An Indian Perspective on Patent of Addition

After making an invention and obtaining a patent for it, there is still room for improvement or modification. Improvements or modifications may occur as part of the normal process of improving an invention. This is due to market or industry feedback. In this case, the innovation is already protected by a patent. The improvement over the existing patented product or process may be protected in India by a “Patent of Addition.” It is at this point that the Patent of Addition comes into play. It protects novel, industrially applicable, and non-inventive improvements or modifications to a previously filed or granted patent application. 

An innovation that is built on existing knowledge and modern technological changes outperforms existing products in terms of competence. If the improvement is inventive in its own right, a Patent of Addition can be converted into a standard patent. This provision in India, New Zealand, and Australia is coherent with the American Patent System’s provision for continuous-in-part application. 

A Patent of Addition allows the applicant to seek a patent for an improvement. The improvement made to the invention disclosed in the full specification. The enhancement must be more than just a cosmetic enhancement to the workshop. A Patent of Addition shall not be granted for a period longer than that of a regular patent. And, shall not be granted before the date of grant of a patent for the main invention. It cannot be challenged on the grounds that the invention should have been the subject of its own patent. 

Provisions: The Indian Patents Act, 1970  

Sections 54, 55, and 56 of the Indian Patents Act, 1970, deal with Patent of Addition, filing, and prosecution. The provisions are as follows: 

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. 

Criteria for Filing Patent of Addition 

The Indian Patents Act includes provisions for filing and granting a “Patent of Addition,” a type of patent application. If the applicant or patentee so desires, he may file a separate application in the prescribed manner for any modification or improvement to the invention for which he has already filed or holds an active patent. The rights conferred by an addition patent are the same as those conferred by other patents, according to Section 48 of the Indian Patents Act of 1970. In short, a patent can be obtained as an additional patent for any improvement or modification to an earlier invention known as the main invention or parent invention, for which a patent can be granted and is in force, or for which an application for the said invention has been made and is pending. 

The following are the main criteria for filing an application for Patents of Addition: 

1. The application for a patent of addition will not be examined unless the Controller of Patents is requested. Patent of Addition applications will not be accepted unless and until the parent patent application is accepted.

2. The applicant for the Patents of Addition ought to match either the applicant for the earlier application or the patentee, whichever is the case. The inventor(s) may or may not be the same. That is, a patent of addition cannot be an innovation patent, nor can it be the parent patent of an innovation patent.

3. If the Patent of Addition is for a patent application, the parent application must be subject to review before the Controller.

4. If the Patent of Addition is in relation to a patent, the patent must be valid.

5. If the parent patent is terminated, the patent will not be accepted or granted. If the parent patent is not renewed, the patent of addition expires (non-payment of an annuity).

6. In addition, the patent would run simultaneously and end with the main invention.

7. In the case of a patents of addition, Rule 13(3) of the Patents Rules states that each such patent of addition must include a reference to the main patent or the application for the main patent, as well as a definitive statement that the invention is a modification or improvement of the invention claimed in the main application’s complete specification.

8. In light of Sections 54 and 55 of the Indian Patents Act, each Patent of Addition is clearly an independent patent, and thus

• a new application number was generated, 
• requires the submission of a separate request for examination, 
• is published 18 months later, and 
• is subjected to a separate examination. 

In addition to the conditions stated above, the date of filing of the application for the patents of addition must be the same as or later than the filing date of the main or parent patent application.

Furthermore, the following points must be considered in this regard: 

• The novelty should be clearly outlined in the main invention of the patent of addition. Alternatively, the Examiner may reject the Patents of Addition due to a lack of novelty by citing the main invention. The examiner, however, cannot deny it for a lack of an inventive step in light of the main invention. According to Section 56 of the Patents Act, a main application/patent cannot be cited to establish lack of inventive step in the patents of addition, but it can be cited to establish novelty in the patents of addition. 
• A patent of application has the same priority date as the main invention and expires along with it. An economic advantage of patent additions is that no separate renewal fees are required; however, if the parent patent is revoked and the Patent of Addition is an independent patent, an annuity payment is required. 
• Patents of addition can also be the subject of a PCT application. According to Article 2 of the Patent Cooperation Treaty, “application” means an application for the protection of an invention; references to “application” are to be considered as references to applications for patents for inventions, utility certificates, inventors’ certificates, utility models, patents or certificates of addition, utility certificates of addition, and inventors’ certificates of addition; references to a “patent” are to be considered as references to patents for inventions, utility certificates, inventors’ certificates, utility models, patents or certificates of addition, utility certificates of addition, and inventors’ certificates of addition. 
• The preceding definition clarifies that Patents of Addition can also be the subject of a PCT application. When filing an application for Patents of Addition, the entire specification should include a specific reference to the patent number of the main patent or the application number of the main patent, and the invention should be improved or modified from the invention applied for. 

Continuation–In-Part Under US Patent System 

In many ways, the Indian Patent System’s Patents of Addition provision is more advantageous to the applicant than the US Patent System’s Continuation-in-Part (hereinafter “CIP”). A CIP, for example, can be filed only while the main application is still pending. Whereas Patents of Addition can be filed at any time during the patent’s term. A separate annuity is required to maintain a CIP application. Whereas no separate maintenance is required for a Patents of Addition. When the parent patent is revoked, the Patents of Addition must be maintained as a separate and independent patent.

Claims in CIP applications must have differing priority dates based on the priority date of the initial application. Regardless of the different dates, the patent will expire in 20 years. The tenure is the same as the Patents of Addition. 

Conclusion 

Finally, the Patents of Addition provide the applicant with an advantage in securing new modifications to the invention or improvement. New inventions, improvements, or modifications to an invention can be claimed during the life of a patent. Furthermore, rights to the same can be obtained by filing Patents of Addition. However, the subject matter of the Patents of Addition must be made public in addition to the parent patent application. Besides, it is not simply a claim over the same specification as the parent application.