What is a Priority Date of a Patent of Addition?

This Article would not discuss as to what is a patent of addition, when does it expire etc., answers to which are clearly mentioned in the Indian Patents Act. Briefly to sum up, 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 (Sections 54, 55 of the Patents Act). Further Section 56 of the Patents Act clarifies that a main application/patent cannot be cited to establish lack of inventive step in the patent of addition but can be cited to establish novelty in the patent of addition.

Coming to a moot point of our discussion that is what the priority date of patent of addition is. Well, this is a question for which we always get answers stating that the original filing date of the main application is a priority date of the patent of addition. Not only our interview candidates, peers, colleagues, but, yes you will read it right, even our respected Indian patent office controllers had told us the same answer!

That is when we protested in order to save one of our client’s rights. The identity of our client as well as the Controller we have spoken to has not been disclosed herein.

So here it goes, our client had filed a patent application (hereinafter referred to as “main application”) on 17th October 2008 and an application for a patent of addition on 22nd June 2010 (containing new matter and new claims) during the pendency of the main application. According to an Indian Patent office website regarding the status of this Application, we were very surprised to learn that the said patent of addition application has been “Deemed to be withdrawn u/s 11B(4)” for non-request of examination.

We had written our grievance letter to the Patent Office on behalf of our client emphasising mainly on the following points as discussed herein below.

Each Patent of Addition is clearly an independent patent in view of Sections 54 and 55 of theIndian Patent Act, and therefore

  • rendered a new Application Number,
  • requires a separate request for examination to be filed,
  • is published after 18 months, and
  • undergoes separate examination.

In view of the same, the deadline for request for examination of a Patent of Addition has to be 48 months from the date of filing of the Patent of Addition, which in the present case should be 22’nd June 2014.

We requested the Patent Office to give a reason for which the application has been “Deemed to be withdrawn u/s 11B(4)” for non-request of examination. We further contended that it is completely logical to say that the priority date of a patent of addition is the date of filing of the application for patent of addition. Else, what would be the deadline for filing a request for examination in case the application for a patent of was filed after 48 months from the main invention? For example, what should be a deadline of filing a request for examination for a patent of addition application where the main application was filed on 01st January 2001 which was granted on 01st January 2005 and the patent of addition application was filed on 01st January 2006? How can a 48-month deadline of filing RFE from priority date of main application be complied in this case?

Further logic can be easily drawn from the right to file a PCT application for a patent of application. Had it been so that a patent of addition has a priority date of the original application, would an applicant for a patent of addition application, in that case, be not entitled to file a PCT application in case the patent of addition application is filed after 12 months from the date of filing of the main application. For example, if a main application was filed on 01st January 2005 and a patent of addition application was filed on 01st January 2007 and if, as the patent office says, a priority date of the patent of addition application is taken as the original filing date of main application, does that mean that an applicant cannot ever file a PCT application for his patent of addition application.

Our discussions with the respected Controllers in this matter made us give a rational that “it is obvious” that a priority date of patent of addition is the main application filing date as both are expiring on the same date. We were also justified that Patent of Addition is rendered as a “further application” in context of the Indian Patent Act, which made us feel the wide gap that non-mention of the actual deadline in the Patent Act actually made. It was only after we had explained to him giving all logical reasons and explanations (as discussed above) as to why the priority of the patent of addition (containing new matter and claims) cannot be the original main application filing date, was when the concerned Controllers got the point and agreed and accepted that our client’s application has been deemed withdrawn incorrectly, the status of which has now been rectified to state “Examination Request Not Filed”!!

We are fortunate that we were not made to contest this matter at the IPAB, which would have been such an unnecessary investment of time and energy, for an issue which is amply clear and logical. This article is merely being written to share a commonly misunderstood concept relating to patent of addition and provide clarity to all our inventors and patent agents of their rights of priority in case of patent of addition.

Happy Patenting!

About the Author: Ms. Meenakshi Khurana, Patent Attorney at Khurana & Khurana and can be reached at: Meenakshi@khuranaandkhurana.com

Follow us on Twitter: @KnKIPLaw .

4 thoughts on “What is a Priority Date of a Patent of Addition?”

  1. Megha Panpalia says:

    very informative article…thanks for clarifying as this would really help in understanding the concept of patent of addition clearly which would surely help me out in upcoming patent agent examination….thanks again!!!

  2. Can anybody let me know the timeline/deadlne for filing a Request for Examination (RFE) for a ”patent of addition”? For example, if the parent application is filed in March 2013 and a subsequent ‘patent of addition’ is filed on March 2014, can I consider that the deadline for filing RFE for ‘patent of addition’ is March 2018 (i.e. 48-month from the filing date?). Please help me with this since thhe Patents Act is silent in this regard.

    1. Vikas your understanding is correct. Priority of a Patent of Addition is the date on which the Patent of Addition application was filed, and therefore the 48 months would start from that filing. Please let us know in case of any clarification.

      Team-IIPRD

  3. Everybody writes about laws relating to patent of addition. These laws are mentioned (tersely) in the IPO. It will be helpfull if we can have an example template of patent of addition atleast as a template. Applicants need to know how does the abstract, background of invention, summary, description and most importantly claims should look like.
    It is difficult to understand how to write claims because we can NOT mention previous patent application number in the claims. how one can mention improvement or additional feature.

Leave a Reply

Categories

Archives

  • March 2024
  • February 2024
  • January 2024
  • December 2023
  • November 2023
  • October 2023
  • September 2023
  • August 2023
  • July 2023
  • June 2023
  • May 2023
  • April 2023
  • March 2023
  • February 2023
  • January 2023
  • December 2022
  • November 2022
  • October 2022
  • September 2022
  • August 2022
  • July 2022
  • June 2022
  • May 2022
  • April 2022
  • March 2022
  • February 2022
  • January 2022
  • December 2021
  • November 2021
  • October 2021
  • September 2021
  • August 2021
  • July 2021
  • June 2021
  • May 2021
  • April 2021
  • March 2021
  • February 2021
  • January 2021
  • December 2020
  • November 2020
  • October 2020
  • September 2020
  • August 2020
  • July 2020
  • June 2020
  • May 2020
  • April 2020
  • March 2020
  • February 2020
  • January 2020
  • December 2019
  • November 2019
  • October 2019
  • September 2019
  • August 2019
  • July 2019
  • June 2019
  • May 2019
  • April 2019
  • March 2019
  • February 2019
  • January 2019
  • December 2018
  • November 2018
  • October 2018
  • September 2018
  • August 2018
  • July 2018
  • June 2018
  • May 2018
  • April 2018
  • March 2018
  • February 2018
  • January 2018
  • December 2017
  • November 2017
  • September 2017
  • August 2017
  • July 2017
  • June 2017
  • May 2017
  • April 2017
  • March 2017
  • February 2017
  • January 2017
  • December 2016
  • November 2016
  • October 2016
  • September 2016
  • August 2016
  • July 2016
  • June 2016
  • May 2016
  • April 2016
  • March 2016
  • February 2016
  • January 2016
  • December 2015
  • November 2015
  • October 2015
  • September 2015
  • August 2015
  • July 2015
  • June 2015
  • May 2015
  • April 2015
  • March 2015
  • February 2015
  • January 2015
  • December 2014
  • November 2014
  • October 2014
  • September 2014
  • August 2014
  • July 2014
  • June 2014
  • May 2014
  • April 2014
  • March 2014
  • February 2014
  • January 2014
  • December 2013
  • November 2013
  • October 2013
  • September 2013
  • August 2013
  • July 2013
  • June 2013
  • May 2013
  • April 2013
  • March 2013
  • February 2013
  • January 2013
  • December 2012
  • November 2012
  • September 2012
  • August 2012
  • July 2012
  • June 2012
  • May 2012
  • April 2012
  • March 2012
  • February 2012
  • January 2012
  • December 2011
  • November 2011
  • October 2011
  • September 2011
  • August 2011
  • July 2011
  • June 2011
  • May 2011
  • April 2011
  • March 2011
  • February 2011
  • January 2011
  • December 2010
  • September 2010
  • July 2010
  • June 2010
  • May 2010
  • April 2010