Post Dating of Patent Application – India

In India a provisional patent application is filed to gain the earliest filing date (priority date) for the invention. Reserving the earliest filing date is important in terms of patent grant process.

Post dating of Application

In general, post-dating refers to the shift in the Priority date of an application to a later date. General perception was that the provision of post dating is provided to extend the 12 months time to submit the complete specification after the provisional application.

Hence, the question arises does Indian Patent Act has a provision of extending the 12 months time period. Upon review of Section 9 and Section 17, it is observed that both the sections does not contain any provision about shifting the 12-month deadline for filing the complete specification.

Historical Change in Section 9

The Amendments carried out in the Patents Act in 2005 deleted the portion of the then-prevalent Section 9(1) which provided that complete specification may be filed at any time after 12 months but within 15 months from the filing of provisional specification if a request in this regard was made to the Controller along with the prescribed fee.

Earlier there was a provision in Section 9(1) for extending the time period from 12 months to 15 months to file the complete specification. Later, in 2005 through Patents Amendments changes have been made in the Section 9 (1), According to which “Where an application for a patent (not being a convention application or an application filed under the Patent Cooperation Treaty designating India) is accompanied by a provisional specification, a complete specification shall be filed within twelve months from the date of filing of the application, and if the complete specification is not so filed, the application shall be deemed to be abandoned”

This change was intended to make the deadline of filing a complete specification stricter and non-extendable.

Amended Sections

Section 17 of the Patent Act

Section 17 of the Patents Act, 1970 states that at any time after filing an application but before the grant of a patent the applicant may request for post-dating the patent application. However, the post-dating cannot be made to a date later than 6 months from the date on which the application was made.

Section 9 of the Patent Act

Section 9 (1) specifies that complete specification should be submitted within 12 months counted from the filing date of the provisional application.

Section 9(4) deals with the post dating of the application. According to Section 9(4) the post-dating of the patent can be done only to the date of filing the complete specification where the complete specification has already been filed pursuant to the provisional application.

Hence, it is clear from Section 9(4) that if the complete specification was not filed pursuant to filing a provisional specification within 12 months, a request for post-dating under Section 17 cannot be filed.

Case Laws

In 1999, the Delhi High Court in Standipack Pvt. Ltd. v. Oswal Trading Co. Ltd. (1999 IVAD Delhi 613, AIR 2000 Delhi 23, 80 (1999) DLT 56) cited the then Section 9 and Section 17 and stated that provisions make it crystal clear that post-dating of the patent can be done only to the date of filing of the complete specification. The amendments to Section 9 and Section 17 thereafter, extended the deadline for filing a request of post-dating from any time before the acceptance of the complete specification to any time before the grant of the patent.

In view of above, it is advisable to adhere to deadlines of filing a complete specification pursuant to a provisional application.

Points to remember while post-dating the application:

  • Post-dating may increase the risk of new prior arts for the invention.
  • Invention should not have been publicly disclosed either by a third party or the applicant during the extended period.
  • A thorough patent and non-patent literature searches should be conducted to ensure that there is no disclosure of similar subject matter during the extended period.

Comparison of Post Dating provision in India, US and Europe

INDIA USA EUROPE
  • Post-dating is allowed. The maximum time to post date the application is 6 months which is counted from the date on which the application was made.
  • Before post dating complete specification must be filed within 12 months from the provisional filing date. Otherwise post dating of the application will not be allowed.
  • No provision for extending the time for filing the complete specification after provisional application
  • A non-provisional application that was filed after 12 months but within 14 months of the provisional application, may have the benefit of the provisional application restored by filing a grantable petition.
  • European Patent Convention allows subsequent application with same subject-matter as a previous first application and the previous application has been withdrawn, abandoned or refused, without being open to public inspection.

 

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