The term printed matter, in

United States patent law Under United States law, a patent is a right granted to the inventor of a (1) process, machine, article of manufacture, or composition of matter, (2) that is new, useful, and non-obvious. A patent is the right to exclude others, for a limited ...

, refers to information printed on or otherwise associated with an

article of manufacture In United States patent law, an article of manufacture (also termed a manufacture) is one of the four principal categories of things that may be patented. The other three are a process (also termed a method), a machine, and a composition of matter. ...

that is claimed to distinguish an article from similar articles already in the

prior art Prior art (also known as state of the art or background art) is a concept in patent law used to determine the patentability of an invention, in particular whether an invention meets the novelty and the inventive step or non-obviousness criteria f ...

. It was long used as a basis for rejecting claims, but in recent years the

United States Court of Appeals for the Federal Circuit The United States Court of Appeals for the Federal Circuit (in case citations, Fed. Cir. or C.A.F.C.) is a United States court of appeals that has special appellate jurisdiction over certain types of specialized cases in the Federal judiciary of ...

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 The ''Mona Lisa'' ( ; it, Gioconda or ; french: Joconde ) is a half-length portrait painting by Italian artist Leonardo da Vinci. Considered an archetypal masterpiece of the Italian Renaissance, it has been described as "the best known ...

, 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 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 referrin ...

. 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 Patentable, statutory or patent-eligible subject matter is subject matter which is susceptible of patent protection. The laws or patent practices of many countries provide that certain subject-matter is excluded from patentability, even if the inv ...

under what is now section 101 of the patent law. "Printed matter” is evaluated in a two-step test. * The first step of the “printed matter” analysis is the “determination that the limitation in question is in fact directed toward printed matter.” Only “printed lines or characters, useful and intelligible only to the human mind” and “indicia whose primary purpose is the conveying of intelligence to a reader” qualify as printed matter. The exception has “no factual relevance” when “the invention as defined by the claims requires that the information be processed not by the mind but by a machine, the computer.” ** As “a necessary condition for falling into the category of printed matter, a limitation is printed matter only if it claims the content of information.” Language describing “where the information came from, its ‘origin,’ is not part of the informational content at all.” * Only after satisfying all these tests under step one for “printed matter” does the inquiry proceed to step two, to ask whether the printed matter is functionally or structurally related to the associated physical substrate.''DiStefano'', 808 F.3d at 851. Patents of this type still issue. One example is Seagate'
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.

USPTO practice

Practice in the

United States Patent and Trademark Office The United States Patent and Trademark Office (USPTO) is an agency in the U.S. Department of Commerce that serves as the national patent office and trademark registration authority for the United States. The USPTO's headquarters are in Alexa ...

is described in the USPTO

Manual of Patent Examining Procedure The ''Manual of Patent Examining Procedure'' (MPEP) is published by the United States Patent and Trademark Office (USPTO) for use by patent attorneys and agents and patent examiners. It describes all of the laws and regulations that must be follo ...

, § 2111.05.MPEP § 2111.05
/ref> Generally, Examples where such a functional relationship is present include inventions in which "indicia on a measuring cup perform the function of indicating volume within that measuring cup" and in which " a hatband places a string of numbers in a certain physical relationship to each other such that a claimed algorithm is satisfied due to the physical structure of the hatband...." Examples where such a functional relationship is absent include inventions in which "a product merely serves as a support for printed matter," e.g., "a hatband with images displayed on the hatband but not arranged in any particular sequence" or "a deck of playing cards having images on each card." Even if such a relationship exists, it must still be new and unobvious to support patentability.

References

{{Reflist United States patent law