Patent of Addition: A comparative perspective between Indian & U.S. Patent laws

Patent of Addition is a cost effective intellectual property weapon used for protecting the improvements or minor modifications taking place in the existing patent applications.

After arriving at a particular invention, there always remains a window for minor improvements or modifications. The improvements or modification might take place in an ordinary manner. For the minor improvements, it might be difficult to file a new and independent patent application, if the parent application has already been filed, as it will lack the inventive step under Section 2 (1) (j) of the Patents Act, 1970. Therefore, the concept of Patent of Addition came into being. It was first introduced in British Law system.

The concept of “Patent of Addition” came from U.K. patent law system. This concept was first recommended and suggested by Lord Swan Committee.

Lord Swan Committee suggested that “the purpose of patent of addition was to provide reliefs to applicant who has failed to draft their claims in a way to adequately cover their invention, by giving them an opportunity to rectify the claims they have made, in cases where the circumstances permit this.”

While adopting the concept of patent of addition in the Indian patent law, Justice Ayyanger Committee further added that the subject matter of the patent of addition should be some additional or modification disclosure over the parent patent application and not merely as claimed invention. Other countries such as United States of America, Australia, New Zealand, South Africa and Greece also adopted. In United States of America this concept is called “Continuation-in-Patent Application (CIP).”

“Patent of Addition” under Indian Patent Act

Section 2 (1) (q) defines “Patent of addition” is a patent granted as per Section 54 of the Patent Act, 1970. Further, the important characteristics features of Patent of addition in India are defined under Section 54, Section 55 and Section 56 of the Patent Act, 1970. The characteristic features are as follows:

  • Section 54, Patent Act 1970 states that the patent shall not be granted as patent of addition unless date of filing the application was same as or later than the date of filing the application with respect of the main patent application.
  • Section 55, Patent Act 1970 states that patent of addition is granted for a term equal to that of the parent patent application and shall remain in force during the term of patent or until the cessation of the parent patent and no longer. Further, it also explains if the patent of the main invention is revoked then the Controller of Patents on request by Applicant or Patentee can order that Patent of Addition shall become an independent patent for the term of the patent of the main invention. Furthermore, it states that no additional renewal fee is paid for the Patent of addition, instead the same fees is paid for the renewal of patent of main invention is paid, on the same dates shall be followed for their payment criteria.
  • Section 56, Patent Act 1970 states that patent of addition cannot/shall be refused or a patent shall not be granted, revoked or invalidated on the ground that the invention claimed in the complete specification does not involve any inventive step. Any improvement or modification in the main invention described in the complete specification of the patent of addition shall not be questioned on the grounds that the invention ought to have been the subject of independent patent.

Continuation-In-Patent Application as per US Patent Law is a modification or improvement in an existing Patent Application. It is also referred as “add on” to the existing patent application. One major benefit for filing of a Continuation-In-Patent Application is that one has the flexibility to incorporate the modification in the parent application and receive benefits of the same from original date of filing of the parent application. Along with benefits, comes limitations of the same, one major limitation of CIPA is that the term of CIPA remains the same as that of the parent patent application.

Further, it is stated that there exists clear and concrete differences in the practicing law of US on Continuation-In-Patent Application and Indian provisions on Patent of Addition.

Point of differences in Continuation-In-Patent Application and Patent of Addition are as follows:

  • Continuation-In-Patent Application in US can only be filed any time before the grant of Patent whereas Patent of Addition in India can be filed any time before the lapse of Patent term.
  • Renewal fee of Patent has to be separately paid for Continuation-In-Patent Application whereas there is no separate renewal fee paid for patent of addition, unless the parent application is revoked.
  • The date of filing in Patent of Addition can be same or later than the parent application but cannot be before the parent application whereas in Continuation-In-Patent Application the claims must have different priority dates than the parent application. The term for both Patent of Addition and Continuation-In-Patent Application ends with the term of parent application i.e. it is for 20 years from the date of filing of parent patent.

Patent of Addition is a cost effective intellectual property tool to secure basic improvements and amendments in the existing Patent, unlike that in US. Patent of Addition can be a very useful platform to protect processes and addition to the product patents already claimed. Further, it can be very useful tool in protecting modifications wherein the Law questions novelty and inventive step in a patent.

Article by Kritika Kaur

Article was 1st published on Lexology.