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Patent of Addition: A useful approach for modification/improvement to patent

Those who are aware of Indian Patent Provision might have knowledge that an application for a new form of a known substance, mere admixture, their re-arrangement or slight modification to the existing technology does not qualify to be called a PATENT. Be it a legislation of any country, the invention will be entitled as patent only when it meets the patentability criteria such as novelty, inventive step & Industrial applicability. But what if the patentee or an applicant emerges with the modification or improvement of the patent which he has already applied for? What if there was modification or improvement available at the time of filing the main invention but left out to be covered under the scope of the complete specification of the main invention? Well, The Indian Patent Act (IPA), 1970 under section 54, 55 and 56 allows such modifications or improvements under the title “Patent of Addition”. So according to the first clause of section 54 of IPA, 1970, an application filed in respect of any improvement or modification of an invention disclosed in the complete specification filed in respect of main invention, where the applicant also applies or has applied for a patent for that invention or is the patentee in respect thereof, and the controller upon request of the applicant grants the patent for the improvement or modification as a patent of addition. As per this clause, the first and foremost condition is an applicant applying for Patent of Addition should be same as the one who owns the patent of main invention in respect of which the modification or improvements are going to be filed.  The patent of addition doesn’t get an extra twenty years of tenure. Its term in accordance with section 55(1) is equivalent to that of the patent for the main invention and will remain in force until the patent for the main invention is alive. The beneficial aspect of filing the patent of addition is there are no renewal fees to be paid as long as it is going alongside the patent of main invention. The limiting parameters for filing the patent of addition are as follows:
  1. The patent can be granted as a patent of addition only when the date of filing of the application is the same as or later than the date of filing of the application in respect of the main invention. Meaning the application for patent of addition can be filed any time after filing the application for main invention and for that, the application for main invention should be there in force.
  2. The patent of addition can only be granted after the patent for main invention gets its grant. Meaning the patent of addition can be filed even after the grant of patent for the main invention.
Revocation of parent patent and conversion of the patent of addition into an independent patent According to the second clause of section 54 of IPA, an invention being an improvement or modification of another invention is the subject of an independent patent and the patentee for improved/modified patent is same as the patent for the main invention, the controller upon the request by the patentee, may revoke the patent for the improvement or modification and grant to the patentee a patent of addition in respect thereof which bears the same date as of the revoked patent. In this case, where the patent for the main invention is revoked, the remaining term of the same will be carried away by patent of addition by turning it into an Independent patent, thereupon the patent will continue to be in force as an independent patent. As far as the renewal fees for such independent patents are concerned, the same fees, which would have been paid for the patent of the main invention, will be payable during the same timeframe, as if the patent had been originally granted as an independent patent.  There are certain exemptions to make the patent of addition stand valid:
  1. The invention claimed in the complete specification of the patent of addition cannot be refused for its grant and the granted patent for the patent of addition cannot be revoked or invalidated on the grounds of lacking the inventive step in view of a) the main invention described in the complete specification or b) any improvement or modification of the main invention or of an application for such a patent of addition, described in the complete specification of a patent of addition in respect of patent for the main invention.
  2. The validity of a patent of addition shall not be questioned based on the fact of it being the subject of an independent patent.
The two exemptions aforementioned eventually lead to the fact that so as to qualify as a patent of addition, the claim of new application shall be novel yet obvious against the main invention. If the claims of an application are both novel and non-obvious, then the application is eligible to be called as “Fresh Patent”. In order to avoid this scepticism, section 13(3) of Indian Patent Rules, 2003, directs to mention the reference to the patent/application number of the main patent and to state that the improvement or modification is of an invention covered in the complete specification of the main patent granted or applied for. Not only India, but other countries such as Australia and US have also availed the benefit of a patent of addition by including it in their respective patent norms. In Australia, the provisions for patent of addition overlap with those covered in the Indian Patent Act. But in United States, the terminology is “Continuation-In-Part” (CIP). Previously, section 26 of UK patent act, 1949 was dedicated for the patent of addition, which the Indian patent provision is in line with. However, it is now restricted in its amended version UK patent act, 1977.  In spite of serving the same purpose of supplementing the disclosure of parent application through enhanced developments, Patent of Addition and Continuation-In-Part have some substantial differences between them:
Merits Patent of Addition (India) Continuation-In-Part (USA)
Time of filing Any time during the term of patent. Only when the patent application of man invention is pending.
Priority It claims the priority of the earlier-filed application. The claims themselves may have varying priority dates.
Renewal No renewal fees as long as the fees for the renewal of the main patent is being paid. Separate renewal fees to be paid.
How to determine modification or improvement? A patent of addition cannot claim the invention which is already implicated in the parent application. The determination of modification or improvement can be made using the following generalized way as provided in Australian Patent Manual: Assuming that the main invention comprises the features A+B+C and feature C represents the novel contribution and an application for a patent of addition if filed in respect of A+B+C+D, it will retain all of the features of the main invention and the additional feature D makes this an improvement in the main invention.  Considering that an application for a patent of addition comprises A+B+D and the novel contribution is represented by feature D, it will lead to different results.  Removing the novel feature C from the main invention will make it a new invention, rather than merely a modification of the main invention.  The invention A+B+D is more than an improvement or modification of the main invention if D is a radical transformation and therefore, will not match the suitability criteria of a subject matter for a patent of addition.   Now in other cases, the claims are directed to features A+B+C* in the application for a patent of addition in which feature C* represents the novel contribution. Here C* is only a minor transformation or variation of feature C of the main invention, that makes the invention A+B+C* is an improvement or modification of the main invention.