The differences between an “invention” and “discovery “ are well known in the IP fraternity. Discoveries that fall under the laws of nature, physical phenomena, and abstract ideas have been held not patentable. There have been many famous case laws that discuss the difference between an invention and a discovery (See Funk Brothers Seed Co. v. Kalo Inoculant Co. - 333 U.S. 127 (1948)). However, none (maybe) that discuss how to interpret the word “discovers” in light of 35 USC 101 or discuss the difference between the words invents and discovers in 35 USC 101. Are they different in meaning or analogous to each other? What was the intention of the congress to include the word discovers in 35 USC 101?
35 USC 101 discloses what can be patented. 35 USC 101 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 therefor, subject to the conditions and requirements of this title.”
The 101 section clearly specifies the various statutory classes under which an application for a patent can be made. Further, it is very clear that in order to develop a good understanding and correctly interpret each and every word in the law, the complete title (35 USC 101 in the present scenario) needs to be read in its entirety.
As 35 USC 101 uses both the words, invention and discovery, how does one interpret the meaning of discovery in light of 35 USC 101? Is there a possibility that certain inventions (that are also patentable) may not be covered under 101 if one were to delete the word “discovery” from 35 USC 101?
In other words, discovering the property of electromagnetism will not lead to the grant of a patent. The application of this discovery may get you a patent for which one will have to come up with an inventive step that falls under the statutory classes. So exactly what does the word “discovers” tell us about 35 USC 101?