9

An example, consider car tires. In the search for better performance there are numerous ideas (and of course a huge numbers patents) - different compounds, special shapes, apparatus inside the tire, etc etc.

My research team discovers an incredible, really remarkable thing - if you apply microscopic amounts of béchamel sauce to a tire while it is in use, incredibly, the performance of the tire triples in all respects - grip, wear, safety, durability, etc.

(The guys have even worked out how much you need for optimum results with this astonishing discovery - it's 1 pint of béchamel sauce per 10,000 miles of tire use.)

So that's a genuinely amazing discovery or finding - great.

You then have to actually apply the tiny amounts of béchamel to the tires on a car. The team thinks up three nice ideas for that: (i) an ingenious ring of tiny béchamel nipples inside the tire protruding slightly to the tire surface; (ii) an ingenious microscopic pastry brush system which is suspended on the vehicle inside the wheel arch; (iii) an ingenious attachment to the axle hub which rotates with the axle.

So, the basic discovery is scientifically astonishing and took the research team five years and 20 million bucks to stumble on.

The three "devices" to achieve béchamel micro-application are really not a big deal, they just tossed them off, tried a couple prototypes - indeed, its likely you could easily think of other clever application mechanisms.

  • Q1. Could the patent application in fact just be for the raw "discovery". Hence, the patent application would essentially say "To triple the grip and service lifetime of an automotive tire, we apply x mg of béchamel sauce per km to the tread whilst the tire is operating." You don't even mention the (sundry obvious) ways, that could be achieved.

  • Q2. If the answer is basically "No, you have to have the device as such" ... then could all three of the device-methods (and perhaps more) be included in the one patent? Or would each of those need its own application? Or?

  • Q3. If the latter, that seems odd as in some sense you're not really getting any protection on the "actual discovery" - ? (ie, a thousand other patents would immediately be filed with offhand ideas for applying the béchamel sauce - the béchamel sauce being the "actual meaty discovery" at hand - which took years and millions in research to discover.)

What's the deal on this? Is it actually even possible to patent such a "discovery" as in the example?

(I mention USA for formality of the question, but of course issues in any jurisdiction would be of interest.)

3
  • Nothing about your scenario is really a discovery. It is a tire coating machine. Plenty of those exist.
    – Tak
    Commented May 19 at 19:36
  • You are relying on saying moving and all that to make it sound that way is the point. There is nothing that you made specifically. Even having a slightly different spraying machine is still a spraying machine at the heart of it. You would have to make a different way of spraying.
    – Tak
    Commented May 19 at 19:45
  • 8
    @Fattie I think you can ignore this. We understand your Q. This is a user who will do all they can to draw people into conversations that do not improve or clarify the question. E.g. 1; 2; 3.
    – Jen
    Commented May 19 at 19:45

2 Answers 2

12

One can patent the substance, or a particular use of the substance, or a particular method to make the substance or to put it to use (of course any of that is premised on the invention being novel, non-obvious, and useful). One cannot patent discoveries per se. One can only patent disclosed inventions.

Even though the Constitution uses the word "discovery" rather than "invention," patents may not be issued for the mere discovery of a previously unknown phenomenon of nature. To the extent that a discovery is a phenomena of nature, it is not patentable. See Funk Bros. Seed Co. v. Kalo Inoculant Co., 333 US 127 (1948):

Their [the bacteria's] qualities are the work of nature. Those qualities are of course not patentable. For patents cannot issue for the discovery of the phenomena of nature. The qualities of these bacteria, like the heat of the sun, electricity, or the qualities of metals, are part of the storehouse of knowledge of all men. They are manifestations of laws of nature, free to all men and reserved exclusively to none. He who discovers a hitherto unknown phenomenon of nature has no claim to a monopoly of it which the law recognizes. If there is to be invention from such a discovery, it must come from the application of the law of nature to a new and useful end.

Some examples of patents that are similar to your example:

2
  • So you don't think a patent would be limited to the machine?
    – Tak
    Commented May 19 at 18:22
  • 3
    @Tak Of course not, otherwise, you couldn’t patent drugs.
    – Dale M
    Commented May 20 at 12:48
9

Jen's answer is correct as far as it goes. I am supplementing her answer briefly with regard to the second part of the title question:

in such cases can/do multiple methods/apparatus form the SAME patent?

The answer is that yes, people can and do include multiple methods and apparatus in the form of components of the same patent which are called "patent claims". You present an invention and may have half a dozen or a dozen separate claims that cover different aspects of the invention.

A patent claim is usually expressed as a statement of technical facts in legal terms. A claim cannot be broad, because the applicant cannot get patent for what his/her invention cannot do. An applicant would not want the claim to be too narrow as well, because he/she would not want to lose full protection for his/her invention. The main categories of claims are product claims and process (or method) claims. While the former can be a device, article, or a combination thereof, the later can be a claim describes a series of acts or steps for performing a desired function.

There are two types of patent claims: independent claims and dependent claims.

Independent claims

Independent claims can “stand alone”, without referring to any other claim. It contains all the elements necessary to define the invention.

Dependent claims

Dependent claims have to bear reference to an earlier claim or independent claim, and must further limit the previous claim.

Sometimes in a patent application with multiple claims, some will be granted a patent and other claims will be denied, for example, on the ground that the claim is obvious to someone skilled in the relevant arts.

If they are truly alternatives, however, you would more often have several patents filed at the same time and claims within their components.

10
  • Fascinating, TY. I'm still unclear whether ...... say through laborious research we discover that continuously applying playdoh to a rocket nosecone whilst ascending through the atmosphere in fact halves fuel use. (Wow!) That is an astonishing (un-patentable, I now know) discovery. It is incredibly hard to apply playdoh to a nosecone whilst burning through the atmosphere. We invent two (totally) different ingenious, totally novel, mechanical devices which astonishingly can survive the heat, forces etc and accurately apply the playdoh. the two mechanisms are utterly different, one uses a
    – Fattie
    Commented May 20 at 19:06
  • 1
    @Fattie Better practice would probably be to apply for two patents simultaneously in that case. But I'm not sure that they would be rejected on the ground of trying to squeeze two inventions into one application if you did that. Someone with more Patent and Trademark Office experience would know better.
    – ohwilleke
    Commented May 20 at 19:07
  • n ingenious woven set of carbon ropes which rotate within the weave (so clever) and the other device uses an ingenious mechanism involving three large magnets and a laser beam. Just to reiterate, these two (utterly different mechanical inventions) both achieve the same (astonishing) thing we discovered (in the unpatentable scientific discovery sense), that continuous playdoh application bizarrely slashes fuel use. But the two mechanical "even during liftoff" application devices are, well, two clever inventions. Would the patent be for both those mechanical devices, or one patent each?
    – Fattie
    Commented May 20 at 19:10
  • { You can see where people would get in to writing up dozens of call it "mechanical devices" to achieve some new actual effect discovered by science! }
    – Fattie
    Commented May 20 at 19:12
  • @Fattie "You can see where people would get in to writing up dozens of call it "mechanical devices" to achieve some new actual effect discovered by science!" There is nothing wrong with that. New scientific discoveries often give rise to many new inventions. For example, the discovery of viruses led to gillions of new patents. The discovery of Maxwell's equations did the same thing. The discovery of quantum tunneling (which is what makes transistors possible) has similarly spurred many inventions.
    – ohwilleke
    Commented May 20 at 19:14

You must log in to answer this question.

Not the answer you're looking for? Browse other questions tagged .