Inventions and Discoveries: Contrasting the Perspectives of Patent Systems in India and the USA

Human beings use their creative and intellectual capabilities to invent and discover. Such inventions and discoveries improve our lives through better technologies. ‘Invention’ is defined by the online Cambridge dictionary (https://dictionary.cambridge.org) as “Something that has never been made before, or the process of creating something that has never been made before.” Discovery is defined as “The process of finding information, place or an object, especially for the first time, or the thing that has been found.” Our understanding of the two words leads us to believe that inventions are eligible for patents, while discoveries are not. You will come across many persons who will emphatically state that discoveries, being related to things occurring in nature or being natural or physical laws, cannot be subject of patents.??

?The laws related to patents aim to incentivize human creativity. Further, the patent systems provide policy guidance about what can be and what cannot be patented. The patent laws are codified in concise and precise language, to be interpreted in a certain way by the patent offices. The meaning of various legal words and concepts is elaborated by learned judges whenever litigations arise.

?The above-mentioned definitions of ‘invention’ and ‘discovery’ are probably too broad and vague to be interpreted with the precision required by the legal systems. Let us see how the patent systems in India and the USA define and examine the subject matter of patents.

?The Patents Act, 1970 states that ‘patent means a patent for any invention granted under this Act’ [S 2(1)(m)]. “Invention” has been defined as a new product or process involving an inventive step and capable of industrial application [S 2(1)(j)]. “Inventive step” means a feature of an invention that involves technical advance as compared to the existing knowledge or having economic significance or both and that makes the invention not obvious to the person skilled in the art [S 2(1)(ja)]. This appears to be a very circular way of defining ‘inventions’. However, one cannot help but marvel at the brevity of legalese- the entire subject of patentable subject matter has been categorized as ‘product’ or ‘process’.

?Instead of stating what can be patented (which is likely to result in a voluminous discourse), The Patents Act stipulates what cannot be patented. This is understandable since it is difficult to envisage emerging inventions in a diversity of technological fields. S 3 and 4 indicate non-patentable inventions. S 3 prohibits frivolous inventions as well as inventions whose exploitation will be detrimental to human or environmental cause, or adversely affect order or morality. Further, the ‘mere discovery’ of scientific principles, abstract theories, or the discovery of living/ non-living things cannot be patented. Also excluded from patentability are the ‘mere discovery’ of a new form of a known substance, etc., or the mere discovery of a new property or new use of a known substance. Exclusion also extends to ‘mere admixture’, ‘mere arrangement or re-arrangement or duplication’ of known devices, methods of agriculture of horticulture, methods of treating human beings or living beings, mathematical or business methods or computer programs or algorithms, literary, dramatic, musical or artistic works; plants, animals or seeds; presentation of information, topographic circuits, traditional knowledge, etc. S 4 prohibits patentability to inventions in the field of atomic energy.

?While some of the excluded subject matters relate to things that are covered by other forms of intellectual property such as copyrights, the topography of integrated circuits, or the protection of plant varieties or traditional knowledge, it is a policy matter that methods of agriculture or medical treatments are excluded from patentability.? ?

?One can infer that as per The Patents Act, 1970 patents are granted to inventions (products or processes) except the ones specifically prohibited under S 3 and 4, and no patents can be granted to ‘mere discoveries’.??

?How does the USA handle the matter of patentability? 35 USC 100 (a) says that the term ‘invention’ means invention or discovery. As per 35 USC 100( b), The term process means process, art, and method, and includes a new use of a known process, machine, manufacture, or composition of matter. 35 USC 101 – whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new or useful improvement thereof, may obtain a patent therefor, subject to conditions and requirements of this title. It appears that the USA patent statute interprets ‘inventions’ and ‘discoveries’ in a broad, interchangeable manner. Does it amount to a world of difference between the statutes of India and the USA? Let us explore this further.

?The Manual of Patent Examining Procedure (MPEP) Chapter 2100 deals with what can be patented. MPEP 2106.3, the 1st eligibility criterion, provides for four categories of statutory subject matter- process, machine, manufacture, or composition of matter. This is similar to product or process categories in the Indian patent statute. MPEP 2106.4 provides the eligibility assessment step 2A, which states the judicial exceptions to patentability (non-patentable subject matter). For example, MPEP 2106.4(a) - abstract ideas, MPEP 2106.4(b) -laws of nature, natural phenomena, and products of nature. MPEP 2106.5 states the eligibility assessment step 2B- whether a claim amounts to significantly more- which is equivalent to the inventive step requirement. ?

Terms such as ‘laws of nature’, ‘natural phenomena’, and ‘abstract ideas’, along with many other related terms such as ‘physical phenomena’, ‘scientific principle’, ‘disembodied concepts’, ‘mental processes’, ‘disembodied mathematical algorithms and formulas’,, etc., are often associated with discoveries. The US courts have recognized that these are ‘basic tools of scientific and technical work’, and monopolization of these tools will impede innovation work.

?The question then automatically arises- how exactly is the patent system of the USA different from that of India? As per the MPEP, the presence of judicial exception does not condemn a patent application to rejection. The MPEP is rather detailed in the analysis of whether an invention is eligible for a patent or not, as it incorporates a plethora of court rulings in landmark cases that decided patent eligibility. The detailed reading of the MPEP patent eligibility criteria is rather complex for a beginner in patent law. To state in somewhat brief, simple language and manner, an examiner decides in the 1st step whether the invention under examination relates to one of the specified categories (process, machine, manufacture, or composition of matter). The second step is to assess whether a judicial exception is recited in the invention. If the invention relates to only an exception and nothing more, rejection follows. The claimed invention may be eligible for a patent if it amounts to something more than a judicial exception.

With this approach, the USA jurisdiction has witnessed some pathbreaking patent grants- in Diamond v Chakrabarty 447 US 303 USPQ 193 (1980), a patent for oil-degrading bacteria was allowed, as the Court ruled that the invention was very different from anything that occurs in nature. USPTO allows patents related to methods of agriculture if the invention pertains to new processes or technology (e.g., genetic modification, specific cultivation practices or asexually produced new plant varieties, etc.). Methods of medical treatments are also patentable. In Diamond v Diehr 450 US 175 (1981), the US Supreme Court ruled that controlling the execution of a physical process (curing of rubber) through a program that involved calculating curing time through a mathematical formula was inventive and allowed a patent. ?

One major difference between the patent systems of India and the USA is that the USPTO allows 'new use' of the known process, machine, manufacture, or composition of matter to be patented (35 USC 100(b), whereas it is a non-patentable invention under S 3(d) of The Patents Act, 1970.

?To sum up, the patent system of the USA does not allow patents for ‘mere discoveries’, just like the patent system of India. However, a remarkable broadening of the patentable subject matter has been achieved by incorporating judicial wisdom in patent examination procedures. ??