Author Name:   Pranati Shubha

‘Patent of addition’ is a weapon for the protection of products or processes, and their improvements and variations in India. It serves as a useful purpose in covering improvements / modifications which are missed out in the main patent. The patentee does not have to even pay renewal fee for such patents of addition. These advantages are supported by the fact that the term of a patent of addition cannot exceed that of the main patent

Patent of Addition

When an invention is patented and if there are any improvements or modifications coming up for that invention as a natural process or as a result of the feedback of the market or the industry then the original patented product or the process may be protected by a “Patent of Addition” in India. A patent of addition is only granted after the grant of the patent for the main inventions.

Characteristics of patent of addition:
‘Patent of Addition’ falls under Sections 54, 55 and 56 of the Patents Act, 1970. It is an application made for a patent undergoing improvement or modification of the invention described or disclosed in the main application for which the patentee has already applied for or has obtained a patent. The applicant must be the same for the main invention and the improvement / modification and according to the provision it says that if the improvement / modification involve an additional applicant, a patent of addition may not be pursued.

A patent of addition must be on the same date or a date after the date of filing of the main application. A patent of addition can be filed even after the grant of the main application. If there is an improvement or modification over the main application is an issue of an independent patent, and the patentee is the same for both the inventions, the Controller may, on request by the patentee, repeal the independent patent and grant the same as a patent of addition. According to Rule 13(3) each such patent of addition shall include a reference to the main patent or the application for the main patent and also include a definitive statement that the invention is an improvement or modification of the invention claimed in the complete specification of the main application.

Term of patent, renewal fee, novelty and inventive step:
As per Section 55 of the Act, a patent of addition is granted for a term equal to that of the patent of the main invention and that has not expired. If the patent for the main invention is revoked under the Act, the patentee on request to the controller or the court in the prescribed manner can have the patent of addition as an independent patent for the remainder of the term and shall continue in force as an independent patent accordingly.

The patentee is not required to pay any renewable fees in respect of a patent of addition, but as soon as such patent becomes an independent patent the same fees shall thereafter becomes payable, upon the same dates.

The grant of a patent of addition cannot be refused and it cannot be revoked or invalidated. The validity of a patent of addition cannot be claimed on the ground that the invention is the subject of an independent patent.

The grounds for revocation involve:
a. lack of inventive step
b. use of the main invention described in the complete specification.
c. use of the improvement and modification of the main invention described in the complete specification.

The Bombay High Court in the case of Ravi Kamal Bali v. Kala Tech and Others [Bombay High Court, Order dated 12th Feb 2008] dismissed the defendant's argument that patent of addition can only be granted if it has an inventive step over the main application.

Section 56(2) clarifies that the disclosure in the main application / patent shall be considered in determining the novelty of the patent of addition.

Conclusion:
‘Patent of addition’ is a weapon for the protection of products or processes, and their improvements and variations in India. It serves as a useful purpose in covering improvements / modifications which are missed out in the main patent. The patentee does not have to even pay renewal fee for such patents of addition. These advantages are supported by the fact that the term of a patent of addition cannot exceed that of the main patent. While several countries have abolished the concept of granting patents for improvements or modifications over the main invention, some countries including India, Australia and the U.S. still continue with the practice. The patent shall expire twenty years from the filing date of earliest application from which benefit is claimed, similar to a patent of addition.

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