Key terms of Patent Act Term #5: Patent of Addition

1. Term #5
Patent of Addition
u/s 54-56 of
Indian Patents Act 1970
Key Terms of Indian Patents Act
Ms Bindu Sharma, Founder & CEOSpeaker

2. Patent Of Addition
• After the patent for an invention has been filed or
granted, sometimes inventor feels that he has
another invention to be patented, which is
modification of the first invention (in this Act the
first invention is referred as the "main invention").
• In such a case inventor can file patent of addition
for the second invention, instead of filling separate
application, such application based on the second
invention is called as “Patent of Addition”.

3. Patent of Addition
• No separate renewal fees
• When main patent gets
expired, patent of addition
automatically gets expired.
• The Controller can convert
patent of addition into
independent patent on request
of the applicant.

4. Patent of Addition
• An invention relates to a novel process of
making automobile paint.
• Inventor files patent application for the
invention and patent gets granted.
• After further research inventor finds a better
process for making automobile paint which is
modification of the main invention but is not
a subject matter of a separate patent.
• In such a case he can file patent of addition
and such patent is part of main invention.

5. Patent of Addition
• Date of filing Patent 1 by applicant: 29th
January 2006
• Date of filing Patent 2 by applicant: 4th March
2007
• Since both the patents have been filed by the
same applicant, the applicant can request the
Controller to revoke the Patent 2 and make it
Patent of addition with Patent 1.
• The Patent 1 becomes main patent and
Patent 2 becomes patent of addition.

6. Patent of Addition
A patent of addition shall not
be granted before grant of the
patent for the main invention

7. 29th January 2006Date of filing main application
15th November 2009Date of filing patent of addition
29th January 2026
Date of expiry for both main
application and patent of addition
Illustration

8. If the patent for the main invention is revoked,
the court or the Controller 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.
• The patent shall continue to be in force as
an independent patent accordingly.
• The same fees shall thereafter be payable
upon the same dates, as if the patent had
been originally granted as an independent
patent.

9. Validity of patents of
addition - S. 56
• The grant of a patent of addition shall
not be refused due to lack of an inventive
step.
• The complete specification of application
for the patent of addition shall include
specific reference to the number of main
patent or the application number of main
patent.

10. Question
What is the fee to be paid to file
Patent of Addition?

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