If you have never heard of a ‘patent of addition’, I am sure that you are not alone. Even those of us who practice in a jurisdiction in which these beasts are rumoured to exist have rarely, if ever, actually seen one. It is not even easy to track one down, or to find out how many of them there may be out there in the wild, since IP Australia’s AusPat database does not provide a facility to search specifically for applications and patents of addition.However, readers experienced with US patent law and practice may already be familiar with the basic rationale behind the patent of addition, which has much in common with what is known as ‘non-statutory obviousness-type double patenting.’ The principle applied in both cases is that an applicant can be permitted to obtain a second patent for a new, but obvious, variation of an invention already claimed in an earlier patent, but that the second patent may not outlive the first. In this way, the patentee’s rights are insured, but not improperly extended.
It is possible that one reason why patents of addition have been uncommon in Australia is because the law relating to inventive step has been so weak that they have generally been unnecessary (see my recent article on Australia’s ‘four laws of inventive step’).
However, with the commencement of the Raising the Bar reforms in Australia on 15 April 2013, perhaps the patent of addition will have a new lease on life. After a decade in the Australian patent profession, I have yet to set eyes on an actual application for a patent of addition, but I have been involved with a number of US applications in which obviousness-type double patenting objections have been raised.
If there is anything to this theory, applicants and their advisors in Australia will want to make sure that they are sufficiently familiar with the patent of addition to identify when it might be useful.
