Pursuing additional content after a patent application

By Joginder Singh and Piyush Sharma, LexOrbis
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Some applicants file a provisional application to secure the earliest priority date for their invention, following it with a non-provisional application within 12 months. Provisional applications not only allow applicants to quickly secure the priority date for their invention, but also provide a period of 12 months to further conceptualize their inventions and to determine their feasibility.

patent
Joginder Singh
Partner
LexOrbis

Applicants often need more than 12 months to finalize the details of the invention and therefore, may consider post-dating the provisional application. Section 17 of the Patents Act, 1970 (act), provides that, subject to provisions of section 9, a patent application may be post-dated for a maximum of six months from the original filing date. Applicants do not need to request the full allowable term of six months, but may ask for a lesser period or file multiple requests as long they do not exceed the limit of six months in total.

While the applicant is thus allowed more time to file the non-provisional application, the time duration for citing prior art against the non-provisional application is also accordingly extended. Applicants are thus advised to be extremely cautious before post-dating their applications. In fact, they may consider conducting a search to look for evidence of prior art in such extended period in order to make a fully-informed decision on post-dating.

patent
Piyush Sharma
Managing associate
LexOrbis

Further, an applicant sometimes wishes to add more information after filing the complete application. This could be in case of a complete application following a provisional application or in a direct complete application. If this additional information is not substantial and falls within the scope of the previously claimed invention, the applicant may file a request to make a voluntary amendment, which allows the addition of any subject matter by way of explanation, correction, or disclaimer.

However, if the additional information is substantial, the applicant may consider filing a patent of addition. Section 54 of the act provides that any modification or improvement to an invention in an earlier filed patent application may be made by a patent of addition. The term of the patent of addition will be the same as that of the main application, and it can be filed any time during the term of the main patent. Moreover, the patent of addition would be examined only to determine the novelty of the invention and not to investigate the inventive step over the original invention. Any other literature published before the filing of the patent of addition may also be cited to question its novelty.

However, for the inventive step of the patent of addition, only the literature published before the date of filing of the main patent can be cited. Another advantage of filing a patent of addition is that the applicant does not have to pay any separate renewal fee to maintain it. Even if the main invention is later revoked, the applicant can request the Office of the Controller General of Patents, Designs and Trade Marks (Indian Patent Office or IPO) to allow the patent of addition to continue as an independent patent for the remainder of the term. In that case, the renewal fee has to be paid up to the expiry of the term.

Alternatively, for pursuing additional content, the applicant may file a request to convert the complete application into a provisional application within 12 months from the filing date of the complete application under section 9(3). Once the request is accepted by the IPO, the applicant may file a subsequent non-provisional application incorporating the additional details. It is to be noted that the non-provisional application has to be filed within the 12 months from the filing date of the converted provisional application, irrespective of the date of conversion. Even in this case, the applicant may apply to post-date the application, as explained above.

It is always advisable to finalize the full details of the invention before filing the complete application. However, considering the fast pace of the present innovation environment, applicants sometimes need more than 12 months to fully conceptualize the invention after the filing of the provisional application. Similarly, it is common for an applicant to come up with new aspects of the invention after filing the complete application. In such circumstances, because of the significant cost and effort involved in processing a patent application, it is only reasonable that applicants should be able to incorporate the previously missed content in the same patent application or a patent of addition, as set out in the provisions of the act.

Joginder Singh is a partner and Piyush Sharma is a managing associate with LexOrbis.

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