It is rather tragic that very few Controllers in India write sufficiently detailed and reasoned decisions, and the position is even dismal when one hopes to come across well-analysed jurisprudential orders for patent grants/rejections. To narrow this down further in scope, let’s take ‘patents of addition.’ By themselves, these have not attracted much limelight. The last major highlight that I can recall was regarding the applicability of Section 39 on patents of addition in the Selfdot case (covered nicely by Yogesh here). Section 54 is one of the most important provisions concerning patents of addition (below).
Out of all the Section 54 decisions under the Patent Act, 1970, only 10 in total cropped up! (see the screenshot below)
Most of these were way too succinct, with barely any analysis. Some provided observations while granting or rejecting patents of addition; for instance, in applications 3543 (pdf) and 1167 (pdf), the controllers granted patents of addition, noting that the conditions under Section 54(1) were sufficiently fulfilled, and that was it. However, it is especially disheartening when there is a lack of in-depth analysis even in decisions involving rejections of such applications, like for application no. 1837 (pdf), where the claim was dismissed in a short paragraph merely stating it failed to meet the criteria under Section 54.
Nevertheless, in a positive turn, the most recent two decisions show Controllers starting to offer more in-depth analyses. These two decisions, authored by the same Assistant Controller in Kolkata, Mr. Kundan Kumar, follow a similar line of reasoning with respect to Sections 54(1) and 56(2) when rejecting grants for patents of addition. Section 56 is reproduced for reference below.
They delve into the history of patents of addition as adopted by India, referencing the Ayyangar Committee Report, which rejected some recommendations proposed by the Swan Committee [While I couldn’t find a copy of the report online, I would greatly appreciate it if any reader who has one could please drop a link in the comments.] This post will analyse the Controller’s orders and assess the propriety of the observations in light of the historical development of the Patent Act 1970 over the Patent Act 1958.
What is a ‘Patent of Addition’?
The “patent of addition” in India is a crucial mechanism for protecting improvements or modifications to existing inventions. This system recognises that innovation often builds upon previous work, which can arise from natural advancements or market feedback. Unlike standard patents, which cover entirely new inventions, patents of addition enable inventors to safeguard their enhancements while the original patent remains protected.
The foundation of the Patents Act, 1970, is influenced by the recommendations of the Ayyangar Committee (“Report on the revisions in the patent law”). This committee highlighted the need for a clause allowing for patents of addition, similar to the UK Patent Act of 1949 (Section 26).
In the UK, the Lord Swan Committee (1948) recommended that the patent of addition serve as a remedy for applicants who inadequately drafted their claims, allowing them to rectify these claims when circumstances allow. This approach was influenced by the outcomes of two case laws: Georgia Kaolin and Welwyn Electrical Laboratories Ltd [If any reader has copies of the actual text of these judgements, please feel free to share.] The purpose was to help inventors correct or expand their original claims if needed, thus providing an avenue for refining their inventions.
In line with this, Sections 54, 55, and 56 of the Patents Act 1970 specifically govern patents of addition, emphasising their role in promoting innovation. Rule 13(3) of the Patents Rules mandates that each patent of addition must reference the main patent and clearly state that it is an improvement or modification. This ensures clarity and reinforces the idea that innovation is often iterative, building on prior knowledge.
The Assistant Controller’s Observations on Section 54
There are two relevant cases: one, filed by Haynes International on 18 September 2024 (pdf), concerns an ‘acid and alkali resistant alloy with critical contents of chromium and copper’, while the other, filed by Tata Steel on 22 July (pdf), pertains to gypsum. Both cases were handled by the same assistant controller in Kolkata, Kundan Kumar. They provide an astute interpretation of Section 54, particularly Section 54(1) of the Patents Act 1970.
- Patent Application by Haynes International
In the first case, Haynes International filed Application Number 4889/CHE/2013 as a patent of addition to parent application 1875/CHE/2013. The Assistant Controller found that the claims in 4889, which included copper (Cu), chromium (Cr), and sulphur (S), did not mention cobalt (Co) or tungsten (W). This led to the conclusion that the claims were merely rephrased from the parent application without genuine improvements.
Under Section 56 of the Patents Act, the inventive step for a patent of addition is compared to the main application, while novelty is assessed based on the parent application’s disclosure. The Assistant Controller noted that the differences presented did not add novelty compared to the earlier patent, and thus, 4889 failed to show any technical advancement over 1875.
Ultimately, the Assistant Controller ruled that, despite appearing distinct, the claims were fundamentally the same. Consequently, 4889 did not meet the novelty criteria for a valid patent of addition as per Section 54(1), lacking the necessary merit for patent protection.
The Assistant Controller then addressed the relevance of the Swan Committee Report in relation to the Ayyangar Committee’s analysis of patent law revision. It noted that the Ayyangar Committee disagreed with the Swan Committee’s more liberal approach to patent of addition rights, cautioning against loose drafting that could lead to substitutions of claims not originally intended.
As reflected in the order, emphasis is brought on the fact that the Ayyangar Committee believed that such drafting could obscure the intended scope of an invention, emphasising that claims should be based on explicit disclosures in the complete specification, not vague language. The Committee asserted that the claimed invention must represent a further disclosure constituting an improvement or modification of the main invention, rather than merely reiterating what was previously claimed. Thus, for a patent of addition to be valid, it must clearly articulate new advancements beyond the original specification.
The Assistant Controller noted that the Ayyangar Committee’s recommendations regarding Section 54(1) emphasised that a patent of addition should only be granted for improvements or modifications of an invention “described or disclosed in the complete specification filed therefor.”
Relying solely on the Swan Committee Report can be misleading, as the Assistant Controller minions in his decisions. While the Swan Committee was inclined to allow patents of addition based on the disclosure of an invention to further Georgia Kaolin and Welwyn Electrical Laboratories, the Ayyangar Committee opposed loose drafting and substitutions to cover subject matter not claimed in the parent application, unlike the Swan Committee. The applicant overlooked Justice Ayyangar’s limitations on the applicability of the Swan Committee’s recommendations, and the fact that the Patents Act of 1970 adopted this limitation.
Consequently, the Assistant Controller concluded that applications 4889 and 1875 had identical specifications, with no improvements in 4889, rendering it invalid as a patent of addition under Section 54(1) and lacking novelty under Section 54(2), which would contradict the intent of the Patents Act of 1970.
- Patent Application by Tata Steel Ltd.
In the second case, filed by Tata Steel under application number 201733044715 (referred to as 4715 hereafter), the parent application related to a method for preparing yellow calcium sulphate. The applicant argued that the current patent of addition pertains to a newer composition of gypsum, claiming that the parent application also described a similar composition and process for producing yellow calcium sulphate. However, the Assistant Controller emphasised that the current application lacked any technical features that constituted a genuine improvement over the parent application.
Referencing Section 54(1) of the Patents Act and the Ayyangar Committee’s interpretation of the Swan Committee Report, the Assistant Controller noted that for a patent of addition to be valid, it must demonstrate modifications or improvements without altering the original inventive step. The entire description in the parent specification should be considered for the broadest understanding of the claimed invention. If only the claimed features are referenced, the scope narrows, leaving no room for meaningful improvements, thereby rendering the patent of addition invalid.
Moreover, the Assistant Controller clarified that the phrase “also applies or has applied” should not be interpreted literally. Under Section 54(1), any modification or improvement must align with the broadest understanding of the invention as described in the complete specification. This interpretation is consistent with the Ayyangar Committee’s recommendations, allowing for legitimate modifications while preventing the inclusion of unclaimed products or processes from the parent application. Ultimately, an improvement or modification must not blur the lines between product features and process features, thereby maintaining the integrity of the patent system.
The Assistant Controller emphasised that any category of invention or subject matter disclosed but not claimed in the parent application cannot be filed as a patent of addition. Allowing such claims would undermine the purpose of the amendments regarding patents of addition. The current application was deemed not to represent a genuine modification or improvement of the parent invention, underscoring the necessity for clear disclosures in patent claims.
The Assistant Controller, in both orders, has indeed made some extremely insightful observations about the extent to which the Ayyangar Committee adopted the Swan Committee’s recommendations. The findings of the Assistant Controller are particularly interesting as they emphasise the origins of patents of addition in the Patents Act of 1970, which were shaped by the recommendations of the Ayyangar Committee. The utility of patents of addition lies in allowing inventors to refine their claims when original applications fall short and encouraging the exploration of improvements without jeopardising original patents. For these reasons, while the Ayyangar Committee was inspired by the concept of patent additions as in the UK’s 1949 Patent Act, it did not adopt the concept in exactly the same way. It subtly differed from the observations in the Swan Committee Report, and this decision serves as a useful reference in highlighting these distinctions, setting the Ayyangar’s adoption of patents of addition apart as a unique class compared to that in the UK.
The Assistant Controller has accurately proposed that applicants referencing the Swan Committee in isolation from the Ayyangar Committee would be making a significant oversight. While the Swan Committee’s recommendations have been incorporated into the existing Patent Act of 1970, their application is constrained by the limited scope defined by the Ayyangar Committee. It is delightful to see that well-analysed orders like these were issued by the Assistant Controller, particularly given the scarcity of such analytical orders concerning Section 54.
[Hat tip to one of our readers who’d like to stay anonymous for bringing these orders to our attention.]