India: Patent Of Addition: An Indian Perspective

INTRODUCTION

After arriving at an invention and obtaining patent on it, there remains a scope of improvement or modification of such invention. The improvements or modifications may take place as an ordinary process of improving an invention, or as a result of feedback received from the market or from the industry. In such a scenario, where the invention is already protected by a patent, the improvement or modification over the original patented product or process may be protected by a "Patent of Addition" in India. It is here when the Patent of Addition comes into picture for protecting the novel, industrial applicability and non-inventive improvements or modifications to an already filed or granted patent application.

An innovation which is built upon existing knowledge with the modern technological changes is higher in competence with the existing products. Patent of Addition can be converted into a standard patent if the improvement or modification is inventive in its own right. This provision of Patent of Addition in India, New Zealand and Australia is in conformity with that of continuous-in-part application under the American Patent System.

A Patent of Addition enables the applicant to apply for an improvement or modifications made on the invention disclosed in the complete specification1. The improvement must be something more than a mere workshop improvement2. The term for a Patent of Addition shall not exceed the term of a regular patent, and shall not be granted prior to the date of grant of a patent for the main invention. A Patent of Addition cannot be questioned on the ground that the invention ought to have been the subject of an independent patent3.

PROVISIONS UNDER THE INDIAN PATENTS ACT, 1970

As per the Indian Patents Act, 1970, Sections 54, 55, 56 deals with the Patent of Addition, filing and prosecution related thereto. The provisions are illustrated below:

Section 54: Patents of Addition:

(1) Subject to the provisions contained in this section, where an application is made for a patent in respect of any improvement in or modification of an invention described or disclosed in the complete specification filed therefore (in this Act referred to as the "main invention") and the applicant also applies or has applied for a patent for that invention or is the patentee in respect thereof, the Controller may, if the applicant so requests, grant the patent for the improvement or modification as a patent of addition.

(2) Subject to the provisions contained in this section, where an invention, being an improvement in or modification of another invention, is the subject of an independent patent and the patentee in respect of that patent is also the patentee in respect of the patent for the main invention, the Controller may, if the patentee so requests, by order, revoke the patent for the improvement or modification and grant to the patentee a patent of addition in respect thereof, bearing the same date as the date of the patent so revoked.

(3) A patent shall not be granted as a patent of addition unless the date of filing of the application was the same as or later than the date of filing of the application in respect of the main invention. (4) A patent of addition shall not be granted before the grant of the patent for the main invention.

Section 55: Term of patents of addition

(1) A patent of addition shall be granted for a term equal to that of the patent for the main invention, or so much thereof as has not expired, and shall remain in force during that term or until the previous cesser of the patent for the main invention and no longer: Provided that if the patent for the main invention is revoked under this Act, the court, or, as the case may be, the Controller, on request made to him by the patentee in the prescribed manner, may order that the patent of addition shall become an independent patent for the remainder of the term for the patent for the main invention and thereupon the patent shall continue in force as an independent patent accordingly.

(2) No renewal fees shall be payable in respect of a patent of addition, but, if any such patent becomes an independent patent under sub-section (1), the same fees shall thereafter be payable, upon the same dates, as if the patent had been originally granted as an independent patent.

Section 56: Validity of patents of addition

(1) The grant of a patent of addition shall not be refused, and a patent granted as a patent of addition shall not be revoked or invalidated, on the ground only that the invention claimed in the complete specification does not involve any inventive step having regard to any publication or use of—

(a) the main invention described in the complete specification relating thereto; or

(b) any improvement in or modification of the main invention described in the complete specification of a patent of addition to the patent for the main invention or of an application for such a patent of addition, and the validity of a patent of addition shall not be questioned on the ground that the invention ought to have been the subject of an independent patent.

(2) For the removal of doubts it is hereby declared that in determining the novelty of the invention claimed in the complete specification filed in pursuance of an application for a patent of addition regard shall be had also to the complete specification in which the main invention is described.

CRITERION FOR FILING PATENT OF ADDITION

Indian Patents Act provides provisions relating to filing and granting a special type of patent application i.e. 'Patent of Addition'. If the applicant or the patentee so desires, he can file a separate application in a prescribed manner for any improvement or modification for the invention in respect of which he has already filed or holds a patent which is in force. Section 48 of the Indian Patents Act, 1970 states that rights conferred by patent of addition are same as those for other patents. In short, a patent, as a patent of addition can be secured in respect of any improvement in or modification of an earlier invention called the main invention or parent invention for which a patent can be granted and is in force or an application for the said invention has been made and is pending.

The main criterion for filling an application for patent of addition is stated below:

1. Application for patent of addition would not be examined unless the Controller of Patents is requested to examine the parent application. Application for patent of addition would not be accepted unless and until parent or main patent application is accepted.

2. The applicant for the patent of addition should be same as that of the earlier application or the patentee, as the case may be. The inventor(s) may not necessarily be the same. That is patent of addition can neither be an innovation patent nor can have innovation as parent patent.

3. If the patent of addition is in respect of a patent application then the parent application should be pending before the Controller.

4. If the patent of addition is in respect of a patent, the patent should be in force.

5. If parent patent is ceased then patent in addition would not be accepted or granted. Patent of addition would cease if one fails to renew the parent patent (Non payment of annuity).

6. Patent in addition would run concurrently and terminate with the main invention.

7. In case of patent of addition, Rule 13(3) of the Patents Rules states that each such patent of addition shall include a reference to the main patent or the application for the main patent and also include a definitive statement that the invention is an improvement or modification of the invention claimed in the complete specification of the main application.

8. Each Patent of Addition is clearly an independent patent in view of Section 54 and 55 of the Indian Patents Act, and therefore

  • rendered a new Application Number,
  • requires a separate request for examination to be filed,
  • is published after 18 months, and
  • undergoes separate examination.

In addition to the above conditions, the date of filing of the application in respect of the patent of addition has to be the same or later than the date of filing of the main /parent patent application. Further, the following points also need consideration in this regard:

  • The yard stick to determine whether an invention is a subject matter of a patent of addition is that the claims should not relate to distinct invention and should constitute a single invention.
  • The novelty should be clearly specified in the main invention of patent of addition or the main invention could be cited by the Examiner as a reason for rejection of the Patent of Addition for lack of novelty. However, the examiner cannot reject the Patent of Addition for lack of an inventive step in the view of the, main invention. Section 56 of the Patents Act clarifies that a main application/ patent cannot be cited to establish lack of inventive step in the patent of addition but can be cited to establish novelty in the patent of addition.
  • A patent of application has the same priority date as that of the main invention and also it expires with the main patent. An economic benefit of patent of additions is that that one does not have to pay/ submit a separate renewal fees but if the parent patent is revoked and the patent of addition is an independent patent then there would be a requirement for the payment of annuity.
  • Patent of addition too can be subject matter of a PCT application. PCT application as defined under Article 2 of the Patent Co-operation Treaty "application" means an application for the protection of an invention; references to an "application" shall be construed as references to applications for patents for inventions, inventors' certificates, utility certificates, utility models, patents or certificates of addition, inventors' certificates of addition, and utility certificates of addition; references to a "patent" shall be construed as references to patents for inventions, inventors' certificates, utility certificates, utility models, patents or certificates of addition, inventors' certificates of addition, and utility certificates of addition.
  • The above definition clarifies that a Patent of Addition too can be the subject matter of a PCT application. With the filing of an application for Patent Of Addition, the complete specification should have a specific reference to the patent number of main patent or the application number of main patent, and the invention is improved or modification of the invention applied for.

CONTINUATION–IN-PART UNDER US PATENT SYSTEM

In many ways, the provision of Patent of Addition under the Indian Patent System is more beneficial to the applicant than the Continuation-in-Part (hereinafter "CIP") under the US patent system. For example: a CIP is only filed when the main application is pending whereas Patent of Addition can be filed any time during the term of the patent. A separate annuity is to be paid for maintenance of a CIP application whereas there is no maintenance for a Patent of Addition separately. The maintenance of Patent of Addition is required only when the parent patent is revoked and the Patent of Addition is a separate and independent patent.

In CIP application, claims must have varying priority dates based on the priority date of the first application in which the specification of the subject matter was disclosed. Despite the varying date, the patent would expire in 20 years; the tenure is same as the Patent of Addition.

CONCLUSION

At the end, it can be concluded that the Patent of Addition is an added advantage to the applicant in order to secure new modification in the invention or improvement. In the course of working of patent, new inventions or improvement or modifications in the invention can be claimed and rights can be acquired over the same via filing of Patent of Addition; however, the subject matter in the Patent of Addition must disclose over and above the main application or parent patent application and not merely claim over the same specification as of parent application. Mere claiming in Patent of Addition over main application from different aspect does not fulfil the purpose of Section 54 of Indian Patents Act. Henceforth, if the claims do not suitably cover the invention, the same cannot be corrected by filing a Patent of Addition.

Footnotes

1. See § 54 (1) Patents Act, 1970

2. Biswanath Prasad Radhey Shyam v. Hindusthan Metal Industries, AIR 1982 SC 144

3. See § 56 (1) Patents Act, 1970

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

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