit
United States Court of Appeals for the Federal Circuit
-Vacancies and pending nominations:-List of former judges:-Chief judges:Notwithstanding the foregoing, when the court was initially created, Congress had to resolve which chief judge of the predecessor courts would become the first chief judge...
has disapproved of its use.
The legal analysis of this issue speaks in terms of "printed matter" that is imprinted upon a "substrate." For example, letters might be printed on a piece of paper as substrate, in an extreme case. Or digitized information (the printed matter), such as a jpeg file representative of the Mona Lisa
Mona Lisa
Mona Lisa is a portrait by the Italian artist Leonardo da Vinci. It is a painting in oil on a poplar panel, completed circa 1503–1519...
, might be encoded in an EPROM memory chip as substrate. A computer program (the printed matter) might be encoded in a computer-readable medium such as a hard disk (the substrate)----and thus be the subject of a so-called Beauregard claim. The current legal analysis, as expressed in the definitive decision on printed matter, In re Gulack, is as follows: The differences between a newly claimed substrate bearing printed matter and a prior art substrate, where the only point of departure from the prior art is in the printed matter itself, are not entitled to patentable weight unless the printed matter and the substrate have a new and unobvious functional relationship. The analysis is thus essentially an obviousness analysis under section 103 of the patent law, rather than (as it was in earlier times) an analysis of statutory subject matter under what is now section 101 of the patent law.
Patents of this type still issue. One example is Seagate's SeaShield patent, No. U.S. Pat. 5,732,464 (method of informing users how to configure disc drive by putting label on shield), which is claimed to provide a functional relationship between the printed information and the metal shield on which it is imprinted.