Introduction to the Printed Matter Doctrine
In this episode, I’m talking about a doctrine in patent law called the printed matter doctrine. A recent case clarified the doctrine a bit, though it didn’t really change the basic principles behind it.
The printed matter doctrine is a principle that printed material is generally not patentable subject matter. It’s based on the idea that presenting information in printed form does not contribute to the technological arts in a meaningful way.
If the only thing that’s different about your invention is printed instructions, labels, or other informational content—without any innovative technical feature—then it’s not eligible for patent protection.
Examples of Non-Patentable Printed Matter
Let me give you a few examples.
If you write instructions on a piece of paper, describe a method of playing a board game, or compile a recipe book—and the only new aspect is the printed content itself—you won’t be able to get a patent. That’s because you’re not improving the paper or medium the content is written on.
In another example, taken from a real case, there was a medication kit that already existed. The inventor tried to claim a patent by adding a new label with instructions on how to take the medication. Even if the information on that label was new and non-obvious, it didn’t make the kit patentable.
This came up in the case AstraZeneca v. Apotex, where the labels provided dosage instructions. The court said that this wasn’t patentable. Now, this doesn’t mean you can’t get a patent on a new method of treating a disease—you might. But you can’t get a patent on a physical object, like a medication kit, just because you added new printed information to it.
What Makes Printed Matter Patentable?
The key distinction is whether the printed matter provides a technical contribution or functional improvement beyond merely conveying information. If it does, it may be eligible for patent protection.
Let me give you an example of what has been allowed.
In a 1969 case called Miller, there was a measuring cup with markings that allowed for easy calculation of partial recipes. That was considered patentable because the writing on the cup improved the functionality of the cup itself. That’s different from just putting instructions on a piece of paper—the written material on the cup actually made the product better.
The Two-Step Test for Printed Matter Doctrine
There are two key questions to determine whether the printed matter doctrine applies:
1. Is the claimed limitation directed to printed matter?
2. If yes, does the printed matter have a functional or structural relationship with the associated physical item?
If the answer to both is yes, the printed matter might still be eligible. If it fails step two, the printed matter is not considered patentable subject matter.
The IO Engine Case
In a recent case from this year, IO Engine, the court addressed how to interpret this doctrine. The case involved securing communication for portable devices using a tunneling client access point, and part of the claims involved “encrypted communications” and “program code.”
The patent examiner initially rejected the claims, saying that encrypted communications and program code were essentially analogous to printed matter—just information being conveyed.
But when the case was appealed to the Federal Circuit, the court ruled that encrypted communications and program code were not printed matter because the claims didn’t involve the content of the information—they weren’t trying to patent the information itself.
The court narrowed the printed matter doctrine, clarifying that it only applies to explicit communicative content, like instructions or specific data. But if the printed matter is part of the communication process, rather than the content, then the doctrine doesn’t apply.
If you want to dive deeper into the technical details, the patent at issue is U.S. Patent No. 8,539,047, and there are several blog articles covering the case. But unless you have a computer engineering background, it may be tough to understand the specifics.
What This Means for Inventors
So what does this mean for you as an inventor?
If your invention involves printed material and it’s a close call on whether the printed matter doctrine applies, this recent case may make it easier to argue that your invention is eligible—so long as what’s printed isn’t just information.
Mere information still won’t be allowed, but if the printed content is doing more than just conveying information—like improving the function or structure of the product—then there’s a better chance the doctrine won’t apply.
Ask Yourself the Right Question
If your invention includes something printed and you believe that printed part is what makes your invention innovative, ask yourself:
Is what’s printed actually making the product itself better?
For example, does it work like the markings on a measuring cup that help you measure better?
Or is it just providing information about how to use the product, like instructions on a medication kit?
To be clear: even if the printed matter makes the product better, that doesn’t guarantee you’ll get a patent. You still need to pass the novelty and non-obviousness requirements. This episode is specifically about whether you can get past a printed matter doctrine rejection in the first place.
Until next time, I’m Adam Diament—and keep on inventing.