Post-dating of a patent application deals with shifting of the priority date of a patent application to a later date. The need for such provision arises when one needs ample amount of time to work on the invention. The Indian Patents Act, 1970 offers provisions for post-dating of a patent application.
Section 17 and 9(4) of the Indian Patent Act deals with post-dating of a patent application. It shall be noted that only a complete application can be post-dated to a later date. To interpret the provisions of post -dating an application, one has to rely on the Judgement passed by Delhi High Court on MAY 26, 1999 in Standipack Private Limited & ... vs M/S. Oswal Trading Co. Ltd.
The Judgement recites:
"8. The aforesaid provisions make it crystal clear that post-dating of the patent can be done only to the date of filing of the complete specifications. In the present case the Controller of Patents had filed the original records relating to the grant of patent in favour of the plaintiff. The said records reveal that the application for the grant of patent was originally filed by plaintiff on 11.4.1989 and the complete specification was filed on 11.10.1990. The Controller of Patents however, post-dated the patent to 11.7.1989 although complete specifications followed by the provisional specification was filed on 11.10.1990. Thus the post-dating of the patent by the Controller to 11.7.1989 prima facie appears to be in violation of the provisions of Section 9 of the Act. The date of the patent, therefore, should have been 11.10.1990. The patent documents referred the validity of the patent for 14 years from 11.7.1990. Thus the validity of the patent has also been ignored by the Controller of Patents. The plaintiff also during the course of arguments admitted that complete specifications were submitted on 11.10.1990, which is the date from which the Patent granted would be effective. Thus post-dating the Patent to 11.7.1989 appears to be illegal in view of the provisions of Section 9(4) of the Patent Act and the provisions of Section 17 are subject to Section 9."
Further, section 9 (4) of the Indian patent act clearly mentions the type of application that can be post-dated which are as follows:
- A complete application filed within twelve months in pursuance of a provisional specification filed under section 9(1) and
- A complete specification filed in pursuance of section 9(3). Section 9(3) recites that a complete specification that has been filed can be converted to a provisional specification within twelve months from the date of such filing on requesting the Controller to treat the complete specification as provisional specification, provided the complete specification not being a convention application or a PCT application. In other words, the complete specification must be an ordinary application for the provision of section 9 (3).
How long an application for patent be post-dated?
An application for a patent can be post -dated only to six months from the date of filing of the complete specification. No application can be post- dated to a date later than six months from the date of such filing ( Section 17).
Section 17 should not lead to violation of the provisions section 9
Section 17 can be implemented only when the provisions of section 9 are met. This implies that post-dating does not shift the filing date of the complete specification more than 12 months as required under section 9 (1). The complete specification accompanied by the provisional specification has to be filed with the twelve months from the date of filing of the provisional specification.
In this context, a brief summary and decision of the Controller w.r.t 1064/DEL/2010 is discussed herewith for better clarity.
Fact of the case:
|
Application type |
Filing date |
Controller Decision |
|
Provisional application |
06 May, 2010, |
Refused Date: 31/03/2016 |
|
Complete application |
08 August, 2011 |
|
|
Request to post date of the provisional application from 06/05/2010 to 06/08/2010 |
05 May, 2011. |
In the present case, the Applicant had filed a request to post -date the provisional application on 05, May 2011 and subsequently filed the complete specification within twelve months from the new priority date i.e., 06/08/2010. Thus, extending the prescribed time limit of filing of complete specification to 08/08/2011 lead to violation of the provisions of section 9 of the Act.
Decision of the Controller recites,
"In view of above, complete specifications followed by the provisional specification was filed on 08/08/2011, while according to section 9(1), a complete specification shall be filed within twelve month from the date of application, which is 06/05/2010. There is GAP, which could not be filled by filing request for postdating of provisional application, which could be filed anytime before the grant of Page 3 of 3 patent, leading to abandonment of application under section 9(1) of The Patents Act, 1970, and revival of application by postdating of provisional application is against Law of Nature, as once anything treated as deemed to be abandoned, cannot be reconstituted/revived. There is GAP, but, present invention could motivate more innovation and could give momentum to WHEEL OF INVENTION, having potential of industrial applicability, if any. Thus, complete specification has not been filed within the prescribed time period according to section 9(1)of The Patents Act, 1970, and accordingly the application is hereby treated as deemed to have been abandoned according to section 9(1)of The Patents Act 1970."
Fees and Form
An applicant can file a request to post-date the complete specification by filing Form 30 and paying the prescribed fee. The request to post-date an application can be filed any time before the grant of the patent application.
Fee for filing a request to post -date a patent application:
|
Application |
Form |
For e-filing |
Physical Filing |
||
|
Natural person, start up, small entity or eligible educational institution |
Others, alone or with natural person, start up, small entity or eligible educational institution |
Natural person, start up, small entity or eligible educational institution |
Others, alone or with natural person, start up, small entity or eligible educational institution |
||
|
Post - dating an application |
Form 30 |
800 |
4000 |
800 |
4400 |
Examination of post - dated application:
|
Post-dating request made before examination |
Post-dating request made after examination |
|
The examination of the post-dated application is conducted considering the post- dated date as the priority date of the application. |
A fresh examination considering the post-dated date is carried, when a request to post-date, an application is made after the issuance of First Examination Report. |
Timeline to file a post- dated convention application in India
Section 136 (3) of the Indian Patent Act states that a convention application cannot be post-dated under Section 17 (1) to a later date. This implies that the convention application should be filed within twelve months from the date of the first application.
CONCLUSION:
Shifting the priority date to a new date bear the risk of including more number of prior art references with respect to the claimed invention. Additionally, one has to take utmost care to avoid violation of section 9, while applying for post-dating of a patent application as it may lead to refusal of the patent application. Therefore, one has to analyse the repercussions of the post dating a patent application before opting for such provision.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.