Are discoveries patentable in India?

Ask any Indian Patent Attorney/Agent, are discoveries patentable in India? Straight comes the answer – No. The main argument for exclusion will be that patents are only granted for inventions which involve human intervention leading to inventive output not for identifying something which is inherent or already existing in nature. As India is new entrant to patenting phenomenon, whatever which is propagated by practicing patent attorneys/professionals is been conceived by others to follow. But I do not stand by it. Discoveries (not all) are patentable which is clearly evident from section 3. Section 3 of the Patents Act, 1970 lists what are not considered as patentable inventions. Section 3 has used three important words to support my contention, namely, 1) discovery; 2) mere discovery; and 3) invention. Explicit use of discovery, mere discovery and invention shows the intention of legislature that these words have different meaning and their patentability differs case by case. In section 3 (a), 3 (b) and 3 (p) the word ‘invention’ in been used whereas section 3 (c) and 3 (d) uses the word ‘discovery’ and ‘mere discovery’. Invention means technical outcome which results from or involve human intervention, for example, shaving razor, telephone etc. whereas discovery means something which is already there in nature but not known to public, for example, discovery of new elements of periodic table. Is there a hidden catch? Between discovery and mere discovery there lies a Silver lining. What stands between in and out is the word ‘mere’. In section 3 (c) both ‘discovery’ and ‘mere discovery’ are used which as follows – “3 (c) 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” According to section 3 (c), a scientific principle will not be considered as patentable invention if it is the mere discovery, emphasis is evidently there on the word ‘mere’. For example, in recently decided Calgon Carbon Corporation v. The Corporation of the City of North Bay, the Federal Court of Appeal, overturning the judgment of the motions judge, confirmed the patentability of a newly discovered use of an old method, so long as the new use has a practical application. The motion judge earlier found that the use of an old invention to prevent the crypto replication was a “mere discovery” and not a new invention and hence invalidated Calgon patent. While agreeing with the motions judge that a “mere discovery”, such a scientific observation, is not an invention, the court of Appeal distinguish “mere discoveries” from “inventions” under the Canadian Patent Act. The Court of Appeal explained that a discovery that UV light prevents crypto from replicating is a scientific observation for which no patent may be obtained since a scientific observation, on its own, has no practical application. However, the Court of Appeal held that finding a new, useful application for an existing method is more than a scientific observation. In Calgon, the patent claims are for what the Court of Appeal called “a practical solution to a practical problem”, which is more than a mere discovery. Section 3 (c) further states, discovery of any living or non-living substances occurring in nature will not be considered as patentable invention. Here provision is straight enough that discovery of any living or non-living substances, whether or not involving technical ingenuity, will be not be patentable. Considering section 3 (c) alone, it can be construed that legislature have undoubtedly bifurcated ‘discovery’ and ‘mere discovery’ as well as their patentability issues. This argument can be made clearer and stronger by going through section 3 (d) which as follows – “3 (d) the mere discovery of a new form of a known substance which does not result in the enhancement of the known efficacy of that substance of the mere discovery of any new property or new use for a known substance or of the mere use of a known process, machine or apparatus unless such known process results in a new product or employs at least one new reactant. Explanation. – For the purposes of this clause, salts, esters, ethers, polymorphs, metabolites, pure form, particle size, isomers, mixtures of isomers, complexes, combinations and other derivatives of known substance shall be considered to be same substance, unless they differ significantly in properties with regard to efficacy;” According to section 3 (c) mere discovery of a new form of known substance such as salts, esters, ethers, polymorphs, metabolites, pure form, particle size, isomers, mixtures of isomers, complexes, combinations and other derivatives of known substance will be patentable if the new form (product) results in the enhancement of the known efficacy of that substance. This means that the mere discovery of a new form with improved efficacy will be enough to overcome patentability bar. For example, if a new polymorphic form is having substantially improved thermal stability as compared to earlier known efficacy then the stated improved thermal stability will be enough to stand the requirement of inventive-step under section 2 (1) (ja), and thereby overcome the barrier of section 3 (d). However, if a new form does not result in the enhancement of known efficacy then it will be not considered as patentable invention. The main argument for the exclusion will be that the mere discovery of a new form does not involve any technical merit to meet statutory bar of non-obviousness. For example, obtaining specific enantiomeric form by resolution of racemic mixture is the mere discovery as it already exists there, inherently. But section 3 (d) clearly connotes that mere discovery of a new form is patentable subject of meeting statutory condition, that its, enhancement of efficacy in respect of known efficacy. Thus, section 3 (d) diminishes the fate of trivial inventions but at the same time keeps the thumb up for well merit inventions. Let Courts to decide In absence of pertinent judicial decisions, my contention is still open for challenge. But explicit use of words ‘discovery’, ‘mere discovery’, and ‘invention’ cannot be ignored. Maybe after going through this, you may think again, are discoveries patentable in India?