Intellectual Property Newsletter

  • General Agreement on Tarriffs and Trade
    After World War II, there were various proposals for furthering international economic cooperation. One proposal was the General Agreement on Tariffs and Trade (GATT), a wide-ranging agreement dealing with issues related to... Read more.
  • Performance Rights Organizations
    In order to comply with the copyright laws of the United States, most establishments that play copyrighted music are required to secure permission before doing so. A commercial or private entity (or individual) may do this by obtaining... Read more.
  • The History of the Copyright Act
    The copyright laws of the United States, originally inherited from England, have been significantly revised over the years. This article presents a brief historical perspective of legislative enactments that have been significant in... Read more.
  • The Patent Cooperation Treaty
    The Patent Cooperation Treaty (PCT) of 1970 was created to simplify the patent application process for international patent protection. Prior to the PCT, the primary means for obtaining international patent protection was the Paris... Read more.
Intellectual Property News Links

Distinguishing Between Inventions and Discoveries for Patent Protection

The patent process in the U.S. in many ways represents a balancing of the inventor’s right to profit from an invention and the need to further advances in technology and invention through public disclosure. The public disclosure comes with the filing of the patent application, and the financial rewards for the inventor comes with the grant of the patent. Patents are also intended to provide incentives for research and development of new products and technologies.

A patent holder, or one to whom the patent has been transferred or assigned, gains the exclusive right to manufacture, market, and import the product for a set period of time. Patent protection ensures that inventors will be duly recognized and compensated for their inventions.

U.S. patent law makes no distinction between the terms “inventions” and “discoveries.” The law states, “Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefore.” Generally, however, subject to certain exceptions, only inventions are patentable, not discoveries.

The Difference Between Inventions and Discoveries

Discoveries may be described as new knowledge that has been uncovered. It can include knowledge about physical, biological or social systems. Knowledge can be derived from theoretical study, such as through mathematics; empirical study, through passive observation; practical knowledge, derived from actual experience and experiment; or other methods. The result, however, is mostly an abstract idea or principle. It remains abstract until it is applied, such as the way in which application of Einstein’s abstract theories resulted in nuclear power.

An invention can be a new device or process that is created by a human being, often applying new discoveries. A process may be defined as a chain of events, whether physical, chemical or other, that results in a product or service. There is a continuing, symbiotic relationship between the two. A new discovery may spur an invention, which in turn can lead to further discoveries and inventions. A patent may also be granted to significant improvements on existing products. However, the ideas, the abstract knowledge, are not patentable, only the application. Almost everyone has learned about Benjamin Franklin “discovering” the principle of electricity. The principle is not patentable, but his application of that knowledge to create the lightning rod was patentable.

Examples of Unpatentable Discoveries

No matter how ground-breaking or phenomenal, the discovery of scientific truths and their mathematical expressions are unpatentable. Examples include:

  • Sir Isaac Newton’s formulation of the law of gravity.
  • Sir Alexander Fleming’s recognition of the antibacterial properties of mold.
  • Dr. Morton’s discovery of the anesthetic properties of ether.

Inventing a new use for a known substance may, however, be patentable. This means that while the discovery of penicillin as it exists in nature was unpatentable, modifying the chemical structure of penicillin to make a more effective antibiotic could be patentable.

Exception for the Discovery of Plants

While patents in general only protect new and useful inventions and processes, not discoveries, there is an exception under U.S. patent law for the discovery and cultivation of a new and distinct plant variety. The discovery of certain plant varieties may be patented.

Requirements for Patentability

Not all inventions may be patented. Ones that only represent a minor improvement on a pre-existing product may not be patentable. Requirements for patentability may include:

  • The invention cannot have been known or used by others in the U.S., or described in a printed publication in the U.S. or a foreign country before the patent application.
  • The invention cannot have been patented or described in print in the U.S. or a foreign country, or in public use or on sale in the U.S. more than one year prior to the application.
  • The inventor cannot have abandoned the invention.
  • Differences between the invention and “prior art” (existing products or processes) cannot be so obvious at the time of invention to a person having ordinary skill in the field pertaining to the invention.
  • The applicant for the patent is the inventor(s), although there are circumstances under which the applications can be filed by others on behalf of the inventor(s)
  • The invention must be useable for the industrial process or purpose for which the application states it is intended.


Moreover, the vast majority of inventions and processes that are granted patents every year are not profitable to produce. Some suggest that corporations focus more on improvements of existing products, which result in minor inventions, even when patentable. The patent process remains an effective means to encourage research and development and advancement of technology and invention.