According to the Indian Patent Law, patents are granted for inventions that meet the criteria of novelty, inventive step and industrial applicability
However, the process of research and development is a continuous one and on several occasions, improvements or modifications to the main invention are developed as a result of this. Alternatively, the improvements or modifications to the main invention are a result of consumer feedback. Although novel, they do not necessarily meet the requirement of inventive step in view of the disclosure made in the patent applications/granted patents relating to the main invention. Due to this limitation, such improvements or modifications do not qualify for the grant of an independent patent.
The Indian Patent Law offers protection for such improvements or modifications by way of “Patents of Addition”. Sections 54, 55 and 56 of the Indian Patents Act, 1970 deal with the law pertaining to patents of addition and the same are reproduced herein below.
Patents of addition in India
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 therefor (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 grant of the patent for the main invention.
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.
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.
A thorough reading of the provisions brings forth the following points relating to Patents of Addition:
1. The application for a patent of addition must be made by the same applicant/patentee who is the applicant for the main application/granted patent;
2. The date of filing of the application for a patent of addition must be the same as or later than the date of filing of the main application;
3. The invention claimed in the patent of addition must fulfill the novelty requirement; and
4. The invention claimed in the patent of addition cannot be determined to be lacking in inventive step in view of the disclosure made in the main application; and
5. If a modification or improvement in an invention is the subject matter of an independent patent, the applicant may request that such a granted patent be converted to a patent of addition, provided the patentee of the patent of addition is the same as the patentee of the independent patent.
In Ravi Kamal Bali vs. Kala Tech and Ors., Justice Vazifdar has held that the applicant for a patent of addition must be the same as the applicant/patentee for the main application/patent. The relevant portion of the judgment is reproduced herein below:
“Sections 54 and 55 in terms establish the link between the main invention and the patent of addition. It posits that the patentee of the main invention and the patentee of the patent of addition, are the same. Section 54 permits the grant of a patent of addition only if the applicant thereof applies or has applied for a patent of the main invention in respect whereof the notification or improvement is claimed. It is obvious therefore that only the patentee of the main invention is entitled to improve or modify the main invention for otherwise it would permit anybody to benefit from it by exploiting the main invention. A stranger to the main invention cannot apply for a patent of addition in respect of any modification or improvement of the main invention.
A view to the contrary would lead to the most incongruous results.”
Another advantage associated with patents of addition is that they may be applied for even after the grant of the patent for the main invention, i.e., patents of addition are not time-bound like divisional applications under the provisions of the Indian Patents Law. The term of a patent of addition is equal to the term/remainder of the term of the main patent and therefore may be shorter than the usual term of 20 years. However, this disadvantage is offset by virtue of the fact that annuities are not separately payable for patents of addition. Further, if the main patent is revoked by an order of the Court/Controller, the patent of addition may be converted to an independent patent and annuities only become payable thereafter.
Therefore, patents of addition are a useful resource for protecting improvements or modifications made in the main invention in a cost-effective manner. However, it is prudent to file an application for a patent of addition only if such improvements or modifications are unlikely to meet the established criteria for grant of an independent patent since a patent of addition usually holds a term lesser than 20 years.
Author: dr. Niti Dewan