Discovery Is Not Invention

1Generally an idea or a discovery cannot be a subject matter of a patent. A practical application of an idea or a discovery can, however, qualify for a patent. Such a discovery will be patentable even though the practical application of the discovery is inherent in the discovery itself or becomes obvious once the discovery is made. (Gale’s Application (1991) RPC 305 (CA).) Such a patent should claim the practical application of the discovery as an invention. (Genentech Inc’s Patent (1989) RPC 147, p 208 (CA), per Dillon LJ.) A method of identifying diamonds by means of photographic records of their X-ray diffraction patterns (topograms) was held to be a patentable invention. (De Beers Consolidated Mines Ltd’s Application [1979] FSR 72 (CA).) Thus, mere discoveries or ideas cannot be the subject matter of a patent, but discoveries or ideas which have a technical aspect or make a technical contribution will be patentable. (Fujitsu Ltd’s Application (1997) RPC 608 (CA).)

2There are instances of early grants for discoveries. Discovery of ores of alum in abundance with a practical method of extracting them were granted patent in the United Kingdom. (Wyndham Hulme, ‘The History of the Patent System under the Prerogative and at Common Law’, 12 LQR 141, p 146.) However, the incorporation of a discovery, which is an excluded matter, will not render the invention patentable. (Merrill Lynch’s Application (1989) RPC 561, p 569 (CA).)

3The courts have drawn a clear distinction between a discovery and an invention. (See Lane-Fox v Kensington & Knightsbridge Electric Lighting Co (1892) 9 RPC 413, p 426; British Thomson Houston Co v Charlesworth, Pebbles & Co (1903) 20 RPC 673, p 687; Magnatex v Unicorn Products (1951) 68 RPC 117, p 122.) A discovery of any living or non-living thing occurring in nature could not qualify for a patent protection. (Patents Act 1970, s 3(c).) Similarly a ‘mere’ discovery of a scientific principle does not amount to an invention. The use of the word ‘mere’ to qualify discovery raises doubts as to whether a substantial discovery would qualify for a patent. A mere discovery is devoid of any contribution from the patentee. The British courts have observed that the discovery of a principle will qualify for a patent, if that principle could be applied to the production of a new manufacture. (See Re General Electric Co’s Application (1961) RPC 21; NRDC’s Application (1961) RPC 134; R v Patents Appeal Tribunal ex p Swift & Co (1962) RPC 37.) The Patents Act also prohibits the grant of a patent for a mere discovery of a new form of a known substance and the mere discovery of any new property or new use of a known substance. (Patents Act 1970, s 3(d).) But where the patentee makes a contribution or an addition to the discovery and produces a new and useful thing or result, or a new and useful method of producing an old thing and result, such invention may qualify for a patent. (Lane-Fox v Kensington & Knightsbridge Electric Lighting Co (1892) 9 RPC 413. This case was distinguished in The Wellcome Foundation Limited (Hitching’s) Application (1980) RPC 305 (SC) (NZ).)

4In Immunas Pharma v Assistant Controller of Patents and Designs (2024) the Madras High Court held that “the qualifier ‘mere’ is confined to the nearest reasonable referent ‘discovery of a scientific principle’ and does not extend to ’the discovery of any living thing or non-living substance occurring in nature.’” (para 13) and that “the expression ‘occurring in nature’ in the third limb of Section 3(c) only qualifies the nearest reasonable referent ’non-living substance’” (para 14). The Court refused to follow the interpretation of the Delhi High Court in Diamond Star Global Sdn. Bhd. v. Joint Controller of Patents and Designs, 2023 SCC OnLine Del 1879. (para 13) In Genmab v Assistant Controller of Patents and Designs (2024), decided the same day, the Court held that “the qualifier ‘mere’ is confined to the nearest reasonable referent ‘discovery of a scientific principle’ (para 15).”

5In Immunas the Court held that a non-living substance “if man-made and novel, would not be discovered; it would be created or invented” (para 17), and that “the exclusion will only apply to the process of finding a hitherto undiscovered non-living substance by identifying and isolating it from nature” (para 18). It held that “the contention of the respondent that the claims are in respect of the discovery of an antibody/non-living substance occurring in nature cannot be countenanced merely because the organism specified in the sequence listing is homo sapiens” and that “such conclusion would be justified only if the appellant had discovered/found a hitherto unknown antibody and isolated it from nature” (para 23). In Genmab the Court held that “the exclusion will only apply to the process of finding a hitherto undiscovered non-living substance by identifying and isolating it from nature” (para 20). In Pioneer Hi-Bred International v Controller of Patents (2026) the Delhi High Court, reading Immunas, held that “the word ‘discovery’ implies finding something which already exists and not produced, engineered or made and therefore, the exclusion will only apply to the process of finding a hitherto undiscovered non-living substance by identifying and isolating it from the nature” (para 16).

6A discovery not known in the state of the art and which is not obvious to a person skilled in the art, is patentable if the same is capable of forming the basis of an invention. (Genentech Inc’s Patent (1989) RPC 147, p 240 (CA); Merrill Lynch’s Application (1989) RPC 561, p 569 (CA); Gale’s Application (1991) RPC 305 (CA); T22/85 IBM Corpn/Document abstracting and retrieving [1990] EPOR 98.) If the discovery forms the basis upon which one can instruct others as to how it may be usefully employed, such an application may result in a patentable invention despite the fact that the mode of use is obvious. (Merrill Lynch’s Application (1989) RPC 561 (CA).) Serendipitous discoveries may also qualify for a patentable invention. (‘What a remarkable gift it would be, for those in need, when it was accidentally discovered that the drug, sildenafil citrate (Viagra), commonly used for treatment of angina, could be a stimulant for male erectile dysfunction,’ per Sikri J in Pfizer Products Inc v B L & Co (2002) 25 PTC 262 (Del). In United Kingdom, the patent for use of Viagra for the treatment of impotence was held obvious by the Patents Court, and was upheld by the Court of Appeal. See Pfizer Ltd’s Patent [2001] FSR 16; Lilly Icos Limited v Pfizer Limited [2002] EWCA Civ 1 (CA).)