GENERAL PRINCIPLES OF INTELLECTUAL PROPERTY RIGHTS

PROJECT ON
THE

DIFFERENCE BETWEEN DISCOVERY AND INVENTION

D ATE : - 24 t h M ar ch , 20 15
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)

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

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 17

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

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 doesnt always have to be intentional and can also be
stumbled upon by accident, such as gravity, which was only after an apple fell on Newtons 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.

1Dissenting opinion in Schering Corp. v. Gilbert, 153 F.2d 428 at 435 (2d Cir. 1946).
4

Some discoveries are also fuelled by other discoveries, ideas, or collaborations that may have
taken place.
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 lets 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
2Ayto, John, and John Simpson, eds. Oxford Dictionary, Oxford University Press, (2010).
3Supra Note 2.
5

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.
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
4 See Dr.Sreenivasulu N.S., Intellectual Property Rights: Conceptualization, Intellectual
Property Rights (2007) 33.
6

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
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.

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).
7

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 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 Incs 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
7Catherine Colston, Principles of Intellectual Property Law (1999) 69.
8Ibid.
9Genentech Inc's Patent, [1987] RPC 553 at 566.
8

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.

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 timelimited right to encourage them to produce, or to reward them for having produced, certain
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.
10 See David Vaver, Intellectual Property Rights: Critical Concepts in Law (2006) 63.
11Ibid.
12Ibid. at p.64
10

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
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.

13 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.
16[1997] RPC 1.
11

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

17 447 US 303 (1980)

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

12

13

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. Flook21 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

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)
14

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 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
22Supra no. 8
23[1994] FSR 202.
24(1884) 1 RPC 29.
25(1979) 2 SCC 511.
26333 U.S. 127 at 130 (1948).
15

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 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.

27409 U.S. 63 (1972).

2855 U.S. 156 (1853).

16

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
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.
17

An invention is not the same thing as a discovery. When Volta discovered the effect
of an electric current from the battery on a frogs 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
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
33(1913) 20 RPC 123.
18

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 Js 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 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.
34See Lionel Bently& Brad Sherman, Intellectual Property Law (2001) 379
35See 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)1
36Ibid.
37(1989) RPC 147
38[1996] FSR 153
39Catherine Colston, Principles of Intellectual Property Law (1999) 69
40[1961] RPC 134
19

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.
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
41383 U.S. 519 (1966)
42Catherine Colston, Principles of Intellectual Property Law (1999) 70
20

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 Guidelines 44 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
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.

43Supra no. 20
44 See EPO Guidelines, Chapter IV, 2.3
45Lionel Bently& Brad Sherman, Intellectual Property Law (2001) 380
46[1995] EPOR 541
21

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 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

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).
22

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
23

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
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.
24

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

57Ibid.
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.
25

26

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)

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)

27

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

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

Phillips,

Patenting

of

Biotechnological

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

28