May 21, 2023

Patents of Addition under Patents Act, 1970: Meaning, Term and Validity

This article has been written by Ms Panya Sethi, a third year BBA.LLB student of Symbiosis Law School, Noida.”

INTRODUCTION

The Ayyangar Committee Report from 1959 served as the basis for “the Patents Act of 1970”. The country’s patent system was controlled by a report titled “Revision of the Patents Law.” The principal Patent Act of 1970 provision that permits Patentees to obtain a Patent of Addition to cover revisions or enhancements to the invention covered by the first patent. For the primary patent application to be approved, it must pass the inventive requirements. An additional patent of addition cannot be issued before the first patent has been established.

Even after developing an invention and receiving a patent, there may be need for further refinement. These changes may be the consequence of the regular evolution of the innovation or of responses to it from the market or the industry. Where an existing patent covers an innovation, a “Patent of Addition” in India might be filed to cover the enhancements made to the patented product or method. Protecting new, industrially applicable, and non-inventive changes or modifications to a patent application that has already been submitted or granted is where the Patent of Addition comes into play. In order to apply for a modification or improvement to the invention that was fully described in the specification, the applicant must file for a Patent of Addition. More than just a few tweaks in the workshop, this upgrade has to be substantial. A Patent of Addition cannot be obtained before a normal patent has been granted for the principal invention, and its term cannot be longer than that of the regular patent.

If the addition or modification itself is inventive, the patent may be converted from a Patent of Addition to a standard patent. All three of these countries use the same continuous-in-part application standard as the United States when it comes to patenting patents for additions, as do India, New Zealand, and Australia. 

PROVISIONS UNDER THE INDIAN PATENTS ACT, 1970

The granting of a Patent of Addition, as well as its filing and prosecution, are governed by Sections 54, 55, and 56 “of the Indian Patents Act, 1970.

Section 54 focuses on the patent application process for new inventions. When an applicant believes he has discovered a modification or improvement to an existing patented invention, he may file a new patent application for a patent of addition to reflect those changes. A patent of extension may be granted by the controller in such a case. Further in Ravi Kamal v. Kala Tech and Ors, 2008 The Honourable Bombay High Court has made it very clear “that  due to the fact that “improvement” and “modification” both relate to preexisting conditions, only the patentee/patent applicant of the main patent is permitted to file for a Patent of Addition”.

Section 55 lays down the term of the patents of addition. Each patent in India is believed to be valid for 20 years after the application was first filed. Its validity period coincides with that of the parent patent. Another provision indicates that the controller has the authority to declare the “patent of addition to be a separate patent for the duration of the main patent’s remaining term in the event of a revocation of the main patent. The patent of addition” does not need renewal costs, but the same amounts would be due if the patent were to ever become its own entity. As an example of the above, consider “The Ahmedabad St. Xaviers College v. State of Gujarat & Anr, 1974. 

Section 56 acknowledges the validity of the patent. A patent granted as an expansion patent cannot be revoked or invalidated under any circumstances unless and until it is shown that the invention described in the patent’s full particulars “does not involve any inventive step with respect to the dissemination or use of the primary development shown in the patent’s full determination relating thereto, or unless and until the invention described in the patent’s full particulars represents an improvement on or a change from the invention described in the patent’s” full particulars showing the invention covering the original invention. To determine whether a patent of extension is valid, it is irrelevant whether or not the development itself should have been the focus of the main patent. The same was also held in Vidyawati Gupta & Ors. v. Bhakti Hari Nayak & Ors., 2006. The validity of the patent of addition was the main issue. 

CAN A PATENT OF ADDITION BE A SUBJECT MATTER OF PCT APPLICATION?

​A Patent of addition too can be subject matter of a PCT application. PCT application as defined under Article 2 of the Patent Cooperation 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 the main patent or the application number of the main patent, and the invention is improved or modification of the invention applied for.

GROUNDS FOR REVOCATION

Since the Controller, a court, or no one else may reject to issue an Additional Patent, and since Section 56 of the Patent Act of 1970 forbids revoking such a patent, there is no way to cancel it. It is not possible to contest the originality of the Addition Patent “on the grounds that the invention is already the subject of a separate Patent” filed with the Indian Patent Office.

When a patent of addition is invalid, it might be due to the following reasons:– 

  1. “Lack of inventive steps.
  2. Use of the Main Invention described in the complete specification.
  3. Use of the improvement and modification of the main invention described in the complete specification.“

The requirement that an added patent include an innovative step beyond the original application in order to be granted has been thrown down as unconstitutional under the terms of the Act.

In determining whether or whether the patent of addition is innovative, it is necessary to take into account the information provided in the initial application or patent, as indicated and clarified in “Section 56(2) of the Patents Act, 1970.”

CRITERION FOR FILING PATENT OF ADDITION

Provisions for filing and obtaining a “Patent of Addition” are included in the Indian Patents Act.

Applicants and patentees have the option of filing a new application in the required way for any improvements or modifications to an invention for which they already have a patent that is already in effect. 

Section 48 states that under the Indian Patents Act of 1970, a patent of addition provides the same protections as any other patent granted in India. To secure a patent, you must show that “a patent may be awarded and is in existence or that an application for the stated invention has been made and is pending.” This means that if the original invention can be patented, then any change or improvement to it may as well. 

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

  1. Until the parent application has been requested for evaluation, the Controller of Patents will not look at the child application for patent infringement. First, the main patent application has to be accepted before the supplementary application for the extension may be considered.
  1. The same individual or business should ideally submit applications for both the initial patent and the patent extension. The inventor may not always be one of them (s). Both the original patent and the patent of addition cannot cover the same inventive concept.
  1. If the parent application is still pending with the Controller, then you may proceed with filing the patent of addition.
  1. In order for the patent of addition to be valid, the underlying patent must be in force.
  1. If a parent patent is canceled, no patent of addition may be granted for the same invention. The patent of addition will lapse if the original patent is not renewed (Non payment of annuity).
  1. The patent term would start with the original invention and expire when it was replaced.
  1. To be in compliance with “Rule 13(3) of the Patents Rules,” each patent of addition must specify that the invention claimed therein is an improvement or modification of the invention claimed in the complete specification of the main application, and it must also reference either the main patent or the main patent application.
  1. The Indian Patents Act specifically recognizes each Patent of Addition as a distinct patent” under Sections 54 and 55.

PATENT OF ADDITION IN OTHER COUNTRIES

While the practice of awarding patents for enhancements or changes over the core invention has been outlawed in many nations, it is still in use in others, such as India, Australia, and the United States. An Indian patent of option might be utilized to add new highlights to a forthcoming patent application, similarly a U.S. Continuation to a limited extent (CIP) application can be utilized to add new segments to a current patent application while it is a forthcoming honor. ​In a CIP application, claims may have varying priority dates based on the priority date of the first application in which the subject matter was disclosed. Nonetheless, the patent shall expire twenty years from the filing date of earliest application from which benefit is claimed, similar to a patent of addition.

CONCLUSION

In India, a patent of addition may be used to safeguard developments and variants of a product or procedure. These will be beneficial in that they will provide protection for alterations and enhancements that were left out of the original patent. When substantial opposition is presented that the modification or improvement lacks creative steps in light of the fundamental invention, patents of addition offer a helpful channel through which such changes or improvements may nevertheless be protected. For such patents of addition, the patentee is not even required to pay the renewal cost. However, the period of an extra patent cannot extend beyond the original patent, offsetting some of the benefits.

REFERENCES

  1. Sharda, S. (2021, July 16). Patent of addition in India: A complete outlook. Corpbiz. Retrieved December 20, 2022, from https://corpbiz.io/learning/patent-of-addition-in-india/  
  1. Rastogi, P., & Singh, V. (2014, April 30). Patent Of Addition: An Indian Perspective. Patent Of Addition: An Indian Perspective – Patent – India. Retrieved December 20, 2022, from https://www.mondaq.com/india/patent/310328/patent-of-addition-an-indian-perspective#:~:text=(1)%20A%20patent%20of%20addition,patent%20for%20the%20main%20invention 
  1. Ipindia.gov.in. (n.d.). Retrieved December 20, 2022, from https://ipindia.gov.in/writereaddata/Portal/IPOAct/1_31_1_patent-act-1970-11march2015.pdf 
  1. Ravi Kamal Bali vs Kala Tech and Ors. on 12 February, 2008 – Indian kanoon. (n.d.). Retrieved December 20, 2022, from https://indiankanoon.org/doc/294662/ 
  1. Vidyawati Gupta & Ors vs Bhakti Hari Nayak & Ors on 3 February, 2006- Indian kanoon (n.d.) Retrieved Dec 20, 2022 from https://indiankanoon.org/doc/550757/ 
  1. Singh, N. (2020, August 24). A comprehensive overview of the patent of addition. iPleaders. Retrieved December 20, 2022, from https://blog.ipleaders.in/comprehensive-overview-patent-addition/?amp=1 
  1. Ravindran, A., & Chivukula, S. (2013, May 21). Patent of addition. Lakshmikumaran & Sridharan attorneys. Retrieved December 20, 2022, from https://www.lakshmisri.com/insights/articles/patent-of-addition/#  

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