As we all know there is always a scope for improvement in anything, the same applies to the case of a new invention, which by the time gets evolves with the further new modifications and improvements and becomes more efficient and better. The process of the modifications or the improvements is usually a product of either the feedback or suggestions received by the market or the natural process of evolution of an invention. As it is important to secure such inventions by the patent rights at the same time it is also very important to secure the original patent together with further improvements, so that the patent right of the invention with further improvements continues to belong to the right holder. These modifications are incorporated through the tool called “Patent of addition”. Hence, in this article, we will try to get the basic introduction of this tool i.e.; Patent of addition.
How does the Patent of the addition come into existence and how it has evolved?
The current patent law i.e.; Patent Act, 1970, of the country is mainly the product of the recommendations given by the committee headed by Justice N Rajgopala Ayyangar (Ayyangar Committee). The committee submitted the report which was titled as the “Report on the revisions in the patent law”. In this report, they recommended the inclusion of provisions pertaining to the Patents of Addition, as it is provided under section 26 of the UK law i.e.; UK Patent Act, of 1949.
In the United Kingdom said provision is the result of the recommendations of the Lord Swan committee of 1948. The reason they gave for the inclusion of such a clause was that they wanted to introduce a relief measure in the patent law for the applicants who have not successfully drafted their patent claim that includes all the aspects of their inventions, such provision gave them the opportunity to rectify their claims, subject to the several circumstances. Under the recommendation, the applicant was given an opportunity to amplify the scope of their invention. And the recommendation of the Ayyangar committee in India just reproduced section 26 of the UK act.
Important features of Patent of addition
Patents of addition are the applications that are made for the purpose of modification, improvement, and up-gradation of the existing invention which is disclosed or mentioned in the application, for which the applicant has already been granted a patent or his application is pending. The patent of an additional tool is governed by the patent act under sections 54, 55, and 56. For the valid application for the patent of addition, it is required to be made by the same person who has made the application for the original invention, as well as it is also required that if in case there is another applicant is involved in improvement/ modification then in such cases the application for the patent of addition might not be qualified for being pursued. This type of application can only be made either on the date on which the main application has been filed or it can be made on later dates.
In addition to what is said above, in cases in which the improvement/ modifications made upon the main invention are subjected to the independent patent, then on the request of the patentee who is the same in both the inventions and modifications/inventions, the Controller of Patent can grant the independent patent the status of patent of addition by revoking its independent patent status.
In absence of the special rules for governing the priority dates of patents, the default rule is applied for determining the priority date- which means the date on which the application for patent of addition has been filed shall be considered as the priority date, which shall be subject to the other provisions of the act.
As per Rule 13(3), in the case of patent of addition, the applications which are made will be required to explicitly include a reference to the main patent or the application of the main patent. And it is also required to explicitly mention a definitive statement that the “invention is an improvement or modification of the invention claimed in the complete specification of the main application.”
Inventive step and novelty for the patent of addition
As per section 56 of the 1970’s Act, it is provided that a patent of addition cannot be invalidated merely on the ground that the invention which is claimed on the original patent does not have any inventive step in the view of the main application. In Ravi Kamal Bali v. Kala Tech and others, the Hon’ble High Court of Bombay explicitly established the same in its order dated February 12th, 2008 in the case. In this case, the Hon’ble High Court took down the argument given by the defendant in which they argued that the patent of addition can only be granted in cases where there are inventive steps over the main application. However, it is clear under Clause 2 of section 56 that for the determination of the novelty of the patent in addition to the disclosures given under the main application.
This works as a very helpful ex-ante test for the applicant before applying for the patent of addition- under this test if an applicant finds there is a serious risk of not having an inventive step in a later modification/invention in comparison to the main invention, then it will be better for an applicant to file such modifications and improvements as a patent of addition.
What are the Term and the expiration of the patent of addition? And what is the renewal fee for it?
It is given under section 55 of the act, that the patent of addition shall be valid till the main application does not expire, and shall be in force till the main application will be in force and will expire as soon as the main application expires. The limitation provided under section 55 of the act is compensated by the fact that there is no separate renewal fee is required for the patent of addition. In case there is a revocation of the main application, the patent of addition can be provided the status of an independent patent for the remaining term and will be in force as an independent patent. But this status can be only given after receiving the request for the same from the patentee.
Can a PCT application be filed for a patent of addition?
As per section 54 of the Act, the application for the modification/ improvement is only referred and it is not limited to any specific kind of application. Under clause 1A of Section 7, the international application filed within Patent Cooperation Treaty (PCT) will be considered as an application filed in India; it will be considered when a corresponding application has also been filed in India. under the clause 4 of section 138, it is provided that an application that has been filed under the PCT and designating India “shall have the effect of filing an application for a patent under Section 7, 54…, as the case may be,…” Form 1 is the common form which is used for the application of getting patent in India; this form contains a dedicated separate section which only refers to the patent of addition. So, explicitly as per the Indian law, the patent of addition can be filed whether as an international application or can be through a domestic application.
The above statement also gets support from the bare reading of the PCT. As per the Article 2 of the PCT, the term application is defined as an “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”.
In the above definition, the patents of additions are also included. If the applicant which has applied for an international application wanted that his application to be treated as a patent of addition or wanted it as a continuation in part or as other different forms of protections within the designated states, so for these the applicant can show the same in his request for national level entry for the application as required. However, it is very important to carefully consider that are there the special privileges that are being granted to patents of addition in India are also entitled in the other countries in which the PCT application is prosecuted.
What is the status of Patent of addition in other countries?
The status of patent of addition around the world is very diverse; there are several jurisdictions in which the concept of patent of addition for the improvements/modifications over the original invention is totally abolished, while at the same time there are several jurisdictions like India, USA, and Australia where the practice of granting the patent of addition is still prevailing. The US’s practice of Continuation in Part (CIP) application is somewhat parallel to the Indian practice of patent of addition, because in CIP also the application for inclusion of improvements/ modifications over the original invention can be moved even in the cases in which the application for granting the patent is still pending. In the practice of CIP application, the claims made under it can have different priority dates where the subject matter was disclosed. However, the patent shall only be valid for the period of 20 years from the date of filing of the first application via which the benefits are claimed, and it shall expire after that period.
The tool of patent of addition is very helpful for the protection of a product or the process of its development and evolution, as well as the further improvements and variations in India. It helps to protect the improvements and modifications which were left for being included in the main patent. As well as in the situations in which there is a significant issue raised that the modifications or inventions which have been made do not have any inventive step with respect to the original patent, then in those cases, the patent of addition works as a useful measure with the help of which those modifications and improvements can still be protected. And the biggest plus point of this tool is that an applicant/ patentee is not required to pay any renewal fee for the application for patent of addition. But the only thing that balances the above-mentioned advantages is the fact that the patent of addition cannot be extended more than the validity of the main patent.
- Patent Act 1970- https://legislative.gov.in/sites/default/files/A1970-39_0.pdf
- Patent Rules 2003- https://indiankanoon.org/doc/124352296/#:~:text=(1A)%20Notwithstanding%20anything%20contained%20in,the%20application%20has%20been%20filed
- Patent Cooperation Treaty- https://www.wipo.int/export/sites/www/pct/en/texts/pdf/pct.pdf
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