The UK Patents Act of 1949, based on the recommendations of the Swan Committee deeply influenced the report on the Revision of the Patents law of 1959, by Ayyangar Committee. As a result, the inclusion of patents of addition in the Indian Patent Act, 1970 took place. This inclusion was done in order to provide sufficient opportunities to the patentees, so that they can claim their inventions in a way that would cover variations of the monopoly claimed in respect of their basic invention. This application is made to make any modification or improvement of an invention. To be patentable this should be something that satisfies the test of invention. A patent of addition is only granted after the grant of the patent for the main inventions.
Patent of Addition is covered under Section 54, 55 and 56 of the Patents Act, 1970.The applicant of the patent of addition application must be same, as was in the main patent application. As per the provision, if there is an additional applicant, a patent of addition may not be pursued. According to Rule 13(3) each such patent of addition shall include a reference to the main patent and also include a definitive statement which mentions whether the invention is an improvement or modification of the invention claimed in the complete specification of the main application.
The priority date of a patent of addition will be considered as the date of filing of the application for patent of addition.
While some countries including India, Australia and the U.S. still continue with the practice, several countries have abolished the concept of granting patents for the improvements or modifications over the main invention. The patent shall expire twenty years from the filing date of earliest application from which benefit is claimed.
If the patent for the main invention is revoked under the Act, the patentee can request the controller /the court in the prescribed manner and can have the patent of addition as an independent patent for the remainder of the term and shall continue in force as an independent patent. Same fees shall be thereafter payable, if such patent becomes an independent patent upon the same dates.
Few advantages are as follows:
1. A patent of addition is economically more beneficial. If the parent patent is not revoked and the additional patent is not converted into an independent patent, as requested by the patentee; one does not have to pay a separate renewal fee for the patent(s) of addition, in India.
2. The improvement over the main patent covered by the additional patent cannot be invalidated on grounds of lack of inventive step.
Disadvantages associated with it
1. As a patent of addition expires along with the main patent, the term for which the patent of addition will remain in force is reduced even though the patent of addition gets a new filing date or priority date.
2. An application may not be able to claim benefit from the earlier filed parent application since the patent of addition will be entitled to a new filing date. Any application (other than the parent application) that may have been filed or published before the filing date of the patent of addition may be used to challenge the patentability of the patent of addition.
‘Patent of addition’ is an instrument for the protection of products or processes, and their improvements and variations in India. It solves the purpose by covering improvements / modifications which are missed in the main patent. No renewal fee has to be paid by the patentee. One has to keep in mind the fact that the term of a patent of addition cannot exceed that of the main patent.
To know more how to protect your improved invention, please contact patent team from Intepat.