SYNOPSIS GENERAL PRINCIPLES OF INTELLECTUAL INTELLECTUAL PROPERTY RIGHTS
THE DIFFERENCE BETWEEN DISCOVERY AND INVENTION
) NATIONAL LAW UNIVERSITY, JODHPUR WINTER SESSION (JANUARY-MAY 2014)
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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 Frank 1
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. 2 In other words, patentability involves satisfying a two-step test: firstly , whether the technological advance claimed in the patent applica tion 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. 3 Thus in India, Sections 3 to 4 of the Patents Act, 1970 set out a list of items which do not qualify as patentable 1
Dissenting opinion in Schering Corp. v. Gilber t, 153 F.2d 428 at 435 (2d Cir. 1946) See DR. SREENIVASULU N.S., “INTELLECTUAL PROPERTY RIGHTS: CONCEPTUALIZATION ”, INTELLECTUAL PROPERTY RIGHTS (2007) 33 3 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 nonbiological 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.” 2
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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 mathemati cal method.” In the United States, the US Supreme Court in Diamond v. Chakrabarty 4 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, a nd
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. 5 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. 6
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 Inc’s Patent ,
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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, then a patentable invention may result.” 4
447 US 303 (1980)
5
CATHERINE COLSTON, PRINCIPLES OF INTELLECTUAL PROPERTY LAW (1999) 69 Ibid 7 Genentech Inc's Patent [1987] RPC 553 at 566 6
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In this project, the researcher seeks 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 researcher 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?
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STATEMENT OF THE PROBLEMS
OBJECTIVE
In this paper, the researcher seeks 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.
SCOPE /AREAS COVERED
To find the requirements patentable subject matter.
To find the definition of Discovery and Invention.
To find clear distinction between Discovery and Invention.
To find the rationale of exclusion of Discovery from patentable subject matter.
To find the controversies and difficulties arising from such distinction.
To find the remedies for conflicts arising from such distinction.
LIMITATIONS AND RESOURCES
There are no particular limitations as such. Various primary and secondary resources as available in the library and internet will be used in the proposed project. SUBJECT
The proposed project comes within the ambit of the discipline of Intellectual Property Rights.
DESIGN
The proposed project has been divided into six chapters as illustrated in the tentative chapterisation.
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RESEARCH QUESTIONS 1. What is patent? What is the scope of the patentable subject matter? 2. What is invention? Does it come under the scope of patentable subject matter? 3. What is discovery? Does it come under the scope of patentable subject matter? 4. Is there any clear and precise distinction between invention and discovery? 5. What is the rationale for exclusion of discoveries from patentable subject matter? 6. Are all discoveries excluded from the patentable subject matter? 7. Is the distinction between discovery and patent really necessary?
HYPOTHESIS 1. A patent is an exclusive right granted by a country to an inventor. Patentable subject
matter is decided on basis of novelty, inventive step and technical invention. Patent is granted for new and useful invention. 2. There is no clear definition of invention. It depends on novelty, inventive step and
technical application. It may differ according to jurisdiction. If the new property of a known material or article, or finding a previously unrecognized substance occurring in nature 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. 3. The finding of a new property of a known material or article, or f inding a previously
unrecognized substance occurring in nature, is a mere “discovery” which does not have technical effect and, therefore, is unpatentable as such. 4. Distinguishing factor employed by the court is necessary degree of human
intervention or a technical progress which makes a discovery a patentable invention is distinguishing factor employed by the court 5. Discoveries are excluded from the patentable subject matter to keep such matter in
public domain for enabling further research and application. 6. All discoveries are not excluded as the patentable subject matter. There are exceptions
to this rule. 7. Distinction between discovery and invention is necessary for public interest in terms
of further research and new ideas. Also, the re may be many other reasons.
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PROPOSED / TENTATIVE CHAPTERISATION Author’s Note
Acknowledgements Tabl e of Con tents Table of Case L ist of A bbreviati ons
Chapter 1: Introduction
1.1. What is patent and patentable subject matter? 1.2. What are the requirements and needs for granting patent? 1.3. Distinction of requirements in granting patents – UK, US, India and TRIPS. 1.4. Scope of patentable subject matter – Invention and Discovery. 1.5. Distinction between Invention and Discovery. 1.6. Conclusion. Chapter 2: Scope of Patentable Subject Matter
2.1. Need for deciding patentable subject matter. 2.2. Criteria for deciding the patentable subject matter. 2.3. Inclusion and exclusion from patentable subject matter. 2.4. Comparison of patentable subject matter – UK, US, India and TRIPS. 2.5. Position of Invention and Discovery as patentable subject matter. 2.6. Conclusion. Chapter 3: Concept of Invention and Concept of Discovery
3.1. What is Invention? What is Discovery? 3.2. Requirements of subject matter to be qualified as Invention and Discovery. 3.3. Comparison - Invention and Discovery in US, UK, India and TRIPS. 3.4. Distinction between Invention and Discovery. 3.5. Conclusion. Chapter 4: Rationale for the Exclusion of Discovery from the Patentable Subject Matter
4.1. Why “Discovery” is excluded from the Patentable subject matter ? 7|Page
4.2. Are all discoveries excluded from the patentable subject matter? 4.3. Reason for the exclusion of discovery – US, UK, India and TRIPS. 4.4. Case Laws – Comparison of reasoning for exclusion. 4.5. Conclusion. Chapter 5: The Distinction between Invention and Discovery
5.1. Basic difference – Creation and Technical Application? 5.2. Position in US, UK, India and TIPRS. 5.3. Exceptions when discovery is not excluded from patentable subject matter 5.3.1. Application of a Discovery 5.3.2. Process of Isolating the Naturally Occurring Substances. 5.3.3. Natural Substances Isolated from its Surroundings. 5.4. Conclusion. Chapter 6: Conclusion
6.1. Is distinction between Invention and Discovery necessary? 6.2. Is existing distinction between Invention and Discovery right? 6.4. Can Invention and Discovery really be distinguished? 6.5. Controversies and Difficulties arising due to this dist inction. 6.6. Analysis, Comment and Suggestions. Bibliography
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LITERATURE SURVEY
Rama Sarma : Commentary on Intellectual Property Laws
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The Author is a Partner in Kochhar & Co. He is a Law Graduate from University of Kolkata. His outstanding case arguments have been reported in Law Journals. It was published by the Lexis Nexis. This books deals with the concept of invention and the discovery in very detail, though no single chapter has been dedicated to the topic of invention and discovery. This book helped in understanding the Indian law about invention and discovery. This book also helped in understanding the TRIPS law regarding invention and discovery.
N.S.Srinivasulu: Intellectual Property Rights
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The book is a comprehensive work on the subject Intellectual Property Rights. It attempts to cover all the areas of Intellectual Property Rights in a clear and composite way. Besides it contains certain case studies focusing on the Intellectual Property Rights in the specified fields. The author is working faculty in NUJS. It also provides enriching discussion on the inventions and discoveries. The Part IV of the book mainly deals with this distinction. This book helped in understanding the Indian and US law regarding the invention and the discovery. David Bainbridge: Intellectual Property
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This book provides a substantial view of intellectual property law, dealing with principles, academic issues and practical considerations. Split into well-structured parts, each comprises an introductory chapter on basic principles, and subsequent chapters addressing the particular aspects of each right. This book mainly served as the fodder to UK patent law. David Vaver, Intellectual Property Rights: Critical Concepts in Law
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David Vaver, , is an Emeritus Fellow of St Peter's College and former Director of the Oxford Intellectual Property Research Centre. This book helped in understanding the general principles of the Intellectual Property Rights. It has special emphasis on the UK intellectual property laws. This book may further be used for the project for the comparison of Indian system with UK.
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Rama Sarma, Commentary on Intellectual Property Laws, Vol-I (Wadhwa, Nagpur, 2007) Dr. Sreenivasulu N.S., Intellectual Property Rights (Regal Publications, New Delhi, 2007) 10 David Bainbridge, Intellectual Property (Pearson Education Ltd., Delhi, 2003) 11 David Vaver, Intellectual Property Rights: Critical Concepts in Law, Vol-III (Routledge, London, 2006) 9
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Other Materials
Besides these books various articles were also referred to which have been provided in the bibliography. These books were the main source for the compilation of this synopsis. Very less reliance was placed on the articles. Other material like articles, write ups etc. were mainly used for the purpose of understanding the basic concepts. Also, articles were used for understanding the distinction in laws regarding invention and discoveries in US, UK, India and under TRIPS.
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CONCLUSION
The hypothesis that will be adopted in this project 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.
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.
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”.
These assumptions form the basis for the proposed project. Further, one of the main questions which will be explored in this proposed project is that: - Whether there is really a necessity to distinguish Invention and Discovery?
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BIBLIOGRAPHY
PRIMARY SOURCES
The Patents Act, 1970
Agreement on Trade Related Aspects of Intellectual Property Rights, 1994
SECONDARY SOURCES Books
Dr. Sreenivasulu N.S., Intellectual Property Rights (Regal Publications, New Delhi, 2007)
Rama Sarma, Commentary on Intellectual Property Laws, Vol-I (Wadhwa, Nagpur, 2007)
David Bainbridge, Intellectual Property (Pearson Education Ltd., Delhi, 2003)
David Vaver, Intellectual Property Rights: Critical Concepts in Law, Vol-III (Routledge, London, 2006)
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)
Malathi Lakshmikumaran & Prashant Phillips, Patenting of Biotechnological Innovations, Asian Biotechnology and Development Review (2006)
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