A Patent of addition is a special type of patent allowing the holder to make improvements or modifications to an existing invention without filing a new patent application. It is designed to protect improvements or developments on an original patented invention, providing legal protection to the incremental innovations made by the inventor. The key feature of a Patent of Addition is that it derives its validity from the main patent and typically expires along with the main patent.
The Patents Act of 1970 is primarily based on the recommendations of the Justice N. Rajagopala Ayyangar Committee, as detailed in their report, “Report on the revisions in the patent law.” The Ayyangar Committee proposed the inclusion of a clause allowing for applications for patents of addition, similar to Section 26 of the UK Patent Act of 1949. In the UK, the Lord Swan Committee (1948) recommended provisions in the UK Patent Act 1949 to assist applicants who did not draft their claims comprehensively enough to cover their invention. This provision aimed to offer these applicants a chance to rectify their claims by filing a patent of addition, thus allowing them to address variations of the main application and expand the scope of their invention. The Ayyangar Committee’s recommendations mirrored Section 26 of the UK Patent Act.
The provision for a Patent of Addition offers significant benefits to inventors. It fosters continuous innovation by motivating inventors to enhance their inventions through incremental advancements. It also protects these enhancements, promotes cost and efficiency, and ensures clear legal protection for these improvements, empowering inventors to defend their innovations effectively.
- The Indian law for Patent of Addition.
Under the Patents Act of 1970 (Sections 54 to 56), a Patent of Addition is specifically designed to improve or modify an existing invention. This provision allows inventors to protect their incremental advancements without the need to file a new and separate patent application. The key feature of a Patent of Addition in India is that it does not have an independent term; instead, it expires concurrently with the main patent. This ensures that the improvement is protected only as long as the original invention is protected. A Patent of Addition can also be granted even if the main patent is still pending. It provides flexibility and continuous protection for ongoing innovations, reassuring and supporting inventors in their creative journey. The examination process for a Patent of Addition is the same as that for the main patent, ensuring that the improvement meets all patentability requirements, including novelty, inventive step, and industrial applicability.
Section 54 of the Patents Act of 1970 outlines the provisions for patents of addition, which are granted for improvements or modifications to an existing (primary) invention. If an applicant files for a patent covering an improvement or modification of a main invention and has either already applied for it or holds the patent, the Controller may, upon request, grant a patent for the improvement as a patent of addition. In case, the improvement or modification is already patented independently, and the patentee holds the main invention’s patent, the Controller may, upon request, revoke the independent patent and grant an addition patent with the same filing date as the revoked patent. A patent of addition is only be granted if its application date is the same as or later than the filing date of the main invention’s application, and it cannot be granted before the main invention’s patent is granted.
Further, Section 55 states that patent of addition is granted for the same term as the main patent and remains in force until the main patent expires or is revoked. If the main patent is revoked, the addition patent can become an independent patent for the remainder of the original term. No renewal fee is required for an addition patent unless it becomes independent. Lastly, Section 56 states that the grant of an addition patent cannot be refused or invalidated solely because the improvement lacks an inventive step compared to the main invention. The validity of an addition patent cannot be challenged because it should have been an independent patent. Novelty is assessed by considering both the main invention and the patent of addition.
- Can a Patent Cooperation Treaty (PCT) application be filed for an addition patent?
Section 54 of the Patents Act does not limit the type of application for which a modification or improvement can be sought, allowing flexibility in its application. According to Section 7(1A) of the Patents Act of 1970, an international application filed under the Patent Cooperation Treaty (PCT) is considered filed in India if a corresponding application was filed before the Controller in India. Furthermore, under Section 138(4) of the Patents Act, an international PCT application designating India is treated as if it were filed under Sections 7 and 54. Form-1, the standard application form for patents in India, includes a specific section dedicated to patents of addition, confirming that such applications can be filed domestically or through international routes.
This interpretation is consistent with the PCT itself. Article 2 of the PCT broadly defines “application” as various types of applications for the protection of inventions, encompassing patents of addition, among others. Therefore, if an applicant wishes to designate an international PCT application as a patent of addition or seek other forms of protection in the designated state, this can be indicated during the national phase entry process. However, it’s essential to consider whether the special privileges granted to patents of addition under Indian law are recognised and applied similarly in other jurisdictions where the PCT application is pursued.
- Comparative Analysis in the US, the EU, and Japan
- United States
In the United States, the concept similar to a Patent of Addition is known as a Continuation-in-Part (CIP) application, as defined in United States Code, Title 35, Section 253. A continuation-in-part (CIP) application is a refiling of the same specification as the parent application but includes additional features of the invention. The claims are directed to the additional features. A CIP application allows inventors to add new subject matter to an existing patent application while retaining the priority date of the original application for the shared content. This means that while the new material is examined as if it were a separate application, it benefits from the earlier filing date of the original application for the common content. This can be advantageous in securing earlier protection for the innovation. The term of the CIP patent can differ from that of the original patent, depending on the filing date of the new content, providing additional flexibility in managing patent lifecycles.
- European Union
The European Patent Convention (EPC) does not have a direct equivalent to a Patent of Addition. Instead, it provides for divisional applications. A divisional application allows an applicant to split an existing patent application into two or more applications, each treated as an independent patent. Divisional applications must be filed while the parent application is still pending. They inherit the parent application’s filing date, ensuring that the priority is maintained. The term for a divisional application is 20 years from its filing date, providing a full patent term independently of the parent application. This approach offers inventors flexibility in managing their patent portfolios and protecting different aspects of their inventions separately.
- Japan
In Japan, the concept of a Patent of Addition is provided under Article 44 of the Japanese Patent Act. It is also called “Utility Model Registration” or “Patent of Addition.” This provision allows inventors to patent improvements to an existing invention. Similar to India, the Patent of Addition in Japan does not have an independent term and expires concurrently with the main patent, ensuring that the improvement is protected for the same duration as the original invention. The improvement must meet specific criteria to be eligible, and the examination process is the same as for the main patent. This ensures that the added innovation is patentable and deserves protection.
- The Three Pillars of the Comparative Analysis
Term and Expiry: In India and Japan, the Patent of Addition expires with the main patent, ensuring no extension beyond the original patent’s term. This approach simplifies the management of patent durations but limits the protection period for improvements. In contrast, through CIP applications, the US system allows for a potentially different term based on the filing date of the new content, providing flexibility but adding complexity to patent term management. The EU’s divisional applications have independent terms, providing an entire 20-year protection period from the filing date of the divisional application and offering the longest potential protection for improvements.
Application Process: All jurisdictions require that the Patent of Addition or its equivalent undergoes the same rigorous examination process as the main patent. This ensures that the improvements meet all patentability criteria in India and Japan, even if the main patent is still pending. The US CIP application process allows for new subject matter to be examined independently, ensuring that each part of the application is thoroughly vetted. In the EU, divisional applications must be filed while the parent application is pending, maintaining a continuous chain of priority and ensuring that all aspects of the invention are examined appropriately.
Purpose and Use: All jurisdictions aim to encourage and protect incremental innovations and improvements. The US and EU systems provide more flexibility, with independent terms for CIP and divisional applications, allowing inventors to manage their patent portfolios strategically. This flexibility can be beneficial for complex inventions with multiple improvements. On the other hand, India and Japan offer a more straightforward approach, directly linking the term of the Patent of Addition to the main patent, simplifying the process but limiting the protection period for the improvements. This approach is beneficial for ensuring the improvement’s protection is tied to the original invention’s lifecycle, promoting consistent and predictable patent management.
Conclusion
The concept of a Patent of Addition plays a vital role in the global patent system by encouraging and protecting continuous innovation. Despite the varied implementations across different jurisdictions, the core objective remains consistent: incentivising inventors to improve and refine their inventions by providing legal protection for these incremental advancements. In India and Japan, the Patent of Addition ensures that improvements or modifications are protected as long as the main patent is in force. This approach simplifies the patent lifecycle for inventors by directly linking the improvement’s protection to the primary patent’s term, reducing administrative burdens and costs associated with filing multiple patents for related innovations.
The Continuation-in-Part (CIP) application in the United States offers a flexible mechanism for protecting improvements. By allowing the addition of new subject matter to an existing application and examining it independently, the CIP system allows inventors to extend the protection of their innovations while maintaining the original priority date for shared content. This flexibility can be particularly beneficial in industries where rapid technological advancements necessitate frequent updates and improvements to patented inventions. The European Patent Convention (EPC) adopts a different approach through divisional applications. Divisional applications allow inventors to split an existing patent application into separate patents, offering the advantage of independent terms and an entire 20-year protection period for each divisional.
Understanding these differences is crucial for inventors and businesses seeking to protect their innovations in multiple regions. The choice of jurisdiction and the specific type of patent application can significantly impact the scope and duration of protection for incremental improvements. By navigating the varied legal frameworks effectively, inventors can maximise the protection of their innovations, encourage continuous development, and strategically manage their intellectual property portfolios on a global scale. While the implementation of the Patent of Addition varies across India, the US, the EU, and Japan, each system aims to balance the rights of inventors with the public interest, fostering an environment that supports ongoing innovation, economic growth, and technological advancement.
Authors: Atriyo Bhattachary, School Of Law, Christ (Deemed to be University)
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