IPA patent 7.12.5-patents-of-addition — IP Australia Patent Manual of Practice and Procedure – 7.12.5 Patents of Addition

Also in this Chapter: 7.12.1 Section 70 Considerations ​​​​​​​ 7.12.2 Applying for an Extension of Term 7.12.3 Processing an Application for an Extension of Term 7.12.4 Calculating the Length of the Extension of Term ​​​​​​​ 7.12.6 Divisional Applications 7.12.7 Oppositions to an Extension of Term 7.12.8 Relevant Court Proceedings Pending 7.12.9 Rectification of the Register Key Legislation: Patents Act: s83 Term of patent of addition Section 83 covers the extension of term provisions for patents of addition. In general, patents of addition remain in force for as long as the patent for the main invention remains in force. However, sec 83(3) and sec 83(4) provide exceptions to this rule. Under sec 83(3) , the term of a patent of addition may be extended even though the patent for the main invention is not. For example, a patent of addition may be granted for a pharmaceutical substance in situations where the substance is not patentable as a separate invention, as it does not involve an inventive step in respect of the disclosure of the patent for the main invention. If a pharmaceutical substance registered in the Australian Register of Therapeutic Goods is only in substance disclosed in the patent of addition, and not in the patent for the main invention, it will only be the patent of addition which is eligible to have its term extended. In this case, the patent of addition becomes an independent patent when the extension of term begins. Under sec 83(4) , where the patent for the main invention is extended and the term of the patent of addition is not, then the term of the patent of addition expires at the end of the unextended term of the patent for the main invention.