Patent Filing in India: Patent of Addition

A patent is a set of exclusive rights granted by a sovereign state to an inventor or assignee for a limited period of time in exchange for detailed public disclosure of an invention. An invention is a solution to a specific technological problem for which a patentee obtains protection as a patent.

In a competitive world, technologies and innovations built on existing knowledge are changing rapidly with time. Hence, the patentee needs some ways to protect such improvements and modifications over his/her already protected innovation. Here, the Patents Act, 1970, enables a patentee to apply for an improvement or modifications over his/her already patented invention, by filing a patent of addition.

According to Section 54 of the Patents Act, 1970, if 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 of the main invention (parent application/patent), for which applicant has already applied for or has obtained a patent, an applicant can make an application for patent of addition. The application for patent of addition is filed on the same or after the date of patent filing of an application for the main application and is granted only after granting of the main invention.

Important facts about the patent of addition

• The priority date for the patent of addition is the date on which application for patent of addition is filed
• No separate renewal fee for the patent of addition
• Expire along with the main patent, however, if the main invention revoked for some reason, patent of addition may be converted into independent patent, if patentee so requests.
• If the improvement or modification over the main patent is a subject of an independent patent, the controller may revoke the independent patent and grant the same as a patent of addition, if the patentee so requests.
• Each patent of addition must include a reference to the main application/patent with a statement that the invention comprises an improvement and/or modification over the invention claimed in the complete specification of the main application/patent.
• Application for the patent of addition cannot be challenged on grounds of lack of inventive step with respect to the description/disclosure in the main application/patent; however, the disclosure in main application/patent can be cited for novelty against the application for patent of addition.