In the Indian Patent Act, a Patent of Addition and a Divisional Application are two distinct types of applications, each serving different purposes.

A distinction between a divisional patent application and a Patent of addition is provided below:

Key Differences

Aspect	Patent of Addition	Divisional Application
Legal Provisions	Section 54 of the Indian Patent Act, 1970.	Section 16 of the Indian Patent Act 1970.
Purpose	For an improvement or modification of an existing patent	To split a single application into multiple applications when more than one invention is disclosed
Relation to Original Patent	Must be related to a granted or pending main patent	Can be filed based on any application that discloses multiple inventions
Examination	Examined together with the parent application on the ground of novelty alone.	Examined independently both on ground of novelty and inventive step.
Filing Deadline	Can only be filed during the lifetime of the main patent	Can be filed anytime before the grant of the original application
Term	Same as the main patent	Same as the original patent (20 years from the original filing)
Application	Only filed for a complete specification	Both for Provisional and Complete Specification
Priorities	Only one patent of addition can be filed for a parent application.	Multiple divisional applications can be filed from a parent application or a divisional application as per Rule-13 (2A) of Patent Amendment Rules, 2024.
Independence	Not independent; dependent on the main patent	Independent application with its own claims

The Court has also provided various interpretations for providing clarity regarding application and scope of patent of addition and divisional applications respectively.

In India, a Patent of Addition allows inventors to protect improvements or modifications to an existing invention for which they have already filed or hold a patent. This mechanism is governed by Sections 54 to 56 of the Patents Act, 1970. Several judicial decisions have clarified the nuances of these provisions:

1. Ravi Kamal Bali v. Kala Tech and Others (2008):

In this case, the Bombay High Court addressed whether a Patent of Addition requires an inventive step over the main invention. The court concluded that a Patent of Addition cannot be invalidated solely on the ground that it lacks an inventive step over the main invention. However, the disclosure in the main application is considered when determining the novelty of the Patent of Addition.

2. M/S Inphase Power Technologies Private Ltd. v. M/S ABB India Limited (2016):

The Karnataka High Court examined the relationship between the main invention and the Patent of Addition, emphasizing that the patentee of both must be the same. The court highlighted that a stranger to the main invention cannot apply for a Patent of Addition concerning any modification or improvement of the main invention.

3. Kudos Pharmaceuticals Limited & Ors. v. Natco Pharma Limited (2024):

The Delhi High Court dealt with the distinction between species patents and Patents of Addition. The court clarified that not all species patents qualify as Patents of Addition under Section 54 of the Patents Act. The decision underscored that a Patent of Addition must be filed on the same date or later than the main application and that the applicant for both should be identical.

To summarize, the following are important considerations for filing a patent of addition:

1. Applicant Identity: The applicant for a Patent of Addition must be the same as that of the main invention.

2. Filing Timeline: The application for a Patent of Addition should be filed on the same date as or after the filing date of the main application.
3. Term and Renewal: The term of a Patent of Addition is concurrent with that of the main patent, and no separate renewal fees are required. If the main patent is revoked, the Patent of Addition can become an independent patent upon request.

In India, divisional patent applications are governed by Section 16 of the Patents Act, 1970. These applications allow an applicant to divide a patent application into multiple applications when it encompasses more than one invention. Several judicial decisions have clarified the nuances of filing and maintaining divisional applications:

1. Syngenta Limited v. Controller of Patents and Designs (2023):

In this landmark case, the Delhi High Court examined the scope of divisional applications under Section 16. The court held that while a plurality of inventions is required to file a divisional application, this plurality can be ascertained from the provisional or complete specification, not solely from the claims. The court emphasized that the absence of a comma in Section 16(1) after the term “controller” indicates two scenarios for filing a divisional application:

• An applicant may file a divisional application if they so desire.
• A divisional application can be filed to remedy an objection raised by the controller regarding the claims relating to more than one invention.

This interpretation allows for greater flexibility in filing divisional applications, aligning with international practices.

2. Boehringer Ingelheim International GMBH v. The Controller of Patents (2014):

In this case, the Intellectual Property Appellate Board (IPAB) dealt with the maintainability of divisional applications. The Board held that a divisional application is permissible only when the parent application claims more than one invention. If the parent application does not disclose multiple inventions, filing a divisional application is not justified. This decision underscores the necessity of a plurality of inventions in the parent application for a valid divisional application.

3. LG Electronics Inc. v. Controller of Patents (2011):

The Delhi High Court addressed the issue of whether an applicant can file a divisional application suo moto (on their own initiative) without an objection from the patent office. The court ruled that an applicant has the right to file a divisional application independently, provided the parent application contains multiple inventions. This judgment affirms the applicant’s autonomy in prosecuting divisional applications.

To summarize, the following are important considerations for filing a divisional application:

1. Plurality of Inventions: A divisional application is justified only when the parent application discloses more than one invention. This plurality can be identified from the provisional or complete specification, not just the claims.

2. Applicant’s Initiative: Applicants can file divisional applications on their own initiative or to address objections raised by the patent office regarding multiple inventions in a single application.
3. Statutory Interpretation: The interpretation of Section 16(1) has been pivotal in determining the permissibility and scope of divisional applications, with courts analyzing the language and punctuation of the provision to derive legislative intent.

These cases highlight the evolving jurisprudence surrounding divisional patent applications in India, emphasizing the importance of understanding statutory provisions and judicial interpretations to navigate the patent application process effectively. Therefore, Patent of Addition is used for improvements or modifications to an existing invention, while a Divisional Application is used to resolve multiple inventions disclosed in a single parent application. Both mechanisms serve different purposes but are crucial for strategic patent prosecution.