Statutory requirements

Scientific theories and mathematical methods

8.15 A scientific theory or a mathematical method per se is not an invention, but if an application of the principle results in a new material or process, then the resulting product may be considered an invention.

8.16 For example, the theory of relativity would not be an invention, but a Global Positioning System that makes use of the theory of relativity to more accurately locate the user would constitute an invention.

8.17 The implementation of a theory or principle does not require an inventive step if the theory or principle is inventive. Thus, in Hickton’s Patent Syndicate v Patent & Machine Improvements Co. [1909] 26 RPC 339, Fletcher Moulton LJ stated:

“In my opinion invention may lie in the idea and it may lie in the way in which it is carried out, and it may lie in the combination of the two; but if there is invention in the idea plus the way of carrying it out, then it is good subject matter for letters patent.”

8.18 This approach has been followed in Genentech’s Patent [1989] RPC 147 and KirinAmgen v Hoechst Marion Roussel [2005] RPC 9.

8.19 However, if the claimed matter merely constitutes a statement of the principle underlying a known process then it will not be an invention. In such cases an objection under inventive step should be considered since the mere elucidation of the principle is not inventive.