Section 3 of the Patents Act: What Is Not an Invention

In one line

Five clauses of section 3 decide almost every biodiversity patent question, and each has an example from this subject.

In exam wording: section 3 of the Patents Act 1970 lists what are not inventions within the meaning of the Act; clause (b) excludes an invention the primary or intended use or commercial exploitation of which would be contrary to public order or morality or which causes serious prejudice to human, animal or plant life or health or to the environment; clause (c) excludes the mere discovery of a scientific principle or the formulation of an abstract theory or the discovery of any living thing or non-living substance occurring in nature; clause (e) excludes a substance obtained by a mere admixture resulting only in the aggregation of the properties of the components, or a process for producing such a substance; clause (j) excludes plants and animals in whole or any part thereof other than micro-organisms, but including seeds, varieties and species and essentially biological processes for production or propagation of plants and animals; and clause (p) excludes an invention which, in effect, is traditional knowledge or which is an aggregation or duplication of known properties of a traditionally known component or components.

Clause (c): a discovery is not an invention

The mere discovery of a scientific principle or the formulation of an abstract theory, or the discovery of any living thing or non-living substance occurring in nature.

The example. A plant found in a forest, and a compound found in that plant, are both discovered rather than invented. Isolating the compound and identifying its activity does not by itself make it patentable.

What may still be claimed. A process for extracting or purifying it; a formulation with a technical effect; a derivative that is not caught by clause (d); a use that is not excluded by clause (i), which excludes any process for the medicinal, surgical, curative, prophylactic, diagnostic, therapeutic or other treatment of human beings.

The distinction to write. Clause (c) excludes the thing as found. It does not exclude everything done with it.

Clause (j): plants and animals, but not micro-organisms

Plants and animals in whole or any part thereof other than micro-organisms, but including seeds, varieties and species and essentially biological processes for production or propagation of plants and animals.

Three things to notice.

The exclusion is broad. Whole or any part. So a seed, a variety, a species and a plant part are all outside the patent system.

Micro-organisms are excepted. They are not excluded by clause (j), so a micro-organism can be the subject of a patent claim if it satisfies novelty, inventive step and industrial application and is not caught by clause (c) as a living thing occurring in nature. That is why a modified or engineered organism can be claimed and a wild bacterium as found cannot.