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Patent of Addition under Indian Patents Act, 1970

27

MAY

2022

The possibility of improving or modifying an invention remains open once an invention has been developed and a patent has been obtained for that innovation. Depending on the circumstances, the improvements or adjustments may occur as part of the normal process of enhancing an innovation, or as a result of feedback obtained from the market or from the manufacturing industry. In such a scenario, where the invention is already protected by a patent, the improvement or modification made over the original patented product or process may be protected by a "Patent of Addition" in India and this protects the improvement or modification over the original patented product or process and it expires along with the main patent. If the improvement or modification is creative in and of itself, a Patent of Addition can be converted into a normal patent. However, if the main patent is revoked, the patent of addition may be transformed into an independent patent, if requested by the patentee, and the renewal price for the remaining term of the patent must be paid in accordance with the new status of the patent of addition.

Under the Indian Patents Act, 1970, Section 54, 55 and 56 deal with the concept of Patent of Addition, term, and validity respectively.

What constitutes an improvement or modification?

Section 54 of the Act states that Patent of addition is granted to the applicant when an application is submitted for a patent with regard to any “improvement in or modification” of the main invention which the same applicant owns.

In Ravi Kamal Bali v. Kala Tech and Ors., the Bombay High Court held that both "improvement" and "modification" relate to an existing article. Under the Act, improvement and modification essentially mean a comparison of an improved or modified version of the main invention with the main invention.

Therefore, an improvement or modification should necessarily be something more than a simple addition to the Parent Patent. Thus, an improvement or modification to a Patent of Addition Application can only be accepted if it helps accomplish the same result or a better outcome than the patented invention.

Criteria’s to be fulfilled for a patent of addition

Section 56 of the Act clearly states that an application for Patent of Addition cannot be rejected on the basis that it lacks an inventive step with respect to the disclosure in the main Patent or the Application. However, the patent of addition needs to fulfil the criteria of ‘novelty’ with respect to the main application or patent.[1] In Ravi Kamal Bali v. Kala Tech and Ors,[2] the court dismissed the argument that the Patent of addition can only be awarded if it provides any inventive step over the main application.

Though it can be interpreted that there cannot be an objection under S.56 with respect to a citation of prior art since it lies outside the ambit of S.56, there is no clarity provided by the legislation or the Manual of Patent office practice and procedure on whether novelty, industrial applicability and inventiveness of the Patent of addition will be conducted with respect to prior art searches that is usually conducted to grant a Patent in accordance with Section 13 of the Act.

In the matter of an Application for a patent by P. and S.,[3] the superintending examiner observed that the claims made in a patent of addition must be for a novel matter that is not disclosed in the specification of the parent patent, though the novelty of such matter need not involve any inventive step”.

Similarly, the Ayyangar Committee report on the revision of the Patents Law, added a clause to enable application for a patent of addition, along the lines of Section 26 of the UK Patent Act, 1949.

Sub-clause (7) of Clause 31 of the Patents Bill, 1953 was interpreted and the report stated that the requirement of modification or improvement of the invention which was described in the specification of the main invention “need not to be of such a character as to qualify for an independent patent. There need not be any such patentable difference when comparing the invention that is specified in the specification of the main application and the specification mentioned in the patent of addition. The scope of the sub-clause is merely restricted to the obviousness or the subject matter”.

CONCLUSION

Patent of addition is important for protecting products or processes in India, as well as their improvements and modifications. These will be beneficial for covering improvements/modifications that were omitted from the parent patent. In addition, where substantial objections are raised that the modification/ improvement lacks creative step in light of the parent invention, patents of addition provide a helpful means of protecting such changes / modifications.

From the above, it can be interpreted that a patent of addition need not carry characteristics like that of the parent patent and merely checking its novelty with respect of the parent patent suffices. However, providing clarity on the examination procedure of a patent of addition is to be provided by the Patent Office of India to avoid ambiguities in the future.

Author: Liyana Shaji- a student of Symbiosis Law School (Pune), in case of any queries please contact/write back to us via email chhavi@khuranaandkhurana.com or contact us at Khurana & Khurana, Advocates and IP Attorney.


[1] Section 56(2), Patents Act, 1970.

[2] Ravi Kamal Bali v. Kala Tech and Ors., 2008(5) BomCR138.

[3] P. & S.’s Appln. (1952) 69 RPC 249.

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