In the process of research and development, improvements and/or modifications of an invention are routine steps to make the invention more useful or to overcome difficulties of the main invention.   A new independent patent application for the improvements and/or modifications of the main invention may not be possible due to the already filed patent application for the main invention. In such a scenario, the improvements and/or modifications of the main invention may be protected by a patent of addition in India.

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Provisions Governing Patent of Addition in Indian Patent Act, 1970

Sections 54-56 of The Indian Patent Act, 1970, deal with a patent of addition. The patent of addition is considered to be a patent application filed in respect of improvement or modification of the invention described or disclosed in the complete specification of the main invention for which the patent application has already been filed or the patent has been obtained.

Timeline for Filing a Patent of Addition

As per section 54(3), the date of filing of the patent of addition should either be on the same date or a date later than the date of filing of the application in respect of the main invention.  Consequently, the patent of addition can be filed until the expiry of the main patent. In other words, the patent of addition can be filed even after the grant of the main patent application.

The requirement for Filing a Patent of Addition

There are few criteria that have to be fulfilled to file a patent of addition application with the Indian Patent office.

1. The applicant/patentee of the patent of addition should be the same as the main patent application. The inventors of the patent of addition may differ from the inventors of the main patent application provided the inventors assign the invention to the applicant/patentee.

2. The patent of addition can only be filed to the active main patent application/patent.

3. The filing date of a patent of addition should be the same or after the filing date of the main patent application.

4. As per Rule 13(3) of the Indian Patent Rules 2003, the specification of the patent of addition application should have reference to the main patent application and a definite statement on improvements or modifications of the invention.

Salient Features of Patent of Addition

      The followings are the key features of the patent of addition patent application.

1. The priority date of the patent of addition is the same as the priority date of the main patent application.

2. The patent of addition shall be considered as a separate patent application as per the Indian patent Act and therefore,

• accorded a new patent application number that is different from the main patent application,
• separate request for examination has to be filed within the 48 months of priority date,
• published after the 18 months and
• proceeds with a separate examination process.

3. No renewal fee has to be paid for the patent of addition. However, if the patent of addition becomes an independent patent then the renewal fee has to be paid.

4. The patent of addition will not be granted before the grant of the main patent application.

Term of Patent of Addition

The term of a patent of addition would run concurrently with the main patent as stated in section 55 of the Indian Patent Act 1970. However, if the main patent ceases to exist and the patent of addition becomes an independent patent then the patent of addition shall continue in force for the remaining term of the patent for the main invention.

Conclusion

Therefore, the patent of addition is very useful to the applicant to protect the modifications or improvements of their own invention for which the patent application has already been filed or the patent has been obtained. In addition, the patent of addition offers a strategy to the applicant to build their patent portfolio by filing additional patent applications for their invention.

About the author: Mr. Dhakshina Moorthy, a legal practitioner at Global Patent Filing. In case of any queries please contact/write back to us at support@globalpatentfiling.com.