INTRODUCTION
A patent, along with its derivative known as a patent of addition, belongs to a specific legal domain encompassing Intellectual Property. Intellectual Property comprises two main categories: Industrial Property and Copyright. Patents fall within Industrial Property, sharing this category with trademarks. A patent of addition is a subset of the broader patent concept.
Legally, a patent is defined as a form of protection or authorization granted by a national government, allowing the inventor exclusive rights over their creation. These rights include the sole authority to produce, sell, and utilize the invention for which the patent is issued.
Various entities, such as pharmaceutical companies and academic institutions, pursue patent protection to safeguard their research findings, laboratory methodologies, specific genetic sequences, and other innovations. To qualify for patent protection, inventions must demonstrate novelty, uniqueness, and non-obviousness to professionals within the relevant field.
Patents serve as a crucial safeguard across all industries, ensuring the protection and responsible sharing of intellectual property for the betterment of societies and humanity at large.
WHAT IS PATENT OF ADDITION
The inclusion of patents of addition in the Indian Patent Act 1970 took place. This inclusion was done to provide sufficient opportunities for the patentees to claim their inventions in a way that would cover variations of the monopoly claimed in respect of their primary invention.
This application is made to make any modification or improvement of an invention. To be patentable, this should be something that satisfies the test of the invention. A patent of addition is only granted after granting the patent for the primary inventions. Patent of Addition is covered under Sections 54, 55, and 56 of the Patents Act 1970. The applicant of the patent of addition application must be identical, as was in the main patent application. As per the provision, if there is an additional applicant, a patent of addition may not be pursued. According to Rule 13(3), each such patent of addition shall include a reference to the main patent and a definitive statement that mentions whether the invention is an improvement or modification of the invention claimed in the complete specification of the main application. The priority date of a patent of addition will be considered as the date of applying for a patent of addition.
While some countries, including India, Australia, and the U.S., continue with the practice, several countries have abolished the concept of granting patents for the improvements or modifications of the main invention. The patent shall expire twenty years from the filing date of the earliest application from which the benefit is claimed.
PROVISIONS DEALING WITH PATENT OF ADDITION
Section 54 of the Patents Act, 1970 – patents of addition
This Section is merely dealing with the applications, etc. for the patent of addition. According to the provisions of this Section, If an applicant feels that he has come upon modification or improvement of an already patented invention, another application can be made for a patent of addition in respect to such improvement or modification. Such an application may be granted by the controller as a patent of addition.
Further, it was held in Ravi Kamal v. Kala Tech and Ors, 2008 by the Hon’ble Bombay High Court that the terms ‘improvement’ and ‘modification’ involve a reference to an existing state of affairs and it was amply made clear here, that only the patentee/patent application of the main patent is entitled to apply for a Patent of Addition.
Section 55 of the Patents Act, 1970 – Term of patent of addition
The term of every patent in India is said to be 20 years from the date of filing the application. This Section clearly states the term for a patent of addition. In other words, we can say that this Section grants the term for the patent of addition. It clearly states that a patent of addition will only be granted for a term equal to that of the main Patent of the invention. The patent of addition shall remain in force until the original Patent of your invention has not expired.
As held in the case of The Ahmedabad St. Xaviers College v. State of Gujarat & Anr, 1974, There are no renewal fees that need to be paid for a patent of addition. But, if any such patent becomes an independent patent, under the provisions of Section 54, the same fees as-is for an independent patent is payable. This is only if the addition, which may be a modification or improvement, is not considered to be an addition and is given an independent patent rather than a patent of addition.
Section 56 of the Patents Act, 1970 – Validity of patents of addition
The grant of a patent of addition shall not be refused, and a patented granted as a Patent of Addition can also not be refused or revoked.
This Section states certain grounds on which the same, mentioned above, cannot be done. It is explained in this Section in detail.
The same was also held in Vidyawati Gupta & Ors. v. Bhakti Hari Nayak & Ors., 2006 where the validity of the patent of addition was the main issue.
Essential Features
The essential features of a patent of addition, as delineated under Sections 54, 55, and 56 of the Patents Act, 1970, are as follows:
Purpose: A patent of addition pertains to an application for improving or modifying a specific invention already disclosed or described in the main patent application filed by the patentee.
Timing: The patent of addition must be filed either on the same date or after the filing date of the main patent application.
Post-Grant Filing: Even after the main patent application has been granted, the patentee can still file for a patent of addition.
Controller’s Discretion: In cases where there is a question regarding whether an invention should be granted a patent of addition or a separate patent, the controller has the authority to revoke an independent patent and grant it as a patent of addition.
Reference to Main Patent: Each patent of addition must reference the main patent and explicitly state that the invention is an improvement or modification of the original invention.
The grounds for revocation of a patent of addition involve the following –
- Lack of inventive step.
- Use of the Main Invention described in the complete specification.
- Use of the improvement and modification of the main invention described in the complete specification.
Under the provisions of the Act, it has been dismissed that patent of addition can only be granted if it has an inventive step over the main application.
Section 56(2) of the Patents Act, 1970 clearly states and clarifies that the disclosure in the main application or patent shall be considered in determining the novelty of the patent of addition.
CONCLUSION
The term “patent of addition” serves as a tool for safeguarding both products and processes, along with their enhancements and alterations, within the Indian legal framework. Its function lies in addressing advancements or modifications that may have been overlooked in the original patent application. Notably, the patentee is exempt from paying any renewal fees. However, it’s crucial to note that the duration of a patent of addition cannot surpass that of the main patent.
REFERENCES:
1. https://blog.ipleaders.in/comprehensive-overview-patent-addition/
2. https://www.intepat.com/blog/patent-of-addition/
3. https://www.mondaq.com/india/patent/310328/patent-of-addition-an-indian- perspective
4. https://conventuslaw.com/report/india-patent-of-addition-a-comparative-perspective/
