Patent of Addition

Introduction

Patent of addition is an application made for a patent in respect of any improvement or

modification of an invention described or disclosed in the complete specification already applied
for or has a patent.

In order to be patentable an improvement, should be something more than a mere workshop

improvement and must independently satisfy the test of invention.

A Patent of addition can be filed at any time either before or after the grant of a main application
for an improvement/modification on the main invention and expires with an expiry of the main
patent.

An innovation which is built upon existing knowledge with the modern technological changes is
higher in competence with the existing products. Patent of Addition can be converted into a
standard patent if the improvement or modification is inventive in its own right. A Patent of
Addition enables the applicant to apply for an improvement or modifications made on the
invention disclosed in the complete specification. The term for a Patent of Addition shall not
exceed the term of a regular patent, and shall not be granted prior to the date of grant of a patent
for the main invention. A Patent of Addition cannot be questioned on the ground that the
invention ought to have been the subject of an independent patent.

In Ayyangar committee report it was suggested that the word “main invention” and 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.1

The inclusion of Patents of Addition in the Indian Patent Act, 1970 was based on the
recommendation of the Ayyangar Committee through the Report on the Revision of the Patents

1
Clause 31, Ayyangar Committee Report on Patents

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Law of 1959, mainly influenced by the U.K. Patents Act of 1949 which was based on the
recommendations of the Swan Committee. The inclusion of the clause “Patents of Addition” was
basically to provide opportunities to patentees to adequately claim their inventions in a way that
would cover variations or amplifications of the monopoly claimed in respect of their basic
invention.

Patent of Addition in Patent Act, 1970

Under Indian Patent Act, Section 54, 55 and 56 deals with the Patents of Addition in India.

Section 54: Patents of Addition:

(1) Subject to the provisions contained in this section, 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.

(2) Subject to the provisions contained in this section, where an invention, being an improvement
in or modification of another invention, is the subject of an independent patent and the patentee
in respect of that patent is also the patentee in respect of the patent for the main invention, 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.

(3) A patent shall not be granted as a patent of addition unless the date of filing of the application
was the same as or later than the date of filing of the application in respect of the main invention.
(4) A patent of addition shall not be granted before the grant of the patent for the main invention.

Section 55: Term of patents of addition

(1) 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: Provided that if the

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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.

(2) 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.

Section 56: Validity of patents of addition

(1) 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—

(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, and 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.

(2) For the removal of doubts it is hereby declared that in determining the novelty of the
invention claimed in the complete specification filed in pursuance of an application for a patent
of addition regard shall be had also to the complete specification in which the main invention is
described.

CRITERIA FOR GRANTING A PATENT OF ADDITION

The scope of the new invention should be associated with at least one claim in the main patent.
‘New’ and ‘capable of industrial application’ have the same meaning as the corresponding
criteria for granting patents.

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The criteria applicable for granting patents (namely new, inventive step, industrially applicable)
also apply to granting Patent of Addition.

Person entitled to file:

As per Section 54 only the patentee of the main invention is entitled to improve or modify the
main invention for otherwise it would permit anybody to benefit from it by exploiting the main
invention. A stranger to the main invention cannot apply for a patent of addition in respect of any
modification or improvement of the main intention.

If at all the patentee of the main invention and the patentee of the patent of addition are
different, the validity of the patent of addition would continue only till the validity of the patent
of the main invention.2

A patentee can file an application separately for a patent of addition in a prescribed manner for
any improvement or modification over an invention for which he has already filed a patent
application or for which a patent has been granted.

Inventive step

In case of Ravi Kamal Bali v. Kala Tech and Others, it was confirmed by court that a patent of
addition can be granted only if the improvement or modification constitutes an inventive step.

Inventive step is defined under Section 2(j) (a) of The Patents Act, 1970 which reads as under:

"Inventive step" means a feature of an invention that involves technical advance as compared to
the existing knowledge or having economic significance or both and that makes the invention not
obvious to a person skilled in the art.”

Hence the improvement must be something more than a mere workshop improvement3.

However According to Section 56 of the Patents Act, the patent of addition cannot be revoked or
invalidated for lack of inventive step in light of the parent application.

2
Ravi Kamal Bali v. Kala Tech and Others,2008(5)BomCR138
3
Biswanath Prasad Radhey Shyam v. Hindusthan Metal Industries, AIR 1982 SC 144

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Novelty

A patent of addition must specify the criteria of novelty in view of the main invention otherwise,
the examiner could cite the main invention as a reason for rejection of the patent of addition for
lack of novelty.

Section 56(2) clarifies that the disclosure in the main application / patent shall be considered in
determining the novelty of the patent of addition.

Term of Patent

As per Section 55 of the Patent Act, a patent of addition is granted for a term equal to that of the
patent of the main invention and that has not expired.4

If the patent for the main invention is revoked under the Act, the patentee on request to the
controller or the court in the prescribed manner 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
accordingly.

Filing Requirements

1. According to Rule 13(3) of the Patents Rules5, a patent of addition includes in its
specification a serial number of the Application for Patent in respect of the original
invention, and a definite statement in the beginning that the invention comprises an
improvement in, or a modification of, the invention claimed in the specification of the
main patent granted/applied for.
2. As per section 54 of the Patent Act, an application for patent of addition would not be
examined unless the Controller of Patents is requested to examine the parent application.
3. If the patent of addition is in respect of a patent application then the parent application
should be pending before the Controller or in respect of a patent, the patent should be in
force.
4
Shire Biochem Inc. and Others Vs. English Pharmaceutical Industries (2006) CLD 1038
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(3) A specification in respect of a patent of addition under section 54 shall contain 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 or applied for.

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 4. The date of filing of the application in respect of the patent of addition has to be the same
or later than the date of filing of the main /parent patent application.
5. The subject matter of invention in patent of addition should not relate to distinct
invention and should constitute a single invention. It must disclose over and above the
main application or parent patent application
6. Each Patent of Addition is clearly an independent patent in view of Section 54 and 55 of
the Indian Patents Act, and therefore
1) rendered a new Application Number,
2) requires a separate request for examination to be filed,
3) is published after 18 months, and
4) Undergoes separate examination.

Grounds for revocation

1. Lack of inventive step

2. Use of the main invention described in the complete specification.
3. Use of the improvement and modification of the main invention described in the
complete specification.

Conclusion

A patent of addition in India is to protect improvements and modifications over an invention. It

serves as a useful purpose in covering improvements / modifications which are missed out in the
main patent. The patentee does not have to pay renewal fee for such patents of addition.

Also the improvement over the main patent covered by the patent of addition cannot be
invalidated by the main patent or patent application on grounds of lack of inventive step. Patents
of addition are positive amendments effected to the complete specification by way of additions to
the description and claims.

However 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.

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Another issue of concern associated with filing the patent of addition is that as the patent of
addition will be entitled to a new filing date and as such an application may not claim benefit
from the earlier filed parent application, 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.