PATENT OF ADDITION

IPR Studio have Patent Attorneys  fully acquainted with the legalities of patent filing procedures in India and have experience in successfully handling patent filing in India

Introduction

An invention after being acquired and a patent has been obtained, there still exists a scope of refinement and changes which can be made to such an invention. Such recasting can take place to improve an invention in the ordinary process or as an result of feedback received from the market or from the industry. If such a scenario occurs, the invention has already been safeguarded by a patent, and through the “Patent of Addition” the modifications or alterations to the original knitted patent/process patent can be safeguarded in India.

Patent of addition allows addition to the new subject matter to an already existing disclosure of the main application. Through patent of addition, an applicant can modify/ improve an existing disclosure, expand existing descriptions & add paragraphs disclosing new subject matter.

The patent in Addition comes into the picture when the patent application has already been filed or granted, in order to protect novel, industrial or non-inventive improvements or modifications.

The patent in Addition could be transformed into a standard patent in a scenario where the improvement or modification is inventive.

In the case of Linotype & Machinery Ltd. V Hopkins (1908) 25 RPC 665, it was held-

An improvement of a patented machine comprises of any machine which, while retaining some of those essential or characteristic parts of the machine which are the subject of the monopoly claims, although through addition or modifications can yield better results, whether such improvement infringes the monopoly claims for the patented machine or not.[1]

The Indian Patents Act, 1970 branches out three types of patents that can be granted-

(i) an ordinary patent

(ii) A patent of convention and;

(iii) A patent of addition.

The second kind of classification of patent-

(i) Process Patent and;

(ii) Product patent

Provisions For Patent of Addition

Patent of Addition has been discussed in sections 54, 55, 56 of the Indian Patent Act, 1970.

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 54 suggests that in case the applicant feels that certain additional modifications or improvements have been made in an already existing patented invention; another application can be made for patent of addition with regards to such improvements. Patent of Addition cannot be made an entirely new invention. Under Rule 13(3) of the Patent Act Rule, 2003 (rules) states that each patent of addition shall be inclusive of a reference to the original patent and shall comprise of a definitive statement that, the invention encompasses an improvement or modification of the patent claimed in the specification of the original patent granted or applied for. Patent of Addition can be granted along with the grant of the main invention or after the grant of the main invention; it cannot be granted before the grant of the main invention, as it is an addition to the main invention.

In the case of Ravi Kamal v Kala Tech & Ors[2], the Bombay High Court stated that the terminology “improvement” and “modification” entails an existing state of affairs and only the patentee/ patent application for the chief patent is entitled to apply for Patent of Addition.

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 55 mentions the term for patent of addition. It states that patent of addition will be granted for a term equal to that of the original Patent of the invention. Further, the Patent of addition will remain in force until the primary Patent of patentee’s invention has not been expired.

In cases where the original invention is revoked, the Controller at the request of the former patentee can allow the patent of addition to become an independent patent for the remaining time span. Patent of Addition is economically beneficial as it does not require a renewal fee to be paid. However, under Section 54 in case, any such patent becomes an independent patent; a similar fee as for an independent patent is payable. This will only be prevalent when the modification or improvement is not considered to be an addition to the original patent and is thereby considered 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.

Grant of patent of addition cannot be refused or revoked for lack of ‘inventive step’ as the main invention (which is filed before the patent of addition) already requires to disclose the inventive step. Therefore, the standard of checking novelty in a patent of addition will not include disclosure in the main invention. Section 56(2) explains that disclosure in the main application/patent shall be considered in deciding the novelty of the patent of addition.

CRITERIA FOR FILING PATENT OF ADDITION

‘Patent of Addition’ is a special type of patent application in relation to filing and granting of patents provided by the Indian Patent Act. In a situation where the patentee desires filing a distinct application in a prescribed manner for any improvements or modifications for the original invention which has already been filed by the patentee and is a patent in force.

Patents Act, 1970 it has been established that the rights conferred by patent of addition are similar to those for other patents. In short, a patent of addition can be secured with respect to any improvement or modification, of a parent invention for which a patent can be granted and is in force or an application for the previous invention has been made and is pending.

A primary criterion for filing of an application of patent of addition has been enlisted below-

  1. Application for patent of addition will not be scrutinized unless the Controller of patents is requested to examine the parent application. Application for patent of addition will not be accepted unless the main application is accepted.
  2. The applicant for the patent of addition should be similar to the earlier application or the patentee. The inventor (s) need not necessarily be the same. Patent of addition can neither be an innovation patent nor have innovation as parent patent.
  3. In case the patent of addition is with regards to a patent application then the parent application should be pending before the Controller.
  4. In case the patent of addition is in respect of a patent, then the patent should be in force.
  5. If the original patent ceases to exist then the patent in addition will not be accepted or granted. Patent of addition will stop to exist if the parent patent has not to be renewed.
  6. The patent in addition would function parallelly with the original patent and will expire with the original patent.
  7. As mentioned earlier, Rule 13(3) of the Patents Rules mentioned that each such patent of addition shall be inclusive of a reference to the primary patent or application for the primary patent and additionally also include a conclusive statement that the invention is a modification or an improvement of the invention claimed in the complete specification of the main application.
  8. As per Section 54 & 55 of the Indian Patents Act, every Patent of Addition is a complete independent patent and henceforth-
  • Furnished with a new application number
  •  Requires a distinct request for examination to be filed
  •  Published after 18 months &
  • Processed through a separate examination.

Further, the following points also need consideration in this regard:

In addition to the conditions stated above, the date of filing of the application regarding the patent of addition has to be similar to or in a latter date than the date of filing of the primary patent application. Further, certain other pointers also need to be kept in mind and require consideration-

  • The standard to ascertain whether a particular invention is a subject matter of a patent of addition is that the claims should not be related to a distinct invention and should comprise a single invention.
  •  Novelty should be distinctly specified in the primary invention of the patent of addition or the main invention could be referred to by the Examiner to reject Patent of Addition for lack of novelty. Lack of inventive step in the main invention cannot be a ground for rejecting Patent of Addition.
  • Patent of addition can be included as a subject matter of a PCT (Patent Cooperation Treaty) application. The filing of an application for Patent Of Addition should be followed by a complete specification with a specific reference to the patent number of the original patent or the application number of the original patent.

Conclusion

Patent of addition shields any additional improvements or other variants in the existing products or processes patent, within India. It is considered beneficial for any improvements/modifications which have been forgotten or missed out in the ‘main invention’

The Patentee is not entitled to pay the renewal fee for such patent of addition.

However, there are certain pointers which the patentee needs to be mindful of, which is the term of patent of addition cannot exceed the life span of the main invention.

The original patent expires after the time span of 20 years from the date of filing from which the benefits are reaped which are similar to a patent of addition.

Various countries have terminated this concept to grant patents for any additional modifications and improvements over the primary invention, although countries like India, Australia & the US still carry on with these practices.

Patent of Addition under the Indian Patent System is comparatively more advantageous than the Continuation-in-Part (CIP) under the US patent system. [4]

 1]“Patent of Addition-A strategy for incremental innovation” http://www.majumdarip.com/blog_post/patent-of-addition-a-strategy-for-incremental-innovation/ 

[2] [2008] (38) PTC435 (Bom) 

[3] Legal Service India, Pranati Shubha, “Patent of Addition”, http://www.legalservicesindia.com/article/1667/Patent-of-Addition.html 

[4] Mondaq, Priyanka Rastogi & Vijaya Singh, “Patent Of Addition: An Indian Perspective” https://www.mondaq.com/india/patent/310328/patent-of-addition-an-indian-perspective#:~:text=The%20term%20for%20a%20Patent,of%20an%20independent%20patent3.