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Discoveries

8.9 The Singapore Court of Appeal has drawn a distinction between discovery and invention in Merck & Co Inc v. Pharmaforte Singapore Pte Ltd [2000] SGCA 39 at [63], referencing Lane Fox v. Kensington & Knightsbridge Electric Lighting Co [1892] 3 Ch 424:

“In this regard, we must also point out that the fact that a discovery is made does not mean there is an invention. The latter does not necessarily follow from the former. This distinction was brought out by Lindley LJ in Lane Fox (supra) at page 429 where he said:

‘An invention is not the same thing as a discovery. When Volta discovered the effect of an electric current from his battery on a frog’s 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 before him knew could be produced by it, 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. A patentee must do something more; he must make some addition, not only to knowledge, but to previously known inventions, and must so use his knowledge and ingenuity as to produce either a new and useful thing or result, or a new and useful method of producing an old thing or result.’”

8.10 From the above quotation that was referenced by the Singapore Court of Appeal, it is clear that discoveries are not inventions. As Section 13(1) of the Patents Act provides for the grant of patents for inventions, discoveries are not patent eligible subject matter under Section 13(1) of the Patents Act.

8.11 The difference between invention and discovery can be unclear. Many inventions are based on a discovery, but there must be “something more” to constitute an invention. The discovery of a particular property of a material will add to the stock of knowledge in relation to that particular substance. However, if that property results in the application of that substance in a new use then it may constitute an invention.

8.12 For example, the mere isolation of a naturally occurring material or microorganism without a specific use would represent a mere discovery. However if a new use of that material or microorganism is found, then the use could be claimed, as well as the new isolated material or microorganism. Nevertheless, if the material or microorganism per se is not clearly distinguished from the prior art naturally occurring material or microorganisms, then an objection will be raised under novelty.

8.13 Likewise, a claim directed at a process that occurs in nature is not new unless it is clearly distinguishable from the natural process. For example, a method of growing a plant with a particular trait comprising selection and breeding steps would be considered as directed to a naturally occurring process and lack novelty, despite the selection and breeding being performed by man. However, it may be possible to claim the process of selection if the claimed process comprises technical steps that clearly distinguishes the process from the natural process.

8.14 Similarly, the synthesis of a new compound would not constitute an invention in patent law, as it would represent no more than a chemical curiosity. However if the compound could be used in an industrial process or a new and useful property was discovered then it would constitute an invention. In Kirin-Amgen v Hoechst Marion Roussel [2005] RPC 9, the invention related to the production of erythropoietin by recombinant DNA technology. In this case, erythropoietin had been a particularly elusive goal because it had been difficult to obtain sufficient quantities to carry out the necessary research. The prior art disclosed the N-terminal sequence of erythropoietin (with two incorrect base residues). The application in question claimed a DNA sequence, a recombinant polypeptide and a process of making the polypeptide. The Court considered that the invention did not lie in the DNA sequence – this was considered to provide information only – or the polypeptide, but the invention was in the process of making recombinant erythropoietin.