After the patent for an invention has been filed or granted, sometimes inventor feels that he has another invention to be patented, which is modification of the first invention (in this Act the first invention is referred to as the “main invention”). In such a case inventor can file patent of addition for the second invention instead of filling separate application. Such application based on the second invention is called as “Patent of Addition”.
The advantage of filing patent of addition is that no separate renewal fees are required to be paid for patent of addition. When main patent gets expired, patent of addition automatically gets expired and has no separate and independent existence. However, under certain circumstances, the Controller can convert patent of addition into independent patent on request of the applicant.
Illustration
An invention relates to a novel process of making automobile paint. Inventor files patent application for the invention and patent gets granted. After further research inventor finds a better process for making automobile paint which is modification of the main invention but is not a subject matter of a separate patent. In such a case he can file patent of addition and such patent is part of main invention.
An application made for a patent in respect of any improvement or modification of an invention described or disclosed in the complete specification already applied for or has a patent is called as Patent of Addition.
In order to be patentable an improvement, should be something more than a mere workshop improvement and must independently satisfy the test of invention. The major benefit is the exemption of renewal fee so long as the main patent is renewed. A patent of addition lapses with the cessation of the main patent.
U/S 54 [Patents of addition], when an applicant feels that he has come across an invention which is a slight modification of the invention for which he has already applied for or has obtained patent, the applicant can go for patent of addition, since the invention does not involve a substantial inventive step. However, a patent of addition will not be granted unless the date filing of Application was the same or later than the date of filing of the complete specification in respect of the main invention.
U/S 55 [Term of patents of addition], the patent of addition expires on the same day as the main application irrespective of the date on which patent of addition was filed. Though main patent and patent of addition have same term, under certain circumstances, the patent of addition can be made as independent patent.
Illustration
Date of filing main application: 29th January 2006
Date of filing patent of addition: 15th November 2009
Date of expiry for both main application and patent of addition: 29th January 2026
U/S 56 [Validity of patents of addition], the validity of a patent of addition shall not be questioned on the ground that invention ought to have been the subject of an independent patent and on the ground that the invention claimed in the complete specification does not involve any inventive step having regard to the publication and use of the main invention.
Therefore, patent of addition is an effective and economical way to protect improvements in the main patent.
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