This post was first published on 15th July, 2014.
A provisional patent application is usually filed with a singular purpose – To gain the first (earliest) filing date or to gain priority for the application. As we are aware, gaining priority or an earlier filing date is imperative to the patent grant process. Why then, do we find so many of us opting to post-date their provisional application before filing a complete specification?
Post-dating refers to the shift in the Priority date of an application to a later date. The post-dating provision is available in various jurisdictions and in India, an application, whether provisional or non-provisional, can be post-dated up to a maximum of 6 months from the Date of Filing of the application.
The Indian Patent Act, 1970 provides, under Section 9(4), that an applicant who has filed a provisional specification can request the Controller General of Patents Designs and Trade Marks (Controller) at anytime before the grant of the patent, to cancel the provisional specification and post-date the provisional specification to the date of filing of the complete specification. Under Section 17(1), the applicant has the option of filing a request to the Controller to post-date any application by a maximum period of six months from the original filing date. This type of post-dating is subject to the provisions of Section 9. Section 9 (1) specifies the deadline to file a complete specification pursuant to provisional application should be filed within 12 months of the filing date of the provisional application. Shifting of a complete specification’s filing deadline by post-dating the provisional application is an issue yet to be addressed by the IPAB or the courts.
History of Section 9 points out that the amendments 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. The repealing of this provision draws attention to the legislative intent which could have been to make the deadline of filing a complete specification stricter and non-extendable. The courts may interpret that since Section 17 is subject to the provisions of Section 9, a post-dating under Section 17 will not extend the deadline imposed by Section 9(1).
Section 9(1) addresses a common concern raised by most applicants – will the deadline for filing a complete specification pursuant to a provisional application be calculated from the original filing date or the post-dated date? It is preferable if applicants file the complete specification within 12 months of the original filing date of the provisional application to avoid pitfalls of any kind that may jeopardize the validity of the application.
This begs the question of whether the applicant can post-date the provisional application under Section 17, if a complete specification has already been filed. 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. This amendment may not change the interpretation made by the Delhi High Court regarding the interplay of the two sections.
Therefore, things to be borne in mind when a request for post-dating is made are:
- shift in priority date may lead to an increase in prior art related objections.
- the invention covered should not have been publicly disclosed either by a third party or the applicant in the intervening period.
- preferable that thorough patent and non-patent literature searches are conducted to ensure that there is no disclosure of similar subject matter as that of the invention, by any third party, in the intervening period.
It is strongly advised to applicants to adhere to deadlines of filing a complete specification pursuant to a provisional application.
The implications of post-dating an application when filing a convention or a PCT application will be discussed in subsequent posts.