Patent of Addition.

Written by: Gokul Abimanyu. O.R

Topic: Patent of Addition.

Intellectual Property Rights are those statutory rights when given permits the creator or creators or owner or owners of the intellectual property to save the same from being exploited for a given period of time commercially.

Laws governing IPR in India:

            The following are the few laws governing Intellectual Property Rights in India,

  • The Copyright Act 1957,
  • Patent Act 1970,
  • Geographical Indication of Goods (Registration and Protection) Act 1999,
  • Trade Marks Act (1958 original) 1999 and
  • The Design Act 2000.

Patent system:

            A patent is a contract entered between the State and the Inventor or applicant for the patent, whereby the inventor or applicant gains from the state a monopoly for time being in turn for disclosing aggregate details regarding the invention. The patent system prevents the information on new inventions is accessible easily for the general public use to encourage and stimulate the technical and economic development.

Types of Patent Applications:

Ordinary Patent Application: This is a type of patent application without any priority claim and it is varied from national phase and conventional application.

Convention Application: A convention application can be filed for a patent in a convention country. Such applications have to be filed in India within 12 months from the date of basic application.

Divisional Application: A divisional application is an application that has been “divided” from the existing application that has been made earlier. The applicant, can file a further application at any time before the grant of a patent, on a saying that the claims disclosed in the complete specification relates to more than one invention. If a unity of invention objection is issued, in such case the second invention can be protected as a divisional application.

National phase under PCT: The PCT national phase must follow the International phase. The applicant must personally or individually enter into the national phase’. i.e. file a National phase application in each county he/she willing to enter. The International Application loses its effect in the designated or elected States, if the applicant does not enter the national phase within the prescribed time limit,

Patent of addition: Patent of addition can be said  as an application that has been made in order  for a patent concerning any development or change in the invention described or disclosed in the complete specification which has been already applied for or has a patent.

Term of patents of addition:

Section 55 of the Indian Patent Act 1970, reads as follows,

“(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 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”[1].

The Validity of Patents of addition:

Section 56 of the Indian Patent Act 1970, reads as follows,

“(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”[2].

Criterion for filling Patent of addition:

  1. Controller of Patents shall be requested to examine the parent application and only then the Application for Patent of addition would be examined. Parent or main patent application will be accepted when the Application for patent of addition is made.
  2. The applicant for the patent of addition shall be the same as that of the original application or the patentee that has been made earlier. There is no necessity for the same inventor. That is patent of addition cannot be an innovation patent can’t have innovation as that of the parent patent.
  3. If the patent of addition is concerned of a patent application then the status of the parent application should be pending before the Controller.
  4. If the patent of addition is concerned with the patent, the patent should be in force.
  5. Patent in addition would not be accepted or granted if the parent patent is ceased. If one fails to renew the parent patent (Non-payment of annuity), Patent of addition would cease.
  6. Patent in addition terminate with the main invention and would run concurrently.
  7. As per Rule 13(3) of the Patents Rules, each such patent of addition shall include a reference to the main patent or the application for the main patent and also include a definitive statement that the invention is an improvement or modification of the invention claimed in the complete specification of the main application.
  8. Each Patent of Addition is definitely a separate or independent patent in purview of Section 54 and 55 of the Indian Patents Act, and so rendered a new Application Number, requires a separate request for examination to be filed, is published after 18 months, and undergoes separate examination.

 

[1] Section 55, Indian Patent Act, 1970.

[2] Section 56, Indian Patent Act, 1970.

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