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Post-dating Patent Applications: Frisk it Before You Risk it!

BananaIP Counsels > Intellectual Property  > Post-dating Patent Applications: Frisk it Before You Risk it!

Post-dating Patent Applications: Frisk it Before You Risk it!

Our previous article on post-dating exposed the risks involved in the shifting ahead of the priority date of an application. The risk of losing priority can cost you dearly. Today’s post, however, unravels the puzzling question of how to claim priority even from a post-dated application!

We are aware that most applicants tend to post-date a provisional application as the deadline to file a non-provisional application (or complete application, in some jurisdictions) approaches, for reasons best known to the Applicants. Another commonly availed option is to post-date the priority application when the deadline to file a foreign application (1 year from the date of filing priority application) is missed. However, most of us tend to take it for granted that such post-dating will not jeopardize our patent rights and hence fearlessly proceed with the option. A peek into the legislation of certain jurisdictions might prompt us to reconsider these decisions to post-date applications.

To begin, upon filing an International Application (PCT Application), the priority of a post-dated application can be claimed only if, at the time of post-dating the application, the deadline to file a PCT application had not expired (Rule 26Bis.1(C)). Thus, the priority of a post-dated application will only be considered provided a request for post-dating the original application was filed within 12 months of filing the original application. However, upon loss of this deadline to file an International Application, a request to restore the priority application can be filed within 12 months of the date of priority with the Receiving Office and may be restored based on certain factors.

US patent laws do not consider the priority claimed from a post-dated application (213.03 MPEP). This section recognizes the practice of post-dating in other jurisdictions but also lays down that the 1-year filing deadline for an application will remain the same, i.e., from the original filing date, even if the priority application is post-dated. This provision may raise ambiguity regarding what is considered the original filing date. The term “original filing date” refers to the first filing date accorded to the application and thus the it cannot be construed as the shifted/post-dated priority date or the new filing date.

This understanding was further clarified by the Commissioner of Patents in In re Clamp (151 USPQ 423 (Comm’r Pat. 1966)), wherein the applicant filed a provisional specification on February 8, 1963, and thereafter post-dated it to March 6, 1963. The applicant then filed an application in the United States on March 5, 1964. The Commissioner was of the opinion that the application cannot be considered as being filed timely in accordance with Section 119. He further opined that the original actual filing date is determinative and “the effect of starting the year running by the proper filing of a proper application cannot otherwise be eradicated as the Paris Convention, which gives us the right to file convention rights, neither intended nor contemplated the creation of an arbitrary date.” Thus, it was made lucid that a Convention Application filed in the US will claim priority from the original filing date and not from the new filing date of a post-dated application.

In Europe, the priority date of a post-dated application will be considered only if the previous application is deemed withdrawn, abandoned, refused and remains unpublished at the time of filing a subsequent application. Thus it is evident that at the time of requesting shift in priority date or filing a request for post-dating the application, the rights in the original application subsist and therefore the original application will always be considered to serve as the priority application. The statute indirectly specifies that the deadline to file a Convention Application in Europe will be calculated from the original filing date and not from the new filing date.

Any Convention Application filed in India has to be filed within 12 months from the date of filing of the priority application. This can be interpreted to include priority of post-dated applications. An applicant needs to consider the consequences before requesting any shift in priority date especially if he/she is interested in patent protection in various countries.

We still are of the opinion that deadlines to file non-provisional specifications in and/or outside India claiming priority from any application must be diligently monitored and strictly followed to avoid any potential threat to grant and thereby the enjoyment of patent rights.

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