Inventor 1 exclaims, "Eureka!" Our invention has finally made it to the next level.
Inventor 2: Let's file a patent application for the same.
One year later:
Inventor 1: Our process has become outmoded due to advances in technology. By substituting our instrument in one of the processes, we may increase the product's value by at least fourfold. Inventor 2: But the patent has already been submitted. Is it possible for us to make the change? Is it necessary for us to submit a new application?
This problem has made brilliant inventors all over the world scratch their heads. Patent of addition is the straightforward answer to this question.
What is a Patent of addition?
As the name implies, it is the addition of alterations or revisions to an existing patent or a patent application, which has the same terms and validity as the parent patent. Developments in technology, market changes, and other factors can all contribute to improvement. In such circumstances, additional patents for these improvements can be filed.
What is the background?
The concept was initially based on the British legal system, and the Lord Swan Committee approved it.
"The objective of a patent of addition was to provide reliefs to applicants who had failed to draught their claims in a way to adequately cover their invention, by allowing them to rectify the claims they had made, in cases where the circumstances permitted it," according to the Lord Swan Committee.
In a report titled "Report on the amendments in the patent law," Justice N.Rajagopala Ayyanger Committee (Ayyangar Committee) copied Section 26 of the UK Patent Act.
The subject matter of the patent of addition should be some additional or modified disclosure over the original patent application, not just the claimed innovation, according to the Justice Ayyanger Committee.
Which provision of Indian Patent Act 1970 is related to Patent of Addition?
Section 54, 55, and 56 of the Indian Patent Act, 1970 relate to the patent of addition. Under Section 54, a patent application can be filed for any improvement or modification to an invention disclosed in the specification. If the applicant asks for it, a patent for improvement or change will be granted as an additional patent. According to Section 54, the term of a patent of addition is for the same period as the patent for the original invention. Suppose the patent for the primary invention is cancelled under this Act in that case, the patentee may direct that the patent for addition be treated as a separate patent for the remainder of the prior invention's term. In the case of a patent of addition, there are no renewal costs to pay.
Under Section 56, the validity of an additional patent of addition, the award of a patent of addition should not be refused, nor shall a patent granted as a patent of addition be revoked or cancelled, solely on the basis that the invention claimed in the specification does not entail any inventive step concerning any publication.
Is a patent of addition considered as an independent application?
Under sections 54 and 55 of the Indian Patent Act, 1970 a patent of addition is considered as an independent patent application and hence,
1. A new application number is provided
2. A separate request of examination to be filed
3. It is published after 18 months
4. It is eligible for separate examination
What are the prerequisite and fees associated with the patent of addition?
1. The application type for patent of addition is the same as the parent application type.
2. The complete specification is needed while applying.
3. Form 1,2,3,5 and 18 are clubbed together.
4. The fee associated with filing the application is the same as a normal application.
Is patent of addition subject matter for PCT application?
The PCT Article 2 defines "application" as an application for the protection of an invention; references to "application" include applications for patents for inventions, inventors' certificates, utility certificates, utility models, patents or certificates of addition, inventors' certificates of addition, and utility certificates of addition.
This definition also applies to a patent of addition.
How is a patent of addition treated in other countries?
Several countries have abolished the concept of patent of addition but India, Australia, and the USA continue with the practice. It is known as "Continuation-in- Application (CIP)" or "add-on" in the United States of America. Patents of addition can be filed before the expiration of the patent term, whereas CIPs can be filed at any time before the issuance of the patent. In India, unlike the CIP application, there is no renewal charge for filing patents of addition.
Can a new inventor be added in a patent of addition?
Yes, a new inventor can be added in a patent of addition. As per the provision of Section 28 of the Patent Act, 1970, an inventor can be added to an application for a patent. Since an application for patent of addition includes novelty in relation & the parent application, any person contributing to the novelty can be added as an inventor in the application.
The request for the addition of an inventor needs to be submitted to the Controller by the Applicant of the parent application, or jointly by the Applicant and the inventor, solely by the person who needs to be added as the inventor. In the last scenario, an opportunity for hearing may also be provided by the Controller should there be any conflict between the applicant and the other inventors.
What happens to the application of patent of addition if the parent application is withdrawn?
According to Section 55 (1) of the Patent Act 1970, if due to any reason patent of the main invention is revoked, the Controller on request by the patentee can order the patent of addition to becoming independent patent for the remaining terms of the main invention.
Can an application for patent of addition be filed as a PCT application without filing the parent application in PCT?
Yes, an application for patent of addition can be filed as a PCT application without filing the parent application.
Can more than one patent of addition be filed for the same parent application?
Yes, multiple patent of addition applications can be filed for the same parent application. There is no restriction on filing numerous applications for patents of addition for the same parent application.
Should one apply for a patent of addition or not?
The question to apply or not to apply for a patent of addition is quite subjective. A patent of addition allows additional subject matter to be added to an existing parent application disclosure while keeping the priority date for claims based on the original disclosure.An applicant can keep a patent family alive, make incremental changes, and add embodiments using a patent of addition. The applicant does not have to pay the renewal fee for the patent of addition.
As the saying goes, every path has its puddle. A drawback with the patent of addition is its reduced term. The term of patent of addition is limited to its parent patent's term which results in loss of significant revenue from product or method which is supported by the new disclosure of the patent of addition. Further, it could be argued that the additional matter introduced in a patent of addition is genuinely required to create and use the invention, and so is crucial for the parent application enablement. As a result, the inclusion of new subject matter in the patent of addition may allow a patent challenger to argue that the parent application claims are invalid due to non-enablement.
Conclusion
It can be stated that a Patent of Addition is a cost-effective intellectual property instrument for inventors trying to keep up with the fast-paced world. They can make modest changes to the existing parent application without going through the time-consuming procedure of filing a new patent application. It's a powerful tool for safeguarding improvements and revisions to an existing patent application.
