Patent of Addition-A strategy for incremental innovation

A patent is granted to a patentable subject matter if it satisfies the three prerequisites of novelty, utility and inventive step. Researchers in pursuit of excellence and perfection continuously endeavour to improvise their products by modifying their products and intend to seek proprietary rights over such improvised product through patents. However, some improvised products may be incremental innovations which are built upon existing knowledge and resources and involve minor technological changes, thereby enhancing the competence of existing products or processes. The problem with filing patents for such incremental innovations is that they would most likely be rejected because of their lack of inventive step.

The Patents Act, 1970 provides a cost-effective provision wherein in spite of the claimed invention being obvious and lacking in inventive step over the main invention, it can still proceed to grant provided the basic patent is granted in India. This cost-effective provision is termed as “Patent Of Addition” in India. These provisions are also available in other jurisdictions such as Australia, Newzeland, South Africa, USA, Greece. In the USA this provision is termed as “Continuation-In-Patent” (CIP Applications)

“Patent of addition” is defined in s. 2(1) (q) as a patent granted in accordance with Section 54 of the Patents Act, 1970. Section 15A of the Indian Patents and Designs Act, 1911 which was introduced by the Indian Patents and Designs Act, (Act VII of 1930), carried the same provision as in the U.K. Patents Act of 1907 which however was modified later as a result of the recommendations of the Lord Swan Committee (1948). The Ayyangar Committee in its report titled “Report on the revisions in the patent law” suggested the addition of a clause to enable applications for a patent of addition, in line with Section 26 of the UK Patent Act, 1949.

The Lord Swan Committee (1948) had in its recommendations for the UK Patent Act 1949, stated that the purpose of patent of addition was to provide reliefs to applicant who has failed to draft their claims in a way to adequately cover their invention, by giving them an opportunity to rectify the claims they have made, in cases where the circumstances permit this. On the basis of  the rulings provided in the matter of Georgia Kaolin Co. Ltd.’s application) as also in (Welwyn Electrical Laboratories Ltd.’s application for a patent),the Ayyangar Committee redrafted the said clause thereby implying that the subject of the application for the patent of addition must be in respect of some further disclosure over and above that of the main invention in the complete specification, which further disclosure must be in the nature of an improvement in or modification of the main invention as disclosed or described and not merely as claimed.

Statutory provisions Sections 54-56 of The Patents Act deal with Patent of Addition and sets out the criteria/eligibility for filing Patent of Addition as also other requirements in relation to Patent of Addition. Thus Patent of Addition is a kind of patent provided for in the legislation of some countries, allowing the inventor to obtain, at reduced costs, protection for improvements of an invention for which a patent application was already filed or for which a patent had been granted earlier (main patent). The grant and maximum duration of a patent of addition are dependent on that of the main patent. If the main patent becomes invalid, the patent of addition may continue to be valid by becoming a main patent itself, subject to the payment of the fees foreseen to maintain a “main patent” in force.

Each Patent of Addition is clearly an independent patent in view of Section 54 and 55 of the Indian Patents Act, and therefore is

• rendered a new Application Number,
• requires a separate request for examination to be filed,
• is published as per the provisions set out in the Patents Act, 1970, and
• undergoes separate examination.

According to Sec 54 (1) of the Act, if an applicant feels that he has come across an invention which is an improvement in or modification of an invention for which he has already applied for or has obtained a patent, another application can be made for a patent in respect of such improvement or modification and such an application may be granted by the Controller as a patent of addition.

 Whether Patent Of addition can have different Applicant?

Section 54 (1) clearly states that where an application is made for a patent in respect of any improvement in or modification of an invention described or disclosed in the complete specification filed therefore (in this Act referred to as the “main invention”) and the applicant also applies or has applied for a patent for that invention or is the patentee in respect thereof, the Controller may, if the applicant so requests, grant the patent for the improvement or modification as a patent of addition.

Further in Ravi Kamal Bali vs Kala Tech AndOrs. on 12 February, 2008, the Hon’bleBombay High Court had observed that

34. The terms “improvement” and “modification” involve a reference to an existing state of affairs orarticle. Under the Act, the terms “improvement” and “modification” refer to a comparison of theimproved or modified version of the main invention with the main invention. The validity of thepatent of addition granted to the Plaintiff is not challenged including on the ground that it ought tohave been the subject of an independent patent and not a patent of addition. In other words, thestatus of the invention as an improvement in or modification of the Plaintiff’s main invention wasnot challenged. Sections 54 and 55 in terms establish the link between the main invention and the patent of addition. It posits that the patentee of the main invention and the patentee of the patent ofaddition, are the same. Section 54 permits the grant of a patent of addition only if the applicantthereof applies or has applied for a patent of the main invention in respect whereof the notificationor improvement is claimed. It is obvious therefore that only the patentee of the main invention isentitled to improve or modify the main invention for otherwise it would permit anybody to benefitfrom it by exploiting the main invention. A stranger to the main invention cannot apply for a patentof addition in respect of any modification or improvement of the main intention.

Thus it is amply clear that only the patentee/patent application of the main invention is entitled to apply for patent of addition in respect of any modification or improvement of the main invention.

 Priority date of Patent Of Addition Application

The Patents Act, 1970 does not specify any special rules governing the priority date of patent of Addition and hence in accordance with Section 11 of the Act and taking into consideration the essential requirement that invention claimed in patent of addition should be novel over the main invention, it is imperative that the date of filing of the patent of addition will be considered as the priority date, subject to other provisions of the act.

 How and when to determine suitability of Patent Of Addition

In P. & S.’s Appln. (1952) 69 RPC 249, it was held that the complete specification of the parent case, in whatsoever form it may take after acceptance, is citable against any claim in the complete specification accompanying an application for a patent of addition. Further, if part of the matter contained in the complete specification of the parent case as accepted is excised as the result of opposition proceedings, Sec. 26 (7) has no application to such matter since it forms no part of the invention claimed by the parent patent.In P. & S.’s Appln. (1952) 69 RPC 249,  it was further observed:

(A) that the suitability of an application to proceed as a patent of addition to a main patent should be determined at the time when the specification of the patent of addition is otherwise in order for acceptance.

(B) that the claims of a patent of addition must be for novel matter not disclosed in the specification of the parent patent, though the novelty of such matter need not involve any inventive step.

In Patent Law by P. Narayanan 4th edition, it has been stated that the suitability of an application to proceed as a patent of addition to the main patent can only be determined at the time when the specification of the patent of addition is otherwise in order for acceptance. Any decision in this matter earlier must be regarded as a provisional one to be reviewed subsequently at the time specified. If before that time the invention claimed in the parent specification is restricted for any reason, the invention of the patent of addition should be an improvement in or modification of the restricted invention of the main specification and consideration should not be given to any matter which is no longer a part of that invention.

 What constitutes an improvement or modification in respect of Patent Of Addition applications

The meaning or the words ‘modification’ and ‘improvement as quoted in Patent Law by P. Narayanan 4^th edition with reference to Lloyd-Jacob, J. observations is

“A modification is an alteration which does not involve a radical transformation and an improvement is as variation, whether by addition, omission or alteration to secure a better performance, whilst retaining some characteristic part”

In Linotype & Machinery Ltd. V Hopkins (1908)25 RPC 665, it was held:

Held, that an improvement of a patented machine includes any machine which, while retaining some of those essential or characteristic parts of the machine which are the subject of the monopoly claims,  yet by addition, omission, or alteration better achieves the same or better results, whether such improvement infringes the monopoly claims for the patented machine or not.

Further in Linotype & Machinery Ltd. V Hopkins (1910)27 RPC 109Lord Loreburn had observed: I think that any part does constitute an improvement, if it can be adapted to this machine and it would make it cheaper and more effective or in ‘any way easier or more useful or valuable, or in any other way’ make it a preferable article in commerce.

Thus improvement or modification in respect of Patent Of Addition Application can be admitted only when by addition to or omission of or alteration made in some part of the main invention helps to achieve more quickly or more cheaply, or in some better way, the same result as, or achieves a better result than is achieved by the patented invention in the purpose for which it was contrived. Thus the proper comparison is not between the sum of the characteristics in the respective main invention and proposed patent of addition, but between the novel contributions which each specification has made to the art.

When can patent of addition be filed?

In accordance with Section 54(3) of the Patents Act, 1970, a patent shall not be granted as a patent of addition unless the date of filing of the application was the same or later than the date of filing of the application in respect of the main invention. Thus a patent of addition can be filed at any time after the filing of the patent application for the main invention or even after the grant of the main application.

 Can a granted patent be converted to Patent Of Addition?

In accordance with Section 54 (2) of the Patents Act, 1970, where a patentee has two independent patents of which one can be termed as an improvement or modification of the other, then the Controller may, if the patentee so requests, by order, revoke the patent for the improvement or modification and grant to the patentee a patent of addition in respect thereof, bearing the same date as the date of the patent so revoked. But the filing date of the application of the respective patents should satisfy the condition laid down in Sec 54 (3).

 Grant of Patent Of Addition

In accordance with Section 54 (4) of the Patents Act, 1970, a patent of addition shall not be granted before granting of the patent for the main invention. Also in accordance with Section 54(3) of the Patents Act, 1970, a patent shall not be granted as a patent of addition unless the date of filing of the application was the same or later than the date of filing of the application in respect of the main invention. Thus in order to qualify or grant of Patent Of addition, the essential requirements are:

• the Invention must relate to an improvement in or modification of the main invention.
• The improvement or modification must be of the invention as described or disclosed in the competition for specification in respect of the main invention;
• The specification must make it clear that the invention comes within the scope of improvement of modification of the main invention;
• It should not cover an improvement in an invention not comprised n the main invention.
• Thus improvement or modification in respect of Patent Of Addition can be admitted only when it helps to achieve more quickly or more cheaply, or in some better way, the same result as, or achieves a better result than is achieved by the patented invention in the purpose for which it was contrived.

Term of Patent Of Addition

Section 55 (1) of the Act states that a patent of addition shall be granted for a term equal to that of the patent for the main invention, or so much thereof as has not expired, and shall remain in force during that term or until the previous cesser of the patent for the main invention and no longer:

Effect of revocation of main patent.

Section 55 (1) proviso states that if the patent for the main invention is revoked under this Act, the court, or, as the case may be, the Controller, on request made to him by the patentee in the prescribed manner, may order that the patent of addition shall become an independent patent for the remainder of the term for the patent for the main invention and thereupon the patent shall continue in force as an independent patent accordingly.

 Renewal fee for Patent Of Addition

Section 55 (2) of the Act states that no renewal fees shall be payable in respect of a patent of addition, but, if any such patent becomes an independent patent under sub-section (1), the same fees shall thereafter be payable, upon the same dates, as if the patent had been originally granted as an independent patent.

 Validity of patent of addition

Section 56 (1) of the patent Act states that the grant of a patent of addition shall not be refused, and a patent granted as a patent of addition shall not be revoked or invalidated, on the ground only that the invention claimed in the complete specification does not involve any inventive step having regard to any publication or use of the

(a) the main invention described in the complete specification relating thereto; or

(b) any improvement in or modification of the main invention described in the complete specification of a patent of addition to the patent for the main invention or of an application for such a patent of addition.

Thus Section 56 (1) clearly sets out that the patent of addition cannot be invalidated or revoked on the ground only that the invention claimed in the complete specification of the patent of addition does not involve any inventive step in view of any publication or use of the main application.

Section 56 (1)(b) further states that the validity of a patent of addition shall not be questioned on the ground that the invention ought to have been the subject of an independent patent.

Further Section 56 (2) clarifies that the disclosure provided in the patent/application of the main invention shall be considered in determining the novelty of Patent of addition application. Thus there appears to be no objection under Sec. 56 to a citation under Sec 13 of prior publication which is outside the scope of Section 56.

Thus the Patent of Addition application can be invalidated if the Patent Application suffers from lack of novelty over the parent application as also under the ground of prior claiming in certain cases and also if the claimed falls within the scope of any of the non-patentable provisions provided under Section 3 of the Patents Act, 1970.

Specification Requirements in respect of Patent of Addition

According to Rule 13(3) of the Patents Rule, a patent of addition under section 54 should include in its specification a specific reference to the number of the main patent or the application for the main patent as the case may be and a definite statement that the invention comprises an improvement in, or a modification of, the invention claimed in the specification of the main patent granted/applied for.

Whether Patent of Addition to a patent of Addition is allowed?

In HSJ’s Appln. (1914)31 RPC 47, it was held that: “Applications for Patents by way of addition must be strictly construed as being additions to the particular invention for which a particular Patent is already held, and not additions to a series of inventions for which separate Patents already exist.” Patent Law by P. Narayanan 4^th edition also advocates that since patent of addition can be held only in relation to a main invention, it is not possible to have a patent of addition to patent of addition. Also the Patent of Addition must be strictly construed as being additions to the particular invention for which a particular Patent is already held, and not additions to a series of inventions for which separate Patents already exist

Whether Patent of Addition application can be filed for PCT application and vice-versa?

Sec. 54 of the Act only refers to an application being made for a modification/improvement. As per Sec 7 (1A) of the Act, an international application filed under the Patent Co-Operation Treaty shall be deemed to be an application filed in India, if a corresponding application has been filed in India. Under Sec 138 (4)m an international application filed under the Patent Co-operation treaty designating India shall have effect of filing an application for patent under sec. 7, sec 54  and Sec,. 135—and shall be taken as complete specification for the purposes of this act. Thus if the Applicant has modified the existing invention in an incremental manner so as to possess novelty over the main invention, then the said applicant can file/seek conversion of further application to Patent of Addition over the main patent/application claiming the said invention.

Article 2 of the PCT defines application as follows: “application” means an application for the protection of an invention; references to an “application” shall be construed as references to 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. Since definition provided under Article 2 also covers patent of addition, it is possible to file PCT application from patent of addition application in India. But it needs to be noted that provisions relating to “Patent Of Addition” are not available in all jurisdictions. So in such countries the Patent of Addition application may be held obvious/lacking in inventive step over the parent application.

 Patent of Addition in other jurisdictions

Most of the countries have abolished granting patent of addition for improvements or modifications over the main invention. Some countries which still have the said provisions are US, Australia, New Zealand, Greece, South Africa, Germany, Brazil, Pakistan, Bangladesh, Spain, Israel.

It is to be noted that though the concept of US Continuation in Part application also known as “Non-statutory obviousness-type double patenting” is similar to the Indianpatent of addition concept in the sense that in both cases, the patent shall expire twenty years from the filing date of the earliest application from which benefit is claimed, few differences exists such as:

• A CIP can be filed only when the main application is pending and not after it is granted whereas Patent of Addition can be filed at any time during the term of the parent patent
• In case of a CIP application, separate annuity needs to be paid whereas no renewal fees needs to be paid for Patent Of Addition. Only when the parent patent is revoked, the Patent of addition is converted into a separate and independent patent and renewal fees needs to be paid.
• In CIP Applications, claims may have varying priority dates based on the priority date of the first application in which the subject matter of the main invention was disclosed.

Advantages of Patent of Addition

• No renewal fees has to be paid for granted patent as long as that patent exists as Patent of Addition to the main invention.
• Modification or improvement in the invention cannot be invalidated based on the ground that the invention lacks an inventive step.
• Patent applications from the same applicant/patentee and which relate to a similar subject matter, and for which only inventive step objection is raised wrt the parent application, then such objections can be overcome by amending the second patent to Patent of Addition. Thus patent of addition provides a useful avenue through which such improvements/modifications may still be protected.

Disadvantages of Patent of Addition

• The term of patent of addition cannot exceed that of the main patent and hence the term for which the patent of the addition will remain in force is reduced.
• If the application for patent of Addition perse satisfies all the patentability criteria, then converting it into a patent of the addition will lead to early expiry thereby amounting to a reduction in the number of years of protection monopoly available for that patent.
• If the parent patent relating to the main invention is revoked on the ground of obviousness/lack of inventive step over some prior art, then the Patent of Addition can also be revoked on the basis of that prior art;
• Filing/converting patent of Addition to the main patent invariably provides the opportunity to cite the parent patent for lack of novelty/anticipation purposes.
• If patent of addition is filed in such jurisdictions where patent of additional provisions is not available, then objections pertaining to obviousness/lack of inventive step over the parent application may arise.
• Though the patent term for patent of addition is 20 years from the date of filing of the parent application, it may not be able to claim benefit from the earlier filed patent application, and hence 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.

It is to be noted that except for the Annual Report published in 2007-08, none of the Annual Report provides any reference to the total number of Patent of Additions filed in India. Even the Annual Report published in 2007-08 also states that out of the 35,218 applications filed in that period only 11 applications were filed as Patent of Addition. The absence of any further reference to Patent of Addition applications in the annual reports published in the last few years imply that the Paten of Addition is not popular modes for protection of incremental innovations/improvements in India.

Conclusion

A patent of addition is of benefit to the applicant in order to avoid invalidity due to lack of inventive step over a publication or use of the main invention and thus is a useful tool for protecting products or processes and their incremental improvements/variations in India. It is advisable to file a Patent of addition only in those cases where the improvement over the main application does not qualify for an independent patent. However, the subject matter in the Patent of Addition must disclose over and above the main application or parent patent application and not merely claim over the same specification as of parent application. Alternately, if the improvement over the main application is patently distinct enough to qualify for an independent patent, then the patentee may consider filing a new and separate application for that invention, which will at least ensure the usual term of 20 years. Further if required such independent patent can be converted into Patent Of Addition during the prosecution stage of the second independent patent.

Vilas Shetty

A practising patent attorney for over 10 years, Mr. Shetty’s responsibilities include prior art searches, patent searches in India, drafting patent specifications, attending hearings, providing patentability and infringement opinions, patent oppositions and other invalidity proceedings particularly those relating to fields of chemistry and pharmaceutics. He also works closely with the litigation team in matters concerning infringement of patents.

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