Wednesday, April 23, 2008

Books discussing Printed Matter Doctrine

POLICY LEVERS IN PATENT LAW by Dan Burk and Mark Lemley, Virginia Law Review, Nov. 2003, 1575 which cites In re Lowry, 32 F.3d 1579 In re Gulack, 703 F.2d 1381 Page 1672: "The Federal Circuit eliminated the long-standing rule against patenting business methods in 1998, and the related 'printed matter doctrine' is on uncertain footing as well."

FORMALISM AT THE FEDERAL CIRCUIT by John Thomas, American University Law Review, Apr. 2003, 771 which cites In re Gulack, 703 F.2d 1381 Page 788: "In keeping with this [State Street] approach, other exclusionary principles besides the business methods exception are approaching abrogation or have already met their demise. The printed matter doctrine stands on 'questionable legal and logical footing', the Federal Circuit has explained."

INTELLECTUAL PROPERTY: THE LAW OF COPYRIGHTS, PATENTS, TRADEMARKS by Roger Schecter and John Thomas, Thomson West, 2003 which cites In re Gulack, 703 F.2d 1381 In re Miller, 418 F.2d 1392 In re Sterling, 70 F.2d 910 Page 306: "Under the printed matter doctrine, information inscribed upon a substrate for purposes of presentation was held outside the scope of section 101. ... Although the Federal Circuit has not expressly overturned the printed matter doctrine, its early decision in In re Gulack offered that the rule "stands on questionable legal and logical footing. Later, in In re Lowry, the Federal Circuit reversed a PTO rejection based upon the printed matter rule." Also mentioned is In re Sterling.

LEGAL PROTECTION OF DIGITIAL INFORMATION by Lee Hollaar, BNA Press, 2002 which cites In re Gulack, 703 F.2d 1381 In re Miller, 418 F.2d 1392 Page 254: "Printed Matter. In re Miller and In re Gulack held that printed matter is not patentable because it is not a proper manufacture." Well, not really. For example, from In re Gulack, footnote 8: "In Royka, 490 F.2d at 985, the CCPA, notably weary of reiterating this point, clearly stated that printed matter may well constitute structural limitations upon which patentability can be predicated."

INTANGIBLE INVENTIONS: PATENTABLE SUBJECT MATTER FOR AN INFORMATION AGE by Richard Gruner, Loyola of Los Angeles Law Review, Jan. 2002, 355 which cites In re Rice, 132 F.2d 140 Boggs V. Robertson, 13 USPQ 214 In re Russell, 48 F.2d 668 Page 403: "Expressive content recorded in printed matter - and, by analogy, expressive content preserved in any other recording material - generally is not patentable. Printed matter that does no more than record text is not patentable because, although it may record new, useful information or otherwise convey useful or desirable contents, the printed matter does not serve a functional role except as an information recording medium." He doesn't define "functional".

SOFTWARE AND INTERNET LAW by Mark Lemley - Peter Menell - Robert Merges - Pamela Samuelson, Aspen Law and Business, 2000 which cites In re Rice, 132 F.2d 140 Boggs V. Robertson, 13 USPQ 214 In re Russell, 48 F.2d 668 Guthrie v. Curlett, 10 F.2d 725 Page 270: "For examples of the 'printed matter' rule referred to in the preceding example, see In re Rice; In re Russell; Guthrie v. Curlett. In Boggs v. Robertson, ..., the court regarded printed matter as unpatentable when it merely reduces an abstract idea to written form." Interesting bit of censorship, referring to the real old caselaw, but not citing any of the CAFC's later comments on the printed matter doctrine from In re Lowry, Royka and Gulack are cited. Most likely written by Pam Samuelson, given the Rice/Russell citations.