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Sakshi Sharda
| Updated: 29 Apr, 2020 | Category: IPR, Patent

Patent of Addition in India: A Complete Outlook

Patent of Addition

The Patents Act, 1970, is broadly based on the Report of the Ayyangar Committee passed in the year 1959. The Report was on the ‘Revision of the Patents Law’ and governed the Patent framework of the country. Particularly, the Patent Act, 1970, allows Patentees to cover modifications or improvements in the invention of the main Patent by requesting the grant of a Patent of Addition to them. The application of the main Patent will only be granted if the application of Patent satisfies the test of invention, and the grant of a Patent of Addition will only be done after the grant of the application of the main Patent. In the article, we will discuss about Patent of Addition in India. 

What is Patent of Addition?

Patent of Addition is a tool for the safety or protection of products or processes and the improvements, modifications, and variations related to products or processes in India. The Addition Patent serves as a valuable purpose for covering the improvements or modifications or variations which were missed out in the application of the main Patent. The Patentee is required to pay no renewal fees for such Addition Patents. The advantages related to the Addition Patent are supported by the circumstance that the term of Addition Patent cannot surpass the main Patent which are availed after due process of Patent Registration.

An Addition Patent allows the applicant of Patent to apply for any modifications or improvements made on the invention which was disclosed in the complete specification of the main Patent. The modification or the improvement in the Patent should be something more than a simple workshop improvement in the original Patent. The term for the parent or main Patent should not be exceeded by the term of the Addition Patent. The grant of Addition Patent should not be done prior to the date of the main invention Patent. An application of Addition Patent cannot be questioned on the ground that the invention of inventor ought to have been the focus of an independent Patent.

On the existing knowledge and with recent technological changes when an innovation is built, then the innovation has a higher competence with the already existing products in the market. The conversion of any Addition Patent can be done into a standard Patent if the modification, variation, or improvement in the invention is inventive in its own right. In countries like India, Australia, New Zealand, the provision of Addition Patent in the respective Patent Laws of the countries is in conformity with the (CIP) Continuous-in-part application provided under the American Patent System.

What are the characteristics of Patent of Addition in India?

Sections 54, 55 and 56 of the Patent Act, 1970, provides for the provisions related to Patent of Addition in India. The characteristics of the Addition Patent are as follows:

characteristics of Patent of Addition in India
  • The Addition Patent is an application made for any improvement or modification done in the invention which was described and disclosed in the main application of Patent by the Patentee;
  • The applicant of the application of Addition Patent should be the same as that of the main invention;
  • The main application of the Patent should be already applied by the Patentee, or the has already been obtained by the Patentee;
  • As per the provisions of the Patent Act, 1970, if the Addition Patent includes any new or additional applicant, the application of Addition Patent may not be pursued by the Indian Patent Office;
  • The date of the application for Addition Patent should be the same date or any date after the filing of the main application of Patent;
  • The application for Addition Patent can also be filed after the grant of the application of the main Patent;
  • The modification or improvement over the application of the main Patent, is an issue of an independent Patent, the Controller in this case, on Patentee’s request can revoke the independent Patent and grant the same as an Addition Patent. The Patentee for both the inventions should be the same in the above case;
  • The application of Addition Patent should include a reference to the main Patent as per Rule 13(3) of the Patent Rules, 2003;
  • There should be a definitive statement about the improvement or modification of the invention being an improved and modifies version of the already existing main Patent;

What is the Term and Renewal Fee of a Patent of Addition?

The Patent of Addition is granted for a term equal to that of the invention of the main Patent as per Section 55 of the Patent Act, 1970. Further, the term of the main Patent should not have expired. In a case, if the application of the main Patent is revoked by the Controller or the court, the Patentee by making a request to the Controller or the court can have the Addition Patent to be registered as an independent Patent for the term which is remaining. The request should be made by the Patentee for the same in the manner prescribed by the provisions of the Patent Act, 1970. Such an independent Patent will continue in force as an independent Patent for the time left.

There is no requirement of paying any renewable fees in respect of filing of an Addition Patent. However, when such an Addition Patent changes into an independent Patent on the request made by the Patentee, the same fee is required to be paid by the Patentee, upon the same dates as prescribed.

What is the Novelty and Grounds for Revocation of a Patent of Addition in India?

The grant of Addition Patent cannot be refused by the Controller or court or any other person; hence, the revocation is also not possible under the provisions as prescribed under Section 56 of the Patent Act, 1970. The novelty of the Addition Patent cannot be challenged on the ground that the subject matter of the invention is already a subject of an independent Patent already registered with the Indian Patent Office.

The grounds for Revocation of Addition Patent are as follows:

  • Lack of an inventive step;
  • The usage of the main invention is already described in the complete specification of the Patent;
  • The usage of the modification or improvement is already described in the complete specification of the main Patent application of the invention;

In case of Ravi Kamal Bali v. Kala Tech and Ors. {Bombay High Court (HC), Order dated 12th Feb 2008} the High Court of Bombay dismissed the argument of the defendant that the Addition Patent can only be granted if there is an inventive step over the application of the main Patent.

The Patent Act, 1970, under Section 56(2), elucidates that the disclosure in the application of the main Patent, should be considered in determining the novelty or validity of the Addition Patent.

Read our article:Revocation of Patent in India: A Complete Overview

What are the conditions for filing Patent of Addition in India?

The Patents Act, 1970, provides for provisions concerning the filing and granting of a special kind of application of Patent, i.e., ‘Patent of Addition’ in India. The Patentee or the applicant, if so desires, he/she can file a separate application for Patent in the manner prescribed for any improvement, variation, or modification for the invention in respect of which he/she has already filed or holds a Patent which has been granted by the Indian Patent Office.

Section 48 of the Patents Act, 1970, states that rights conferred by Addition Patent are the same as that of other Patents. In brief, a Patent, as an Addition Patent can be protected regarding any improvement, variation or modification in an earlier invention called the parent invention or main invention for which a Patent application for the said invention has been made and is pending or can be granted and is in force by the Indian Patent Office.

The main conditions for filling Patent of Addition application are stated below:

  • Unless the Controller of Patent is requested for the examination of the parent application of the invention, the Addition Patent cannot be examined. Further, the application of the Addition Patent will not be accepted by the Controller unless the main or parent application of Patent is accepted by the Indian Patent Office.
  • The application of the Addition Patent should have the same applicant as that of the previous application of the main invention. The inventors of the invention need not be the same for both the inventions. Hence, it can be said that the Addition Patent can neither be a Patent of invention nor can have an invention as Parent Patent.
  • The parent application of the Patent should be pending before the Controller of Patent, if the Addition Patent concerns an application of Patent.
  • The Patent should be in force, if the Addition Patent is in respect of an already existing Patent.   
  • The application of Addition Patent will not be granted or accepted, if the main Patent is terminated. Due to non-payment of the annuity of Parent Patent, the Addition Patent would be terminated by the Controller of Patent.   
  • With the termination of the Parent Patent, the Addition Patent will also terminate, otherwise the Addition Patent will run parallel to the Parent Patent.
  • As per Section 54 and 55 of the Patent Act, 1970, every Addition Patent is an independent Patent. Thus, each Addition Patent has the following:
  1. Render a fresh application number;
  2. requirement of filing a separate examination request; 
  3. the publication should be after 18 months; and
  4. undergoes a separate examination.
  • The filing of application date should be the same or a later date than that of the parent or main application of the Patent.
  • Each Addition Patent should include a reference to the parent or main application of the Patent.
  • Each Addition Patent should also include a conclusive statement that the invention of the inventor is a modification or variation or improvement of the invention, which is already claimed in the complete specifications of the parent or main application of Patent.
  • The main point to be determined is that the subject matter of the Addition Patent should constitute a single invention and should not relate to two distinct inventions.
  • The main invention should be specifying the novelty of the invention, or the Controller can cite the parent or main application the reason for rejection of Addition Patent on lack of novelty as per Section 56 of the Patent Act, 1970[1].
  • No right of rejection is given to the Examiner to reject the Addition Patent application on the ground of lack of inventive step in the invention as per Section 56 of the Patent Act, 1970.
  • No renewal fee is required to be paid by the Patentee for Addition Patent.

Can a Patent of Application be subject matter of PCT application? 

The Patent of Addition can be a subject matter of an application of PCT. Article 2 of the Patent Co-operation Treaty (PCT), defines a PCT application as an application for the protection of an invention of the inventor.  The different references to a PCT application shall be interpreted as references to applications for Patents for inventions, certificate of inventors, utility certificates, models of utility, inventor Certificate of Addition, Patent or Certificate of Addition, and Utility Certificate of Addition. On the other hand, the different references to a ‘Patent’ shall be interpreted as references to Patent for new inventions, Certificate of inventors, Utility Certificate, Models of utility, Patent or Certificates of Addition, inventors’ Certificate of Addition, and utility Certificates of Addition.

The above definition of Patent and application elucidates that an Addition Patent can be the subject matter of an application of PCT. When the Addition Patent application is filed, the complete specification of the Addition Patent application should have an explicit reference to the Patent number of parent or main Patent, the application number of parent or main Patent, and to the invention which is modified or improved.

What is the scope of Patent of Addition in other countries of the world?

The concept of granting Patent of Addition for any improvements or modifications over the main invention, have been removed by several countries. However, some countries, including India, U.S., and Australia, are still in continuance with the practice. The U.S. CIP (Continuation in Part) application is like the Indian Patent of Addition concept.

The developments or changes can be done on an existing application of Patent while the application of Patent is still waiting for a grant from the Patent Office. In an application for CIP, claims may have variable priority dates, which are based upon the priority date of the first application in which the subject matter of the invention is disclosed. However, the Patent shall expire 20 years from the date of filing of initial application form, which advantage is claimed by the inventor, similar to an Addition Patent.   

Conclusion

In order to protect a new modification or development in the invention, Patent of Addition is an additional benefit to the applicant. While working on Patent, if the inventor comes across some new inventions or modifications or improvements in the invention, then the same can be claimed, and rights can also be acquired over them by filing of Addition Patent in India. Though, in the Addition Patent, the subject matter must disclose over and above parent Patent application or the main application and should not merely claim over the similar specification as of parent application of the Patent. Simply claiming in Addition Patent over Patent application from different characteristics does not accomplish the purpose of Section 54 of Patent Act, 1970.

Hence, the claims of the inventor if they do not appropriately cover the invention, the same cannot be modified by filing an Addition Patent. The process of filing a Patent of Addition is long-lasting and time-consuming. We at Corpbiz have experienced professionals who will guide you with the process. Our professionals will assist you and help you throughout the process. Our professionals will ensure the timely and successful completion of your work.

Read our article: Procedure for Registration of Patent Agent in India

Sakshi Sharda

Sakshi Sharda has done BBALLB(HONS) and holds a strong knowledge on the matters pertaining to finance and law. From the past one year she is working as a legal advisor and in her leisure time she works on improvising her knowledge. Sakshi is spreading her knowledge by writing for Corpbiz.

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