The Federal Circuit Resuscitates the Printed Matter Doctrine to Find Patent Invalidity

Takeaway: Patent claims that recite written presented information may not be used to differentiate the invention from the prior art for patentability.

The printed matter doctrine pertains to portions of a patent that are directed to some type of printed material. The portions of the patent that are directed to the printed material are not considered patentable unless they are functional in nature.

This printed matter doctrine is intended to create a dividing line between copyright law and patent law. The point is that you do not want people patenting anything that is copyrightable because this prevents creative expression in matters that are normally the territory of copyrights.

This week, the Federal Circuit decided to expand the scope of this doctrine to matters that were not written down. They have now decided that disclosures in a patent directed to a series of mental steps such as providing information to a health professional would be given patentable weight. The Federal Circuit believed that this should fall within the printed matter doctrine because a series of mental steps are abstract ideas and do not fall within patentable subject matter.

Because the court expanded the scope of the printed matter doctrine to include matters that are a series of mental steps it can now be analyzed under section 103 with an obviousness argument. This is significant because in inter partes reviews at the USPTO they only allow section 102 and 103 challenges, not section 101 challenges. This doctrine would no longer be labeled as a section 101 challenge but rather a section 103 challenge and therefore expands the grounds in which you can challenge patents at the USPTO.