A BRIEF COMPARISION BETWEEN THE PATENT OF ADDITION AND DIVISIONAL APPLICATION OF PATENT UNDER INDIAN AND US LAW

INTRODUCTION

 

What are Intellectual Properties?

Intellectual Properties (IP) are those properties which are intangible in nature and which involves creative outputs of the human mind, for instance: novels, music, motion-pictures, industrial designs, inventions, trademarks, which have commercial value.

Types of IP:

Intellectual Properties are basically of seven types: patents; trade marks (TM); industrial designs; geographical indications (GI); copyright; integrated circuits and designs and trade secrets. However, though plant varieties protection is a part of patents but few countries like India and other developing countries treat it as a separate IP.

Intellectual Property Rights (IPR): And Reason For Granting Them

And the rights which evolve from IP are called Intellectual Property Rights (IPR). IPRs vest in the owner who has the exclusive rights over these properties for a particular duration for instance 20 yrs. protection in cases of patents. These rights are granted to recognize the efforts, skills, money and time spent by their respective owners while creating them. Moreover, granting IPR inspires people to create new and productive that will contribute in the growth of the society. Thus, both the creator as an individual and the society are the beneficiaries of IP.

Definitions:

A Patent is a certificate issued by the respective governments to recognize and protect the invention (being a product or a process) which is new, has an inventive step and has an industrial application.  It is granted to protect the interest of the inventor or the applicant which is known as patentee once a patent is granted.  

A Trademark on the other hand, is a symbol or a word or a name, smell, or a sound, or mark with color combinations etc. that is put on goods in the marketplace which indicates its source. It acts as a bridge between the consumer and the manufacturer helping the ultimate user to recognize the source of its creation. Trade marks includes service marks which are given to services as opposed to products – the services being provided by the same source; and certification trade marks also.

Geographical indication is actually a development of Trade marks but here the product has the relation with its place of origin. For instance, Darjling Tea.

Copyright has been devised to protect the authors of original works of art, music, cinematographic work, sound recording as well as literary outputs.

However, broadcasting rights and performer’s rights are the related right or popularly known as neighboring rights, basically an offshoot of copyright where right vests in the performer of any action and with the broadcasters (as the case may be) instead of the creator or the producer of the work (for instance: in a movie copyright vests with the producer and not the with the director which is basically done to acknowledge the heavy investment made by the producer).

Nature of IPR:

IPRs are territorial in nature and thus, need to be protected in separately in each territory.

EVOLUTION OF THE PATENT SYSTEM

 

International Conventions:

Paris Convention for the Protection of Industrial Property, 1883 was the first international document available regarding IP having industrial applications. It only deals with patent; utility models; TM and industrial design (Article 4).

The Paris Convention laid down substantial requirements of granting patents including novelty; non-obviousness and industrial applications. However, member countries were left free to decide on procedural requirements for granting patents. But then they have to adopt the concepts of national treatment, avoid most favored nation and priority right compulsorily (Articles 2, 3 & 4 respectively).

Since the member countries of Paris Convention have to file independent applications for different countries, thus they have decided to adopt Patent Cooperation Treaty, 1970 which provides unified patent application filing procedure to nationals of its member countries. For instance national of India if file PCT application and if a patent is granted (subject to the fulfillment of the requirements) then he will have patent protection in all other member countries. This saves lot of money, time and energy of the applicant.

The most important document for IP is TRIPS (Agreement on Trade Related Aspects of Intellectual Property), 1994 (Annexure c of WTO). Article 27 to 31 deals with patents. The requirements are same i.e. anything can be patented which is new, non-obvious and have industrial application. However, countries may opt not to grant patents over plants and animals or on ground of morality. However then they have to protect plant varieties either by patents or by effective sui generic system or by combination of both.

 

 

 

The Patent Law Treaty, 2000 provides the procedure and the requirements which need to be provided by the applicant file filing patent applications.

The Patent Cooperation Treaty (PCT)

The Patent Cooperation Treaty (PCT) is an international patent law treaty, concluded in 1970. It provides a unified procedure for filing patent applications to protect inventions in each of its Contracting States (see Accession section below for current membership information). A patent application filed under the PCT is called an international application or PCT application.

A single filing of an international application is made with a Receiving Office (RO) in one language. It then results in a search performed by an International Searching Authority (ISA), accompanied with a written opinion regarding the patentability of the invention which is the subject of the application. It is optionally followed by a preliminary examination, performed by an International Preliminary Examining Authority (IPEA). Finally, the examination (if provided by national law) and grant procedures are handled by the relevant national or regional authorities. The PCT does not lead to the grant of an "international patent", which does not exist.

The States party to the PCT, i.e. the Contracting States, constitute the International Patent Cooperation Union.

The Washington Diplomatic Conference on the Patent Cooperation Treaty took place from May 25 to June 19, 1970. The Patent Cooperation Treaty was signed in Washington at the very end of the conference, i.e., on June 19, 1970. The Treaty entered into force on January 21, 1978 initially with 18 Contracting States. The first international applications were filed on June 1, 1978. The Treaty was subsequently amended in 1979, and modified in 1984 and 2001.

Any Contracting State to the Paris Convention for the Protection of Industrial Property can become a member of the PCT.

A majority of the world's countries are signatories to the PCT, including all of the major industrialised countries (with a few exceptions, including Argentina and Taiwan). As of April 3, 2008, there were 139 Contracting States to the PCT. Sao Tome and Principe (ST) became the 139th Contracting State on April 3, 2008. The PCT will enter into force for Sao Tome and Principe on July 3, 2008.

India:

In India, the Patent system was instituted by the British based on their own patent system in 1856, to protect inventions. This act was replaced by The Patent Act, 1970 which granted product and process patent to inventions. However, product patent was subject to five exceptions i.e. product patent cannot be granted to pharmacy, agriculture products. But to become TRIPS consistence India has amended its Act of 1970 in 2005 and introduced product patents in all fields including pharmaceuticals and agricultural products.

 

CRITERIA OF GRANTING PATENTS:

 

 

There are several characteristics that a patent office will look at to determine whether the invention is patentable. At the outset, there has to be a patent application on file. In most cases that patent application is examined by a technical expert to ensure that it meets the substantive criteria for patentability.

 

The first of those criteria is that it has to be new (novel), meaning that the invention must never have been made before, carried out before or used before.

 

The second criterion is that there must have been an inventive step. In other words, it must represent a sufficient advance in relation to the state of the art before it was made to be considered worth patenting. The term "non-obvious" is also used: if it were obvious to a person of ordinary skill in the field concerned, it would not progress to the stage qualifying for patent protection.

 

The third criterion is that it needs to be industrially applicable. It has to be susceptible of use in some way. This is a very broad criterion. Almost anything can be used, even if it’s in the research stage, but, as I mentioned, that does not apply to a perpetual motion machine, because it simply will not work.

 

TYPES OF PATENT APPLICATIONS:

 

A Patent Application is a request pending at a patent office for the grant of a patent for the invention described and claimed by that application. An application consists of a description of the invention, together with official forms and correspondence relating to the application. The term patent application is also used to refer to the process of applying for a patent. 

The process of obtaining the grant of a patent begins with the preparation of a specification describing the invention. That specification is filed at a patent office for examination and ultimately a patent for the invention described in the application is either granted or refused. 

These are the following applications filed in India 

• Ordinary application
• Convention application
• PCT international application
• PCT National phase application
• Application for Patent of addition
• Divisional Application

Ordinary Application 

An application for patent made in the Patent office without claiming any Priority of application made in a convention country or without any reference to other application under process in the office is called an ordinary application. 

Convention Application  

When an applicant comes to the patent office with an application claiming a priority date based on a similar application filed in one of the convention country, it is called a convention application. 

PCT International Application 

PCT is an international filing system for patents in which the applicant gains an international filing date in all the designated countries conferring the late entry (up to 31 months) to the national offices without affecting the priority date. This is a simple and economical procedure for those applicants seeking protection for the inventions in many countries 

PCT-National Phase Application

An international application made according to Patent Cooperation Treaty designating

India can enter national phase within 31 months from the international filing date. This application filed before the Controller in the Indian patent office claiming the priority and international filing date is called PCT National Phase application.

 

Application for Patent of Addition  

 

When an applicant feels that he has an invention, which is a slight modification on the invention for which he has already applied for/has patent in India the applicant can go for a patent of addition. The only benefit he gets is that there is no need to pay separate renewal fee for the patent of addition during the term of the main patent.  

 

Divisional Application

 

When the application made by an applicant claims more than one invention, the applicant on his own request or to meet the official objection raised by the Controller of Patents may divide the application and file two or more applications as applicable for each of the inventions. This type of application divided out of the parent one is called divisional application. The priority date for all the divisional applications will be same as that claimed by the parent application (Ante-dating).

 

Types of applications filed outside India

 

·         Ordinary Application

·         Application for Patent of Addition (granted for Improvement or Modification of the already patented invention, for an unexpired term of the main patent).

·         Divisional Application (in case of plurality of inventions disclosed in the main application).

·         Convention application, claiming priority date on the basis of filing in Convention Countries.

·         National Phase Application under PCT.

STATUTORY PROVISIONS RELATED TO PATENT OF ADDITION AND DIVISION OF APPLICATION IN INDIA

 

 

Sec 16 of Patent Act, 1970. Power of Controller to make orders respecting division of application[1]

Divisional patent application

A divisional patent application (sometimes referred to as a divisional application or simply a divisional) is a type of patent application which contains matter from a previously-filed application (the "parent" application). Whilst a divisional application is filed later than the parent application, it may retain its parent's filing date, and will generally claim the same priority.

Divisional applications are generally used in cases where the parent application may lack unity of invention; that is, the parent application describes more than one invention and the applicant is required to split the parent into one or more divisional applications each claiming only a single invention. The ability to file divisional applications in cases of lack of unity of invention is required by Article 4G of the Paris Convention.

The practice and procedure of filing a divisional patent application varies from jurisdiction to jurisdiction.

United States

 

In the United States, a divisional application is seen as a type of continuing patent application

A divisional application is one that is filed after an initial non-provisional patent application is filed and in which the PTO examiner says that the initial application has claims for two or more different inventions.  A patent can only claim a single invention.  If the PTO examiner believes that more than one invention is being claimed, the PTO examiner will require an election of claims, or make a restriction requirement. Currently, the PTO has increased the number of restriction requirements to inventors. Therefore, election / restriction requirements are becoming more common.

In such a case, one possible response is to delete the claims for one of the inventions from the parent application and file those deleted claims in a second, divisional application.  If the claims for both inventions are found allowable, the inventor will end up with two patents.

Sec 54 of Patent Act, 1970. 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 therefor (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]

Patents of addition:

When an applicant feels that he has come across an invention which is a slight modification of the invention for which he has already applied for/ or has patent, the applicant can go for patent of addition since the invention does not involve a substantial inventive step. It is also possible to convert an independent patent to a patent of addition at a later date if the subject matter was an improvement in or modification to a main invention for which he holds a patent.

 

There is no need to pay separate renewal fee for the patent of addition during the term of the main patent. A patent of addition expires along with the main patent unless it is made independent according to the provisions in Section 54.

 

However a patent of addition will not be granted unless the date filing of application was the same or later than the date of filing of the complete specification in respect of the main invention. It should be noted that a patent of addition will not be granted before granting of the patent for the main invention.

 

United States

According to my information as searched by me there is no such difference in the filling of Patent of Addition in the US law, it more over consist of the same legal proceedings.

COMPARISON OF INDIA'S PATENT LAW AND US LAW

 

Indian Patent Act of 1970

·         Only process not product patents in food, medicines, chemicals.

·         Term of patents 14 years; 5-7 in chemicals, drugs .

·         Compulsory licensing and license of right.

·         Several areas excluded from patents (method of agriculture, any process for medicinal surgical or other treatment of humans, or similar treatment of animals and plants to render them free of disease or increase economic value of products).

·         Government allowed to use patented invention to prevent scarcity.

US Law

·         Process and product patents in almost all fields of technology.

·         Term of patents 20 years.  

·         Limited compulsory licensing, no license of right.

·         Almost all fields of technology patentable. Only area conclusively excluded from patentability is plant varieties; debate regarding some areas in agriculture and biotechnology.

·         Very limited scope for governments to use patented inventions .

In 1957, Govt. of India appointed Justice N. Rajagopala Ayyangar examine and review the Patent law in India who submitted his report September 1959 recommending the retention of Patent System despite shortcomings. The Patent Bill, 1965 based mainly on his recommendations incorporating a few changes, in particular relating to Patents for food, drug, medicines, was introduced in the lower house of Parliament on 21st September, 1965. The bill was passed by the Parliament and the Patents Act 1970 came into force on 20th April 1972 along with Patent Rules 1972. This law was suited changed political situation and economic needs for providing impetus technological development by promoting inventive activities in the country.

Uruguay round of GATT negotiations paved the way for WTO. Therefore India was put under the contractual obligation to amend its patents act in compliance with the provisions of TRIPS. India had to meet the first set of requirements on 1- 1-1995. This was to give a pipeline protection till the country starts giving product patent. It came to force on 26th March 1999 retrospective from 1-1-1995. It lays down the provisions for filing of application for product patent in the field of drugs or medicines with effect from 01.01.1995 and grant of Exclusive Marketing Rights on those products.

India amended its Patents Act again in 2002 to meet with the second set of obligations (Term of Patent etc.), which had to be effected from 1-1-2000. This amendment, which provides for 20 years term for the patent, Reversal of burden of proof etc. came into force on 20th May, 2003. The Third Amendment of the Patents Act 1970, by way of the Patents (Amendment) Ordinance 2004 came into force on 1st January, 2005 incorporating the provisions for granting product patent in all fields of Technology including chemicals, food, drugs & agrochemicals and this Ordinance is replaced by the Patents (Amendment) Act 2005 which is in force now having effect from 1-1-2005 .

United States has the most expansive patent subject matter in the world. US Patent Office has granted patents to living organism, computer software, business methods, new alphabets and countless.

Article 1 Section 1 Clause 8 of the US Constitution empowers the congress to promote the progress of science and useful arts, by securing for limited times to authors and inventors the exclusive right to their respective writings and discoveries. In furtherance of the power granted by the constitution, the US Congress enacted the first patent act in the year 1790. Though the act was amended several times, the most important amendment came about in the year 1952, when congress passed a new patent act codified under Title 35 of the United States Code. Though a few changes were made in 1986, 1996 and 1999, most provisions of the 1952 Act are still in effect.

The US Patent Law is based on the utilitarian reasoning, which is to promote the progress of science and useful arts in general public interest. An inventor gives an invention to the public and gets exclusive rights over it for a limited period of time. By granting exclusive rights to inventors for a limited period of time, the patent law provides incentive to invent, invest, design around and disclose which in turn encourages progress of science and technology.

The courts have construed the terms process, machine, manufacture and compositions of matter very broadly. In Diamond v. Chakrabarty, the United States Supreme Court while upholding the patentability of an oil-eating bacterium stated that everything under the sun made by man is patentable.

[1]. The Patent Act, 1970, s. 16 states that “(1) A person who has made an application for a patent under this Act may, at any time before the acceptance of the complete specification, if he so desires, or with a view to remedy the objection raised by the Controller on the ground that the claims of the complete specification relate to more than one invention, file a further application in respect of an invention disclosed in the provisional or complete specification already filed in respect of the first mentioned application.(2) The further application under sub-section (1) shall be accompanied by a complete specification, but such complete specification shall not include any matter not in substance disclosed in the complete specification filed in pursuance of the first mentioned application.(3) The Controller may require such amendment of the complete specification filed in pursuance of either the original or the further application as may be necessary to ensure that neither of the said complete specifications includes a claim for any matter claimed in the other.Explanation – For the purposes of this Act, the further application and the complete specification accompanying it shall be deemed to have been filed on the date on which the complete specification in pursuance of the first mentioned application had been filed, and the further application shall, subject to the determination of the priority date under sub-section (4) of section 11, be proceeded with as a substantive application.

 

[2] The Patent Act, 1970, s. 54 states that “(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 therefor (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 complete specification was the same as or later than the date of filing of the complete specification in respect of the main invention.(4) A patent of addition shall not be sealed before the sealing of the patent for the main invention; and if the period within which, but for the provisions of this sub-section, a request for the sealing of a patent of addition could be made under section 43 expires before the period within which a request for the sealing of the patent for the main invention may be so made, the request for the sealing of the patent of addition may be made at any time within the last mentioned period.

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