GENERAL PRINCIPLES OF INTELLECTUAL PROPERTY RIGHTS

PROJECT ON

“THE DIFFERENCE BETWEEN DISCOVERY AND INVENTION”

DATE: -24 t h March, 2015

SUBMITTED TO: -

Ms. GARGI CHAKRABARTI

ASSISTANT PROFESSOR

FACULTY OF LAW

SUBMITTED BY: -

SUDIPT PARTH (1041)

UTKARSH SINGH (1045)

VI SEMESTER

B.A. L.LB. (Hons.)

NATIONAL LAW UNIVERSITY, JODHPUR

WINTER SEMESTER

(JANUARY 2015 – MAY 2015)

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ACKNOWLEDGEMENT

A major project work like this is never the work of anyone alone. The contributions of many

different people, in their different ways, have made this possible. It gives us great satisfaction to

prepare this Project. We would like to take this opportunity to express our gratitude and personal

regards to Ms. Gargi Chakrabarti for inspiring and guiding us during the course of this project

work without his valuable guidance and support the completion of the project would not have

been possible.

We would like to thank the library staff for working long hours to facilitate us with

required material going a long way in quenching our thirst for education. We would also like to

thank our seniors for guiding us through tough times. We are also thankful to our parents who

continuously encouraged and inspired us for our project work. Efforts have been made to avoid

errors but in spite of it some errors might have crept in inadvertently.

Sudipt Parth

Utkarsh Singh

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TABLE OF CONTENTS

ACKNOWLEDGEMENT........................................................................................................ 2

TABLE OF CONTENTS.......................................................................................................... 3

INTRODUCTION..................................................................................................................... 4

A. General Overview: Discovery, Invention and their Interrelationship.......................4

B. Patents, Patentable Subject Matter, Invention, Discovery: Need for Distinction:

Exceptions: TRIPS, US, UK and India................................................................................6

C. Design of the Project.......................................................................................................8

SCOPE OF PATENTABLE SUBJECT MATTER AND THE CONCEPT OF

INVENTION............................................................................................................................ 10

RATIONALE FOR EXCLUSION OF DISCOVERIES FROM PATENTABLE

SUBJECT MATTER...............................................................................................................13

DISCOVERY AND INVENTION: Distinction and Patentable Discoveries.....................16

A. GENERAL DISTINCTIONS......................................................................................16

B. DISTINCTIONS AND EXCEPTIONS WHEN DISCOVERY IS PATENTABLE

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B.1. Application of a Discovery........................................................................................17

B.2. Process of Isolating Naturally occurring Substances.................................................19

B.3. Natural Substance Isolated from Surroundings................................................20

CONCLUSION........................................................................................................................ 22

BIBLIOGRAPHY....................................................................................................................24

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INTRODUCTION

It is indeed something of a paradox, but, nevertheless, doubtless wise, that our

patent law gives no reward to the discoverers of scientific principles, while it

protects the discoveries and inventions of lesser minds, who find new, original

and useful applications of such principles.

- Judge Jerome Frank1

A. General Overview: Discovery, Invention and their Interrelationship

Discoveries and inventions may seem similar because of something new being revealed,

however they are two different words and have different meanings. Discovery is finding out or

figuring out something that preexists, while invention is using objects that pre-exist to create

something new that is first of its kind.Discovery is known as the act of detecting something that

already pre-exists and has been around over a long period of time. Discovery means to find,

figure out or even acknowledge something that has been in nature for a good number of years.

Discovery could also include forces or other objects that are not solid in nature, such as gravity,

force, atmosphere, gases, etc. Discovery doesn’t always have to be intentional and can also be

stumbled upon by accident, such as gravity, which was only after an apple fell on Newton’s head

did he discover the law of gravity. Commonly, discoveries are used in order to advance

technology or to given an insight to previous conditions. For example, old fossils and artifacts

are excavated in order to see the type of creatures that we may have evolved from or the way a

certain civilization lived during that particular time.

New discoveries are believed to be acquired through various senses, which are usually

merged with pre-existing knowledge and actions. In the same example above, we can only tell

the dates of the artifacts and bones, due to carbon dating. In addition to some discoveries being

accident, some discoveries are sought after because of questions that arise within a person or a

community. The search of answers for these questions usually results in various different types

of discoveries. Some discoveries are also fuelled by other discoveries, ideas, or collaborations

that may have taken place.

1Dissenting opinion in Schering Corp. v. Gilbert, 153 F.2d 428 at 435 (2d Cir. 1946).

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  In the scientific community, discovery is known as the observation of new phenomena,

actions, or events that can help explain knowledge that is acquired through previous scientific

evidences. Though some discoveries are accidental, many others are actually sought after and

require exploration. Discovery is not only limited to procuring evidence, it also requires a

description and an explanation. Discoveries are related to inventions, as some discoveries also

result in invention of objects, processes, or techniques.Cambridge Oxford Dictionary2 defines

‘discover’ as: (a) to see, get knowledge of, learn of, find, or find out; gain sight or knowledge of

(something previously unseen or unknown): to discover America; to discover electricity (b) to

notice or realize: I discovered I didn't have my credit card with me when I went to pay my bill (c)

to make known; reveal; disclose.

Invention3 is using objects, ideas or theories that are already pre-existing in order to

create a new object, ideas or theories that are not in existence yet. An invention is expected to

create a breakthrough in radical science and change the thinking. Inventions are generally

patented in order to restrict other people from reproducing the same thing and taking credit for

the object. Inventions usually require a process where in experimentation, trial and error and

alternations are required in order to create the perfect invention. An invention could also be

accidental, where a person might be trying to create something else and ends up creating

something completely different and new. Inventors also keep a proper record of their workings in

a notebook or journal, where each process that is followed is monitored and noted.

  Inventions are practically ideas that a person has, which he then goes through the process

of creating using materials that are already in existence. Inventions could also mean

improvement of something that is already in existence but it is now altered with newer features

and technologies. For example let’s consider a light bulb (invented by Thomas Edison). During

the time he created the light bulb, it could only be powered for small amounts of time. Other

inventors created technologies related to light bulbs, which made it cheaper to produce, more

efficient, longer-lasting and more ecologically friendly. We have light bulbs today that are safe

and use less electricity. These are also considered as inventions. Another example includes

docking port for an already existing music player, the docking port would be considered as an

invention even though the music player was already available.

2Ayto, John, and John Simpson, eds. Oxford Dictionary, Oxford University Press, (2010).3Supra Note 2.

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  Invention is also considered synonymous with innovation, where experts claim that in

order for invention, innovation is required. Invention is also done in order to make lives easier

and more feasible. The nomads during the ancient ages decided to settle down resulting in the

creation of tools and wheels, which were then required to build houses and other things. Many

inventions are also due to discoveries, such as the telescope was invented in order to view the

discovered planets. Cambridge Oxford Dictionary defines ‘invent’ as: (a) to originate or create as

a product of one's own ingenuity, experimentation, or contrivance: to invent the telegraph (b) to

produce or create with the imagination: to invent a story (c) to make up or fabricate (something

fictitious or false): to invent excuses (d) to come upon; find.

  Invention and discovery often go hand-in-hand, where discovery leads to invention and

invention can lead to discovery. Invention of the microscope led to discoveries such as bacteria

or atoms, both of which are naked to the visible eye. While, the discovery of radio waves

resulted in the invention of the radio. Both inventions and discoveries can be accidental or well

planned. 

B. Patents, Patentable Subject Matter, Invention, Discovery: Need for Distinction:

Exceptions: TRIPS, US, UK and India

A patent is an exclusive right granted by a country to an inventor, allowing the inventor to

exclude others from making, using, or selling his or her invention in that country during the life

of the patent. After the expiry of the duration of the patent, anybody can make use of the

invention, which then becomes part of the public domain.

For granting patents, the law is required to define the types of subject matter to which it

accords patent protection. It is a fundamental principle of patent law that patent monopoly is

granted only for new and useful inventions, which have industrial application.4 In other words,

patentability involves satisfying a two-step test: firstly, whether the technological advance

claimed in the patent application is an “invention” i.e. patentable subject matter; and secondly,

whether that invention is “novel”, “inventive” and “industrially applicable.” Article 27.1 of the

Agreement on Trade Related Aspects of Intellectual Property Rights (TRIPS) mandates that

patent protection be afforded only to ‘inventions whether products or process … provided that

4 See Dr.Sreenivasulu N.S., “Intellectual Property Rights: Conceptualization”, Intellectual Property Rights (2007) 33.

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they are new, involve an inventive step and are capable of industrial application’. Accordingly,

all signatories to TRIPS have an obligation to ensure that their patent laws are consistent with

this requirement.

Patent laws of various countries further qualify the definition of invention by excluding

certain subject matter from the definition and thereby excluding them from patentability. The

TRIPs Agreement also specifies inventions which may be excluded from patentability.5 Thus in

India,Sections 3 to 4 of the Patents Act set out a list of items which do not qualify as patentable

inventions. This list includes “the mere discovery of a scientific principle or the formulation of

an abstract theory or discovery of any living thing or non-living substances occurring in nature.”

Similarly, in the U.K., Section 1(2) of the Patents Act, 1977 excludes from patentability “a

discovery, scientific theory or mathematical method.” In the United States, the US Supreme

Court in Diamond v. Chakrabarty6 has held that even though the express definition of

‘invention’ in Section 100 of the U.S. Patents Act is “invention or discovery”, not every form of

discovery is patentable subject matter or an ‘invention’. Thus, the laws of nature, physical

phenomena, and abstract ideas have been held not patentable.

Such exclusion of ‘discoveries’ from the definition of an invention is based on the

principle that an idea or discovery as such is not patentable. It is the practical application of an

idea or discovery that qualifies as an invention and leads to patentability. The rationale

underlying the exclusion of a discovery from the scope of patentability is that granting a patent

for a bare discovery would monopolize every application subsequently found for that discovery,

within the duration of the patent.7 This would act as a deterrent to further research, inhibit

competition and deprive the public of the use of a truth that had always existed, only waiting to

be uncovered.8

The practical application of this principle of intellectual property law necessitates a

precise and clear distinction between the twin concepts of “discovery” and “invention.” In 5 Article 27.2, TRIPs states that: “Members may exclude from patentability inventions, the prevention within their territory of the commercial exploitation of which is necessary to protect public order or morality, including to protect human, animal or plant life or health or to avoid serious prejudice to the environment, provided that such exclusion is not made merely because the exploitation is prohibited by their law.” Further, Article 27.3 (b) states that “Members may also exclude from patentability: plants and animals other than micro-organisms, and essentially biological processes for the production of plants and animals other than non-biological and micro-biological processes. However, Members shall provide for the protection of plant varieties either by patents or by an effective sui generis system or by any combination thereof.”6 447 US 303 (1980).7Catherine Colston, Principles of Intellectual Property Law (1999) 69.8Ibid.

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brief, while discovery refers to as finding something already existing, which has been so far

unknown, an invention requires human intervention of a technical nature. However, such

distinction is highly complex, as has been acknowledged by courts of law all over the world.

It appears, from an analysis of case law, that not all discoveries are excluded from

patentability. In India, the Patents Act 1970 excludes “mere” discoveries, while in the U.K., the

specific exclusion of discoveries in Section 1(2) (a) of the Patents Act, 1977 has been interpreted

as meaning “pure discoveries” by Whitford J. in Genentech Inc’s Patent,9 where it was held:

“It is trite law that you cannot patent a discovery, but if on the basis of that discovery

you can tell people how it can be usefully employed, and then a patentable invention

may result.”

Design of the Project

In this project, the researchers aims to provide a comprehensive analysis of legal provisions

and case law in order to clearly highlight the difference between discovery and invention, to

identify the controversies and practical difficulties arising due to the exclusion of discoveries

from the scope of patentability and discuss remedies for the same. The research question

adopted by the researchers in this regard is: Whether there exists a clear line of distinction

between a discovery and an invention for the purpose of grant of patent or are there grey areas in

the law? If the latter holds true, how do courts distinguish between a patentable discovery and a

mere discovery?

The hypothesis adopted for this purpose is that, given the ambiguity and dynamism of

the concepts of discovery and invention, it is near impossible to draw a clear line of distinction

between the two. However, in the context of patentability, the distinguishing factor employed

by the courts is the necessary degree of human intervention, or a technical process, which makes

a discovery a patentable invention. Thus, finding a new property of a known material or article,

or finding a previously unrecognized substance occurring in nature, is a mere “discovery” which

does not have technical effect and, therefore, is unpatentable as such. However, if that new

property is put to practical use, or if the substance found in nature can be shown to produce a

technical effect, then it constitutes an invention that may be patentable.

9Genentech Inc's Patent, [1987] RPC 553 at 566.

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SCOPE OF PATENTABLE SUBJECT MATTER

AND

THE CONCEPT OF INVENTION

The patent system is predicated on the theory that people should be granted an exclusive time-

limited right to encourage them to produce, or to reward them for having produced, certain

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results that are thought to be socially beneficial.10The beneficial results for which society rewards

such inventors with a patent are called inventions.11

A patent is a creation of a statute. Thus, it is the statute that defines what constitutes

patentable subject matter. Anything outside that category will not be patentable and so will fall

into the public domain once it becomes publicly available. Thus, the definition of “invention” is

crucial to the fulfilment of the basic purpose and objective of patent law.

This definition may be examined at two levels – the colloquial meaning and the legal

concept of invention. Etymologically, the modern verb “invent” comes via Middle English from

the Latin invenire, meaning to find or contrive.12Inventio is the noun form. According to English

Language dictionaries, to ‘invent’ tends to be defined as to create by thought, to devise or

originate.

From a legal perspective, the term ‘invention’ has not been given an express,

universally applicable definition. Article 27.1 of the Agreement on Trade Related Aspects of

Intellectual Property Rights, 1994 (TRIPS) mandates that patent protection be afforded only to

“inventions whether products or process … provided that they are new, involve an inventive step

and are capable of industrial application.” Accordingly, all signatories to TRIPS have an

obligation to ensure that their patent laws are consistent with this requirement.

The absence of an express definition of the word “invention” in Article 27.1 of TRIPS

implies that the word is boundless in scope. This means that literally anything can come within

the meaning of the word ‘invention’ so long as the thing that is the subject of the patent is novel,

contains an inventive step and is industrially applicable.13 Moreover, invention is something

which, by its nature, cannot be fully known or defined in advance.14 The concept is dynamic, not

static. It has often been argued that Article 27.1 contains an additional parameter of patentability,

apart from novelty, inventive step and industrial application, and that parameter is “invention.”

This interpretation has also been adopted by the UK Court of Appeals decision in Genentech v.

Wellcome15where Mustill LJ explained that the word ‘invention’ in Section 1(1) UK Act and

Article 52(1) EPC is one of the “four conditions” that “turns an invention into a patentable

10 See David Vaver, Intellectual Property Rights: Critical Concepts in Law (2006) 63.11Ibid.12Ibid. at p.6413 See Luigi Palombi, The Patenting of Biological Materials In The Context of The Agreement on Trade-Related Aspects of Intellectual Property Rights (2004).14 David Vaver, Intellectual Property Rights: Critical Concepts in Law (2006) 63.15[1989] RPC 147.

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invention.” However, in Biogen Inc. v. Medeva Plc16, Lord Hoffman opined that the residual

parameters of novelty, inventive step and industrial application “contain every element of the

concept of an invention in ordinary speech.” However, it was duly acknowledged by the House

of Lords that:

“in the absence of a definition one cannot say with certainty that one might not come across

something which satisfied all the conditions but could not be described as an invention.”

In the U.K., Section 1(2) of the Patents Act of 1977 provides a list of things which are

not to be granted patents, or are not “as such” to be taken as inventions or are not to be taken as

capable of industrial application. This list includes:- (a) discoveries, scientific theories and

mathematical methods; (b) schemes, rules and methods for performing mental acts, playing

games or doing business, or a program for a computer; (c) literary, dramatic, musical and artistic

works or any other aesthetic creation whatsoever; (d) the presentation of information.

In India, Sections 3 to 4 of the Patents Act set out a list of items which do not qualify as

patentable inventions. This list includes “the mere discovery of a scientific principle or the

formulation of an abstract theory or discovery of any living thing or non-living substances

occurring in nature.” This will be examined later in the project.

In the United States, the U.S. Supreme Court in Diamond v. Chakrabarty17 has held that

even though the express definition of ‘invention’ in Section 100 of the U.S. Patents Act is

“invention or discovery”, not every form of discovery is patentable subject matter or an

‘invention’. Thus, the laws of nature, physical phenomena, and abstract ideas have been held not

patentable. Further, the judicial decisions in Genentech, Diamondv.Chakraborty and

NRDCamply support the contention that an ‘invention’ is more than a discovery of a natural

phenomenon, a law of nature or an abstract piece of information. As Palombi puts it, it is the

“end result of an intellectual process that may involve, in part, a discovery or an abstract piece of

information, but which ultimately involves the utilization of other components, whether they are

biological, electrical, mechanical or chemical that together are manifested in a product, process

or method.”18

16[1997] RPC 1.17 447 US 303 (1980)

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18 Luigi Palombi, The Patenting of Biological Materials In The Context of The Agreement on Trade-Related Aspects of Intellectual Property Rights (2004) 18

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RATIONALE FOR EXCLUSION OF DISCOVERIES FROM PATENTABLE SUBJECT

MATTER

As revealed by the foregoing discussion on patentable subject matter, it is not considered in the

public interest to grant patent monopolies in respect of a discovery of a scientific principle or an

abstract theory or a substance occurring in nature; patent law specifically excludes these from

patentability.

The rationale for prohibiting patents on discoveries of natural laws, natural phenomena,

and abstract principles generally falls into two categories. Firstly, courts may deny patents on

this subject matter because they fail to meet a statutory or doctrinal requirement. Secondly,

courts may reject these patents for policy reasons, particularly the prudential interest in keeping

such subject matter in the public domain in order to enable further research and application.19 It

may however be pointed out that statutory restrictions are often based on policy considerations,

so the two categories may be interdependent.

From a statutory perspective, a discovery of a theory, principle or a natural substance

fails to satisfy the criterion of novelty, since it is already existent, implying that the patent

application did not actually invent anything.20 For instance, in Parker v . Flook 21 the U.S.

Supreme Court invalidated a patent claiming a mathematical algorithm and observed that “the

rule that the discovery of a law of nature cannot be patented rests, not on the notion that natural

phenomena are not processes, but rather on the more fundamental understanding that they are not

the kind of ‘discoveries’ that the statute was enacted to protect.” Drawing an analogy between an

algorithm and the law of gravity, the Court held that both are relationships that existed prior to

the discovery of the phenomenon and thus cannot be patented.22

In the U.K, courts have explained the exclusion of discoveries from patentability on the

ground that by themselves, they have no technical effect or industrial application. Thus, in

19See Peter Yun-hyoung Lee, Inverting The Logic Of Scientific Discovery: Applying Common Law Patentable Subject Matter Doctrine to Constrain Patents on Biotechnology Research Tools, Harvard Journal of Law and Technology (2005) 22.20Ibid.21437 U.S. 584 at 593 (1978)22Supra no. 8

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Chiron Corp. v. OrganonTeknika Ltd (No.3)23the Court held that “many inventions that are

patented arise out of a discovery. However, the section makes it clear that something further is

needed to make that discovery patentable.” In Young v. Rosenthal24 Grove J. held: “An invention

of an idea or mathematical principle alone, mathematical formula or anything of that sort could

not be the subject of a patent. It must be a manufacture, and it must be a manufacture which is

new in this realm.”

Similarly in India, in Bishwanath Prasad RadheyShyamv.Hindustan Metal Industries25

the Supreme Court held: “It is essential for the validity of a patent that it must be the inventor's

own discovery as opposed to mere verification of what was, already known before the date of the

patent.” The court further observed: “It is important to bear in mind that in order to be patentable

an improvement on something known before or a combination of different matters already

known, should be something more than a mere workshop improvement; and must independently

satisfy the test of invention or an ‘inventive step’.”

The other rationale for excluding the aforementioned discoveries from patentability is

based on policy considerations which seek to retain the basic principles and research tools of

science in the public domain. These considerations have frequently been recognized and

acknowledged by courts of law. Thus, in Funk Bros. Seed Co. v. Kalo Inoculant Co.26 the U.S.

Supreme Court reasoned that products and phenomena of nature such as “[the qualities of these

bacteria, like the heat of the sun, electricity, or the qualities of metals, are part of the storehouse

of knowledge of all men. They are manifestations of laws of nature, free to all men and reserved

exclusively to none.” Similarly, in Gottschalk v. Benson27 the Supreme Court observed:

“Phenomena of nature, though just discovered, mental processes, and abstract intellectual

concepts are not patentable, as they are the basic tools of scientific and technological work.” In

Le Roy v. Tatham28, the Court affirmed a patent on a process for manufacturing lead pipes but

refused to construe the patent as covering the general principle of creating lead pipe. The Court

observed: “A principle is not patentable. A principle, in the abstract, is a fundamental truth; an

23[1994] FSR 202.24(1884) 1 RPC 29.25(1979) 2 SCC 511.26333 U.S. 127 at 130 (1948).27409 U.S. 63 (1972).2855 U.S. 156 (1853).

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original cause; a motive; these cannot be patented, as no one can claim in either of them an

exclusive right.”

Thus, having established the rationale for exclusion of mere discoveries from

patentability, it must be pointed out that to bring such exclusion into effect, it is very important

to draw a clear line of distinction between an invention and a discovery, a task which courts have

often found difficult to implement. The next chapter discusses in detail this distinction

between an invention and a discovery.

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DISCOVERY AND INVENTION: DISTINCTION

AND

PATENTABLE DISCOVERIES

A. GENERAL DISTINCTIONS

The basic distinction between discovery and invention is well recognized in most patent law

regimes: discovery relates to the unearthing of causes, properties or phenomena already existing

in nature; invention is the application of such knowledge to the satisfaction of social and

industrial needs.29 According to scholars, ‘inventions’ are “artificial creations that stem from the

need to solve technical problems” whereas ‘discoveries’ are “not the result of creation – even if

creativity has been needed to reveal information concealed in nature.”30 Thus, while discoveries

are as such excluded from the realm of patentable subject matter, if it can be shown that an

application that incorporates a discovery brings about a technical change, it may be patentable.31

The meaning of a ‘mere discovery’ in this context has been well elaborated upon by

Lindley J. in Lane-Fox v.The Kensington & Knightsbridge Electric Lighting Co. Ltd.32

“An invention is not the same thing as a discovery. When Volta discovered the

effect of an electric current from the battery on a frog’s leg he made a great

discovery but no patentable invention. Again, a man who discovers that a known

machine can produce effects which no one knew could be produced by it before may

make a great and useful discovery, but if he does no more, his discovery is not a

patentable invention. He has added nothing but knowledge to what previously

existed.”

Invention, on the other hand, can be regarded as the subsequent putting of the discovery to

specific practical use, as explained by Buckley J. in Reynolds v. Herbert Smith: 33

29W.R. Cornish, Intellectual Property: Patents, Copyright, Trade Marks and Allied Rights (1999) 207.30 See N. Pires de Carvalho, The TRIPS Regime of Patent Rights, Kluwer Law International, 2002.31Lionel Bently& Brad Sherman, Intellectual Property Law (2001) 379.32(1892) 9 RPC 413 at 416.33(1913) 20 RPC 123.

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“Discovery adds to the amount of human knowledge, but it does so only by lifting a

veil and disclosing something which before had been unseen or dully seen.

Invention also adds to human knowledge, but not merely by disclosing. Invention

necessarily involves also the suggestion of an act to be done and it must be an act

which results in a new product, or a new result, or a new process or a new

combination for producing an old product or an old result.”

It follows that the manner in which courts have distinguished between discovery and invention,

for the purpose of rendering the former unpatentable, makes it clear that there are certain

situations in which a discovery may well amount to a patentable invention. The courts have

identified these grey areas and made exceptions in some cases to the exclusion from

patentability. These exceptions are discussed as follows:

B. DISTINCTIONS AND EXCEPTIONS WHEN DISCOVERY IS PATENTABLE

B.1. Application of a Discovery

The courts have interpreted an application of a discovery as a patentable invention. To elaborate,

if a person finds a new property or use of a known material or article, this will be treated as an

unpatentable discovery; however, if he puts the property to a practical use, the invention may

well be patentable.34 For example, if a substance occurring in nature (e.g. a microorganism) is

found to have an antibiotic effect, then such use and the substance itself may be patentable as

aspects of the invention.35 Again, while a shortcut method of division would not be patentable, a

calculating machine constructed to operate according to this method may be patentable.36This

interpretation is clear in Whitford J’s decision in Genentech Inc's Patent:37

“It is trite law that you cannot patent a discovery, but if based on that discovery you

can tell people how it can be usefully employed, then a patentable invention may

34See Lionel Bently& Brad Sherman, Intellectual Property Law (2001) 37935See Katrina McClatchey, The European Patent Office And The European Patent: An Open Avenue For Biotechnologists And “Living Inventions”, Oklahoma Journal of Law and Technology (2004)136Ibid.37(1989) RPC 147

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result. A discovery as such is not patentable as an invention under the Act. But

when applied to a product or process which, in the language of 1977 Act, is capable

of industrial application, the matter stands differently.”

Further, the Court of Appeal in Chiron v. Murex Diagnostics38 confirmed that the application of

a discovery need be neither novel nor inventive once the discovery has been made. This

distinction between a mere discovery and its application is also reflected in the EPO Guidelines

as a rejection of the purely abstract, whereas a device, substance or method embodying a

discovery may be patentable.39 Thus, in Re NRDC40, a claim to a method using a known

substance as a selective herbicide was granted a patent as the discovery had been embodied in a

new and useful effect.

The rationale underlying this distinction between discovery and its application is also

based on policy considerations. If a product patent were to be granted for the discovered

substance when one use for it were revealed, the patent would effectively deter further research

into new uses of that substance. Thus, in Brenner v. Manson41, the Supreme Court held that a

process for creating chemical compounds of no known utility was not patentable. Noting that the

patent applicant had not established the usefulness of the process because he had not established

the usefulness of the end products, the Court held that the statutory requirement of utility had not

been met.The Court reasoned:

“Whatever weight is attached to the value of encouraging disclosure and of inhibiting

secrecy, we believe a more compelling consideration is that a process patent in the

chemical field, which has not been developed and pointed to the degree of specific

utility, creates a monopoly of knowledge which should be granted only if clearly

commanded by the statute. Until the process claim has been reduced to production of

a product shown to be useful, the metes and bounds of that monopoly are not capable

of precise delineation. It may engross a vast, unknown, and perhaps unknowable

area. Such a patent may confer power to block off whole areas of scientific

development, without compensating benefit to the public.”

38[1996] FSR 15339Catherine Colston, Principles of Intellectual Property Law (1999) 6940[1961] RPC 13441383 U.S. 519 (1966)

18

On the other hand, granting patentability to an application ensures that the patent is granted only

for that application and not the discovered substance itself, thus achieving an incentive and

reward for the provision of new and inventive uses and leaving an incentive for further

investigation into alternative uses.42

B.2.Process of Isolating Naturally occurring Substances

It is highly significant that patent law distinguishes between naturally occurring substances and

the products and processes which result from the human effort in isolating those substances from

their natural environment. That is, a distinction is drawn between things that freely exist in

nature (and can only be unearthed or discovered) and things which are artificial (and which

contain the necessary degree of human intervention for the resulting product to be called an

invention).43 Following this distinction, if a process is developed that enables a substance found

in nature to be isolated and obtained from its surroundings, the process may be patentable. This

principle finds recognition in the EPO Guidelines44 as well as in Article 5(2) of the European

Biotechnology Directive, 1998 which lays down that an element isolated from the human body

or otherwise produced by means of a technical process, including the sequence or partial

sequence of a gene, may constitute a patentable invention, even if the structure of that element is

identical to that of a natural element.

B.3.NATURAL SUBSTANCE ISOLATED FROM ITS SURROUNDINGS

If a natural substance that has been isolated from its surroundings can be properly characterized

either by its structure, by the processes by which it is obtained or by other parameters, the

substance per se may be patentable.45 This is apparent from the decision in the Relaxin

decision46which concerned claims relating to the DNA sequences of a naturally occurring

42Catherine Colston, Principles of Intellectual Property Law (1999) 7043Supra no. 2044 See EPO Guidelines, Chapter IV, 2.345Lionel Bently& Brad Sherman, Intellectual Property Law (2001) 38046[1995] EPOR 541

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substance that relaxes the uterus during childbirth, which was obtained from the human ovary.

The Opposition Division of the EPO held that the invention was not a discovery and as such was

not excluded from patentability. The Opposition Division, referring to the EPO guidelines, said

that the claims were patentable under article 52(2) for the following reasons;

the substance ‘Relaxin’ had not been previously recognized;

a process had been developed to obtain ‘Relaxin’ and the DNA which encoded it;

the products were characterized by their chemical structure; and

the products had a use.

This position is supported by Article 3(2) of the EC Biotechnology Directive, 1998 which

provides that “biological material that is isolated from the human body or otherwise produced by

means of a technical process, including the sequence or partial sequence of a gene, may

constitute a patentable invention even if the structure of that element is identical to that of a

natural element.”47 Equivalent provisions have now been introduced in the UK and the

Implementing Provisions to the EPC.48

While the patenting of processes used to isolate natural substances is relatively

uncontroversial, the same cannot be said about the patenting of the substances that are isolated

using those processes.49 In particular, doubts have been expressed as to whether the act of

isolation and characterization of a naturally occurring substance is indeed that different from

mere discovery of that substance. However, the current trend in the patent law states that non-

natural life; living beings and non-natural living processes are patentable, so long as their

isolation, production or characterization involves a technical process.50

To illustrate, in Funk Brothers Seed Co. v. Kalo Inoculant Co51, the U.S. Supreme Court

was called upon to determine the patentability of a product that contained a mixed variety of

different species of Rhizobia bacteria, which was capable of inoculating different strains of

leguminous plants. The Court stated that the patentee did not create the characteristics in the

bacteria; instead what he did was to discover the strains and discover the fact that they could be

47 See Lionel Bently& Brad Sherman, Intellectual Property Law (2001) 380.48 See paragraph 2 of Schedule A2 to the Patents Act, 1977 introduced by Patents Regulations, 2000 and Rule 23e(2), Implementing Regulations to the EPC, introduced by (1999) OJEPO 437 cited in Lionel Bently& Brad Sherman, Intellectual Property Law (2001)49Supra no. 43.50 See Dr.Sreenivasulu N.S., “Patenting the Inventions of Information Technology and Biotechnology: New Trends in Patent Law”, Intellectual Property Rights (2007)56.51Funk Bros. Seed Co. v. Kalo Inoculant Co., 333 U.S. 127 (1948).

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combined into one particular useful product. It opined that the qualities of the bacteria were the

work of nature, and combining the species did not have the effect of producing new bacteria or

any changes in the bacteria.52 Each species had the same effect as before they were mixed. The

Court therefore ruled that the product was a handiwork of nature and therefore not patentable.

The manner of distinguishing between a discovery and invention has been adroitly

summed up by the High Court of Australia in National Research Development Corporation v

Commissioner of Patents53 in the following words:

“The truth is that the distinction between discovery and invention is not precise enough

to be other than misleading in this area of discussion. There may indeed be a discovery

without invention - either because the discovery is of some piece of abstract information

without any suggestion of a practical application of it to a useful end, or because its

application lies outside the realm of ‘manufacture’.

But, where a person finds out that a useful result may be produced by doing something

which has not been done by that procedure before, his claim for a patent is not validly

answered by telling him that although there was ingenuity in his discovery, no ingenuity

was involved in showing how the discovery, once it had been made, might be applied.

The fallacy lies in dividing up the process that he puts forward as his invention. It is the

whole process that must be considered; and he need not show more than one inventive

step in the advance which he has made beyond the prior limits of the relevant art.”

52See Jo Lynn Jeter, Agricultural Biotechnology: United States Case Law, Oklahoma Journal of Law and Technology (2004).53 (1959) 102 CLR 252

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CONCLUSION

“As time and science move forward, the law struggles to keep pace while, at the

same time, resisting change in order to maintain stability.”

- Sam S. Han54

As the preceding discussion reveals, intellectual property law distinguishes between patentable

inventions and non-patentable discoveries on basis of the degree of human intervention, utility

and inventiveness the claim involves. Before concluding this discussion, it is very important to

understand the larger objective which the law purports to serve, by making human innovation

and technical intervention the basis of such distinction.

As the prohibition against patenting discoveries in the form of natural laws, natural

phenomena, and abstract principles reveals, patent doctrine is reflective of an underlying policy

of encouraging innovation by keeping the basic tools of science within the public domain and

outside the realm of individual property.55 As succinctly stated by Lee, patent law is predicated

on the fundamental principle that scientific progress is best served by keeping foundational

building blocks, such as knowledge, in the public domain for all to use and by reserving the

necessary evil of monopolies to create an incentive to apply that basic knowledge to produce

specialized technologies.56

Thus, by differentiating mere discoveries from inventions, patent law creates a system

which depends on the symbiotic existence of two property regimes; the former, an expansive

public domain of freely accessible knowledge and materials, and the latter, a strong system of

exclusive patent rights to reward and encourage innovation.57 In recent times, advances in genetic

engineering and biotechnology have given rise to doubts as to whether patent law, in its struggle

to keep up with the rapid progress of science, can efficiently serve its fundamental aims and

objectives.

54 Sam S. Han, Analyzing the Patentability of “Intangible” Yet “Physical” Subject Matter, Columbia Science and Technology Law Review(2002) 12.55 Peter Yun-hyoung Lee, Inverting The Logic Of Scientific Discovery: Applying Common Law Patentable Subject Matter Doctrine To Constrain Patents On Biotechnology Research Tools, Harvard Journal of Law & Technology (2005).56Ibid.57Ibid.

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To grant an inventor an exclusive right over discovery would be a reward for his

ingenuity at the expense of the object of encouraging and stimulating further invention and

innovation.58 Thus, to achieve a right balance between these conflicting objectives, only

improvements based on discoveries have been granted an exclusive privilege by the law. The

right to patent a mere discovery is therefore not granted because, in contrast to other

benefits conferred upon the community by use of an invention, society's ability to progress

would be impeded, contrary to the “principles and motives of patent laws.”59

58N. Scott Pierce, A New Day Yesterday: Benefit as the Foundation and Limit of Exclusive Rights in Patent Law, John Marshall Review of Intellectual Property Law (Spring, 2007).59Ibid.

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BIBLIOGRAPHY

PRIMARY SOURCES

The Patents Act, 1970

Agreement on Trade Related Aspects of Intellectual Property Rights, 1994

SECONDARY SOURCES

Books

Catherine Colston, Principles of Intellectual Property Law (Routledge, London,

1999)

David Bainbridge, Intellectual Property (Pearson Education Ltd., Delhi, 2003)

David Vaver, Intellectual Property Rights: Critical Concepts in Law, Vol-III

(Routledge, London, 2006)

Dr.Sreenivasulu N.S., Intellectual Property Rights (Regal Publications, New Delhi,

2007)

J.Davis, Intellectual Property Law, (Butterworths, London 2003)

Jay Kesan (ed.), Agricultural Biotechnology and Intellectual Property: Seeds of

Change (CAB International, UK, 2007)

Rama Sarma, Commentary on Intellectual Property Laws, Vol-I (Wadhwa, Nagpur,

2007)

W.R. Cornish, Intellectual Property: Patents, Copyright, Trade Marks and Allied

Rights (Sweet & Maxwell, London, 1999)

Articles

Jo Lynn Jeter, Agricultural Biotechnology: United States Case Law, Oklahoma

Journal of Law and Technology (2004)

K.K. Tripathi, Biotechnology and IPR Regime: In the Context of India and

Developing Countries, Department of Biotechnology (New Delhi, 2005)

24

Katrina McClatchey, The European Patent Office And The European Patent: An

Open Avenue For Biotechnologists And “Living Inventions”, Oklahoma Journal of

Law and Technology (2004)

Luigi Palombi, The Patenting of Biological Materials In The Context of The

Agreement on Trade-Related Aspects of Intellectual Property Rights, University of

New South Wales (September, 2004)

MalathiLakshmikumaran& Prashant Phillips, Patenting of Biotechnological

Innovations, Asian Biotechnology and Development Review (2006)

N. Pires de Carvalho, The TRIPS Regime of Patent Rights, Kluwer Law International,

2002

N. Scott Pierce, A New Day Yesterday: Benefit as the Foundation and Limit of

Exclusive Rights in PatentLaw, John Marshall Review of Intellectual Property Law

(Spring, 2007)

Peter Yun-hyoung Lee, Inverting The Logic Of Scientific Discovery: Applying

Common Law Patentable Subject Matter Doctrine to Constrain Patents on

Biotechnology Research Tools (Harvard Journal of Law and Technology) Volume 19,

Number 1 (2005)

Richard Gruner, Intangible Inventions: Patentable Subject Matter for an Information

Age, Loyola of Los Angeles Law Review (2003)

Robyn Ott, Patentability of Plants, Animals and Microorganisms in India, Oklahoma

Journal of Law and Technology (2004)

Sam S. Han, Analyzingthe Patentability of “Intangible” Yet “Physical” Subject

Matter, Columbia Science and Technology Law Review(2002)

Electronic Data Resources

Patent Office, India, Manual Of Patent Practice & Procedure

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