"patent of addition" A patent is issued for an invention that fits the criteria of novelty, innovative step, and industrial usefulness, according to Indian patent law. Following the creation of an invention, it is common for the invention to be improved or modified. Improvements or alterations may occur naturally as part of the process of enhancing an innovation, or as a result of market or industry input. In such circumstances, where the invention is already covered by a patent, a "patent of addition" in India may be used to protect the improvement or modification over the original patented product or procedure.

Patent of Addition- Meaning and Significance

A patent of addition is a form of patent that is divided into sub-parts. In India, an addition patent is described as a weapon that protects items or methods, as well as their enhancements and variants. It serves a valuable purpose in that it covers a wide range of enhancements or changes that aren't covered in the original patent but have been improved or updated in some way later. In most cases, additions or alterations are made in response to market feedback. In addition, depending on the nature of the invention, it may be a normal practise for the inventor to make revisions, amendments, and various alterations throughout time.In such cases, the patent of addition is essential for safeguarding and protecting everything that is added afterwards and is not covered by the initial invention.

A patent of addition is used to protect innovative, industrially applicable, and non-inventive alterations or enhancements made after a patent application has already been submitted or issued. In compared to existing items, innovations that are based on existing knowledge and new technological advancements are more valuable. A patent of addition can readily be converted into a regular patent if the improvement or change is creative in and of itself. In India, we may say that an addition patent is utilised primarily to protect any improvement or modification made to the initially patented product or procedure.

It's also worth noting that filing for a patent of addition does not require any additional fees, and the improvement or modification that requires a patent of addition must be more than a workshop improvement. All of these benefits are backed up by the fact that a patent of addition cannot last longer than a regular patent.

Legal Framework in India

By way of "Patents of Addition," the Indian Patent Law protects such improvements or alterations. The legislation relating to patents of addition is covered in sections 54, 55, and 56 of the Indian Patents Act, 1970, which are reprinted below.

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.

Cases

According to HSJ's Appln. (1914)31 RPC 47, "Applications for Patents by means of addition must be rigorously regarded as additions to the individual invention for which a particular Patent is already held, and not additions to a series of inventions for which distinct Patents already exist." 

The applicant for a patent of addition must be the same as the applicant/patentee for the primary application/patent, according to Justice Vazifdar in Ravi Kamal Bali vs. Kala Tech and Ors. (2008).  In addition, the Hon'ble Bombay High Court stated: “The terms “improvement” and “modification” involve a reference to an existing state of affairs or article. Under the Act, the terms “improvement” and “modification” refer to a comparison of the improved or modified version of the main invention with the main invention. The validity of Plaintiff's patent of addition is not questioned, even though it should have been the subject of an independent patent rather than a patent of addition. To put it another way, the innovation's position as an improvement or modification of Plaintiff's fundamental invention was not questioned. In words, sections 54 and 55 establish a link between the core invention and the supplemental patent. It is assumed that the patentee of the main invention and the patentee of the supplemental patent are the same person. 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 intention.”

Thus it is amply clear that only the patentee/patent application of the main invention is entitled to apply for patent of addition in respect of any modification or improvement of the main invention.

In Linotype & Machinery Ltd. V Hopkins (1908)25 RPC 665, it was held:

 “An improvement of a patented machine includes any machine which, while retaining some of those essential or characteristic parts of the machine which are the subject of the monopoly claims,  yet by addition, omission, or alteration better achieves the same or better results, whether such improvement infringes the monopoly claims for the patented machine or not.”

Further in Linotype & Machinery Ltd. V Hopkins (1910)27 RPC 109 Lord Loreburn had observed: “I think that any part does constitute an improvement if it can be adapted to this machine and it would make it cheaper and more effective or in ‘any way easier or more useful or valuable, or in any other way’ make it a preferable article in commerce.”

Thus, an improvement or modification in a Patent Of Addition Application can be granted only if it serves to accomplish the same result as, or a better result than, the patented invention in the purpose for which it was devised, by adding to, omitting, or altering any portion of the main invention. As a result, the proper comparison is between the innovative contributions that each specification has made to the art, rather than the sum of the characteristics in the respective main invention and proposed patent of addition.

Position in other countries

While most countries have eliminated the practise of giving patents for enhancements or changes to the principal invention, India, Australia, and the United States continue to do so. Improvements or modifications to an existing patent application may be made while the patent application is still pending for grant in the United States, which is comparable to the Indian patent of addition idea. Claim priority dates in a CIP application may vary depending on the priority date of the initial application in which the subject matter was revealed. Nonetheless, the patent, like a patent of addition, will expire twenty years after the filing date of the earliest application from which benefit is claimed.

Conclusion

In light of the foregoing analysis, it can be shown that the patent of addition benefits the applicant or inventor by allowing him to protect any improvements or modifications he makes to his invention. The patent of addition is particularly valuable for safeguarding products or processes that must be upgraded, enhanced, or modified over time. Only file a Patent of addition if the improvement over the main application does not qualify for a separate patent. The only drawback of an extra patent is that it cannot be longer than the primary patent; nonetheless, the remainder of it is fully advantageous to the patentee's work.

Author: Anuja Saraswat - a student of NMIMS Kirit P. Mehta School of Law (Mumbai), in case of any queries please contact/write back us at support@globalpatentfiling.com or Global Patent Filing.