Expanded Patent: Discussion on the degree of alteration in relation to the Indian viewpoint
Modifying Patents of Addition Under Indian Law: A Comprehensive Overview
Navigating the process of modifying a patent, particularly a Patent of Addition, can be a complex task under Indian patent law. A recent consultation with seasoned patent lawyers specializing in this area has shed light on the key factors involved in determining the degree of modification.
A Patent of Addition allows for filing a patent for a modification or improvement of an existing patented invention, provided it is related to the invention covered by the original patent. The degree of modification is judged based on whether the "added" invention is a derivative or improvement that falls within the scope of the original patent's subject matter. It cannot be a wholly independent invention.
In Indian patent law, this involves comparing the modification with the original patent claims to ensure the addition is genuinely a dependent or improved version rather than a distinct new invention. The invention in the Patent of Addition often requires less stringent novelty or inventive step evaluation than a standard patent, recognizing it as a dependent improvement.
Key points about this process include:
- Relating to the original invention: The added invention must be a modification or improvement to the original patented invention.
- Assessment of inventive step and novelty: While the bar may be somewhat relaxed, the patent office examines if the addition introduces some innovation or improvement with respect to the original patent.
- No independent patent if the modification is unrelated: The Patent of Addition cannot claim separate subject matter unrelated to the original invention.
Supporting background from Indian patent law emphasizes the importance of technical advancement and non-obviousness in patentability decisions, even for modifications. For example, courts have stressed the need to assess inventive step beyond mere mechanical or trivial changes.
Section 3(d) and relevant case law (e.g., Novartis v. Union of India) underline how modifications must provide demonstrable efficacy or improvement in some cases, especially in pharmaceuticals.
The process can be difficult to complete if there are no clear standards or criteria for determining the level of modification. However, strong claims have been created that precisely define the modification and how it relates to the core elements of the original invention.
Patent of Addition exams are strict, with examiners scrutinizing the modification's relationship to the original invention's primary components. Expert opinions and technical evaluations have been sought in the relevant sector. The modification plan has been considered from a global perspective, taking into account variations in patent laws and regulations in other jurisdictions.
It's essential to note that Patents of Addition only protect the alteration in question—not the invention as a whole. The process can be challenging, and the key components of the original invention and the suggested modification have been clearly stated.
The determination of the level of modification can be subjective and inconsistent due to different interpretations by patent examiners or judges. Patents that have been issued and previous art about the original idea and the proposed change have been researched.
In summary, the degree of modification in a Patent of Addition is determined by examining whether the new invention is a bona fide improvement or alteration of the original patented invention, maintaining a close nexus with the original claims, and satisfying basic standards of novelty and inventive step relative to the parent patent. The examination emphasizes technical contribution over trivial differences or simple variations.
The challenger must prove that the subject matter asserted in the first patent does not constitute a significant advancement to dispute the main patent. Continuous monitoring and adaptation of the modification plan have been implemented to find fresh protection prospects and modify the patent strategy as necessary.
- Expert advice is sought in scrutinizing the modification's relationship to the original invention's primary components, as Patent of Addition exams are rigorous.
- In India, patent protection extends to improvements and modifications on existing patented inventions, as evidenced by Patents of Addition.
- It is important to approach Patent of Addition cases understanding that the added invention must be a modification or improvement of the original patented invention, not an unrelated invention.
- strong claims need to be made that precisely define the modification and how it relates to the core elements of the original invention to increase the chance of securing a patent.
- The impact of medical-conditions and health-and-wellness could be significant when assessing the inventive step and novelty of a Patent of Addition, particularly in pharmaceuticals, as highlighted by Section 3(d) and relevant case law.
- Global patent laws and regulations are considered when drafting a modification plan to ensure compliance and maximize protection in multiple jurisdictions.
- The firm's science and technology department conducts research on both issued patents and previous art about the original idea and the proposed change to provide informed and strategic patenting decisions for clients.
