Saturday, December 11, 2010

A PCT Application for a Patent of Addition?

A few days back, a friend of mine, who is a very keen student of the law of Patents, asked me an interesting question which hadn’t occurred to me earlier. Her question was-

“Is it possible to file a PCT application for a patent of addition?”

My answer was a yes, but I thought I might as well back the answer with proper research. So here it goes.

Let’s begin with the “Definitions” under Article 2 of the Patent Co-operation Treaty (PCT). The relevant definitions to be looked into are those of “application” and “patent” under sub-article (i) and (ii) of Article 2. For ease of reference, following are the definitions:

(i) “application” means an application for the protection of an invention; references to an “application” shall be construed as references to applications for patents for inventions, inventors’ certificates, utility certificates, utility models, patents or certificates of addition, inventors’ certificates of addition, and utility certificates of addition;

(ii) references to a “patent” shall be construed as references to patents for inventions, inventors’ certificates, utility certificates, utility models, patents or certificates of addition, inventors’ certificates of addition, and utility certificates of addition;

I think the above definitions make it crystal clear that a patent of addition too can be the subject-matter of a PCT application. But then, what about priority dates? A patent of addition, in my opinion, cannot be filed beyond the standard 12-month window provided under the law, if it seeks the benefit of priority of the basic parent application.

This applies to 2 situations- the first where the basic application is an application filed in a national patent office and the PCT application takes benefit of the basic application; the second is where the basic application is itself a PCT application. After all, a PCT application can take priority from an earlier filed PCT application.

The question now to be answered is what happens if a person wishes to file a PCT application beyond the 12 month period of the earlier filed PCT application? The answer could be that such an application may be filed because non-publication of the parent PCT application does not deprive it of its novelty.

That said, since it cannot and hence does not take benefit of the parent PCT application, it may be treated as an independent PCT application, and not as a patent of addition. If so, it may fall short on the criterion of non-obviousness, because it will now be judged against the invention disclosed in the parent PCT application as well.

However, this does not prevent filing of applications for patents of addition from the national phase applications because there is no time-limit under national regimes (atleast in India) for filing of a patent of addition. 

Corrections are welcome!

9 comments:

  1. hi Sai,
    I havent understood the point on the 12-month window for priority. Could you pls elaborate on that?

    Regards,
    Blayne.

    ReplyDelete
  2. I guess u mean one can file a PCT application after the 12 month period only it has not been published just like you can file convention applications after the 12 month period without claiming priority from earlier application if the first one isn't published.Correct me if my understanding is wrong.

    If so, what happens to a patent of addition which is filed after the publication of the parent application?

    ReplyDelete
  3. Yes DJ, that is what I meant.

    If a patent of addition is filed after publication, the position under PCT is not very clear or atleast I am not aware of it because national patent legislations do not lay down a period within which a patent of addition may be sought, not do they bar seeking a patent of addition after publication of the parent application. If the same logic is applied to the PCT application for patent of addition, then there is no need for the patent of addition to take priority from the parent PCT application because a patent of addition anyway owes its filing to an already filed parent application. Therefore, the question or dilemma here is that the concept of patent of addition does not require seeking of priority from a parent application. Then is it mandatory for a PCT patent of addition to be filed within 12 months from the basic parent application? Let me know your thoughts.

    Bests,
    Sai.

    ReplyDelete
  4. Came across this rule. Thought of bringing this up again.
    Rule 49bis of the PCT allows the applicant to treat the international application in a designated State, as an application for a patent of addition, certificate of addition, inventor’s certificate of addition or utility certificate of addition. However, the applicant will have to indicate the number of the parent application to the Designated Office.
    This, I believe, will help overcome obviousness which will be posed due to the publication of the earlier (parent) application. This will also reduce the term of the patent, as the term in this case will be calculated from the earlier date.

    ReplyDelete
  5. Can you please answer if i have priority date in India for my parent invention which is published in patent gazette and i have few days left for completion of 12 months duration from priority date for filing PCT application. Now i wish to file patent of addition before Indian patent office but i want to file single PCT application for both the said application. How shall i proceed? Is it possible to file a club application claiming both the priorities? if yes, how shall be the description and claims? (like the claims of patent of addition should be in continuation of claims of parent invention)

    ReplyDelete
  6. I am not a lawyer but would still try to answer your question based on logic and experience.
    However before proceeding with my advice ,please consult an appropriate lawyer or patent agent.
    You have not mentioned whether your priority application is a provisional specification or a complete specification. If your original basic application (priority document)in India is a provisional application you can go ahead and include developments of additions in your complete specification to make it a comprehensive application in India. You can also file the comprehensive document as your only PCT application covering all aspects of the invention and write your claims accordingly. This will save you a lot of money and hassles. However, please note that in any event each of your claims will have a separate priority date based on what you have stated in your basic application in India and what you have stated in the final document (complete specification). The separate dates of priority of the claims is a standard procedure which in any case will be followed in India as well as in the PCT member countries. In such a case you do not have to file a seperate patent of addition in India or a patent of addition for PCT.

    If however, you have already filed your complete specification in India and still have not completed 12 months from the date of filing of the basic application in India, you may make an application to the Controller of Patents in India requesting him/her to treat your existing final document (complete specification) as a provisional specification and MAKE SURE that you file your complete specification with improvements WITHIN 12 MONTHS from the date of filing of your VERY FIRST document/application in India. THIS IS VERY IMPORTANT.

    ACCORDINGLY, YOU MAY PREPARE YOUR PCT APPLICATION AND FILE JUST ONE APPLICATION FOR PCT, including all the basic information as well as improvements and draft your claims accordingly. In any event, please note that the priority dates of each of your claims will be different depending upon when and what you have stated in of your documents.

    PLEASE ALSO MAKE SURE THAT YOU DISCLOSE AND CLAIM ALL THE PROVISIONAL SPECIFICATIONS IN YOUR PCT APPLICATION FORM, AS PRIORITY DOCUMENTS (WITH DATES OF EACH PROVISIONAL SPECIFICATION) FOR ALL YOUR PROVISIONAL APPLICATIONS.

    Please note that any patent application in India may have multiple provisional documents and accordingly multiple priority dates for each of the claims.

    The entire above advice has been given assuming that you have not publicly disclosed or published any part of your invention anywhere in the world. If you have already publicly disclosed any information after filing of your basic application, Patent of addition is the best way to go. Please note that even discussion of the matter with a potential licensee constitutes a PRIOR ART

    I hope this is of some help to you.
    Please however consult an appropriate patent agent or lawyer before following the above advice as abundant precaution.

    Please also note just by chance I came across your post here and I will probably not visit this forum again, therefore would not be able to respond to any additional queries that you may have.

    MAY GOD BLESS YOU!
    REGARDS
    AN ANONYMOUS WELL WISHER

    ReplyDelete
  7. JUST A CORRECTION: I SOMEHOW OVERLOOKED YOUR POST AND HAVE JUST NOTICED THAT YOUR APPLICATION IN INDIA IS ALREADY PUBLISHED. PLEASE THEREFORE IGNORE MY EARLIER POST.

    SINCE YOUR APPLICATION HAS ALREADY BEEN PUBLISHED YOU HAVE NO OTHER OPTION BUT TO FILE FOR A SEPARATE PATENT OF ADDITION IN INDIA. PLEASE FILE THAT FIRST IMMEDIATELY.

    IN MY VIEW YOU MAY STILL BE ABLE TO FILE A COMBINED SINGLE INTERNATIONAL PCT APPLICATION WITH TWO PRIORITY DATES (ONE FOR THE BASIC DOCUMENT (ALREADY PUBLISHED) AND ONE FOR THE IMPROVEMENTS (ADDITION)COMBINED INTO ONE COMPREHENSIVE APPLICATION.

    PLEASE DO CONFIRM THIS WITH A PATENT AGENT OR LAWYER BEFORE ACTING ON MY ADVICE.
    MY VEST WISHES

    REGARDS

    ReplyDelete
  8. Thanks Anon, I had already responded to the query in the post below:
    http://thedemandingmistress.blogspot.in/2012/06/patents-of-addition-what-is-their-true.html

    Bests,
    Sai.

    ReplyDelete
  9. Dear All,
    Thanks for so useful discussion. I have following queries as follows
    A Indian patent was filed before 5 year and still under examination. Mean while the invention is developed / improved in many ways.
    How to decide if new patent or patent of addition is to be filed?
    Can PCT patent of addition be filed for this?
    Will the new PCT application protect the whole (original and improved) invention in abroad?
    How to choose the countries for PCT so that the invention can be protected globally in minimum budget?
    I understand in case of patent of addition, the priority date will be same as your original priority date. Can someone choose new priority date for PCT patent of addition other than date of filing of original/basic patent? Is this a good idea for ever greening of the patent? Is there any risk involved with getting new priority date for your modification?

    Thank you in advance.
    Regards

    ReplyDelete