A patent is an exclusive right granted for an invention, which is a new product or a process that involves an inventive step and is capable of industrial application. Therefore, to obtain a patent, the subject matter of an invention must satisfy the patentability criteria which states that the subject matter must be novel, must involve an inventive step (technical advancement or contribution), and must be capable of industrial application.
Many times, the applicants and patentees may arrive at improvements or modifications to overcome drawbacks of an invention either filed or granted (referred to as main invention). Further, as a result of feedback from the market, improvements or modifications may ordinarily take place. Also, it may be an ordinary process for the inventor or applicant to make certain changes or amendments to come up with different modifications along with time, as per the nature of the invention.
However, these improvements or modifications to the main invention may not necessarily include any technical contribution in view of the disclosure made in the main invention. But the modifications or improvements may include only novel features/ elements with respect to the main invention. Therefore, these improvements or modifications fail to qualify the patentability criteria for the grant of an independent patent.
In such scenarios, the Patent of Addition plays a crucial role in order to safeguard and protect all that is added later and does not exist in the original patent. Sections 54, 55 and 56 of the Indian Patents Act specifically deal with Patent of Addition.
Patent of Addition is an application made for a patent undergoing improvement or modification of the invention described or disclosed in the main invention for which the patentee has already applied for or has obtained a patent. The applicant or patentee must be the same for the main invention and the improvement/ modification and according to the provision it says that if the improvement/ modification involve an additional applicant, a patent of addition may not be pursued.
Patent of Addition enables the applicants and patentees to apply for an improvement or modifications made on the invention disclosed in the complete specification. The improvement must be more than a mere workshop improvement. The Patent of Addition protects the novel, industrial applicability and non-inventive improvements or modifications to an already filed or granted patent application.
Section 54 of the Act refers to an application being made for a modification/ improvement and does not limit itself to any specific type of application. Section 7(1A) of the Act states that an international application filed under the Patent Co-operation Treaty (PCT) shall be deemed to be an application filed in India, if a corresponding application has been filed in India. Under Section 138(4) of the Act, an international application filed under the PCT designating India “shall have the effect of filing an application for a patent under Section 7 and 54. From the aforementioned, it is clear that a patent of addition can be filed in the form of a domestic application or an international application which covers patent of addition as well.
Section 55 of the Indian Patens Act states that the term of a patent of addition shall be equal to that of the main application, and shall remain in force as long the main application is in force, and expires along with that of the main application. This limitation in the term is balanced by the fact that no separate renewal fee has to be paid for a patent of addition. In the situation that the main application is revoked, the patent of addition may, upon request by the patentee, become an independent patent for the remainder of the term and shall continue to remain in force as an independent patent. The grant of a patent of addition cannot be refused and it cannot be revoked or invalidated. The validity of a patent of addition cannot be claimed on the ground that the invention is the subject of an independent patent.
Also, the provision of Patent of Addition under the Indian Patent System is more beneficial to the applicant(s) than the Continuation-in-Part (hereinafter "CIP") under the US patent system. More particularly, a CIP is only filed when the main application is pending whereas Patent of Addition can be filed any time during the term of the patent. Moreover, a separate annuity is to be paid for maintenance of a CIP application, whereas there is no maintenance for a Patent of Addition separately. The maintenance of Patent of Addition is required only when the parent patent is revoked and the Patent of Addition stands as a separate and independent patent.
