2.2.1 Discoveries and scientific theories

If a new property of a known material or article is found out, that is mere discovery and unpatentable because discovery as such has no technical effect and is therefore not an invention within the meaning of Art. 52(1) EPC. If, however, that property is put to practical use, then this constitutes an invention which may be patentable. To find a previously unrecognised substance occurring in nature is also mere discovery and therefore unpatentable. However, if a substance found in nature can be shown to produce a technical effect, it may be patentable. In addition, if a microorganism is discovered to exist in nature and to produce an antibiotic, the microorganism itself may also be patentable as one aspect of the invention. Similarly, a gene which is discovered to exist in nature may be patentable if a technical effect is revealed, e.g. its use in making a certain polypeptide or in gene therapy (Guidelines G‑II, 3.1 – November 2018 version).

It was recognised in T 208/84 (OJ 1987, 14) that the fact that the idea or concept underlying the claimed subject-matter resides in a discovery does not necessarily mean that the claimed subject-matter is a discovery "as such" (G 2/88, OJ 1990, 93).

In T 1538/05 the board noted that, speaking very generally, an invention must be of a technical character and must solve a technical problem with – at least partially – technical means. It found that the claims at issue related to the discovery of a scientific theory rather than a technical teaching. The appellant claimed to have discovered a magnetic force that was hitherto unknown, and as a consequence thereof, established that theories such as the Heisenberg uncertainty principle as well as Einstein's theory of relativity were wrong. These were scientific theories or discoveries of the laws of nature different from those established. The board was in no position to determine whether these physical theories and discoveries were correct or not. Neither the claims, nor the description gave any indication of a clear technical teaching. It was clear to the board that the subject-matter claimed by the appellant was not patentable, as the appellant had not demonstrated that they were of a technical nature and that the invention could be applied to processes or devices.

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