By Renu Bala Rampal and Swaraj Singh Raghuvanshi
The term “post-dating” refers to changing a patent application’s priority date to a later date. The Indian Patent Act under Section 9 and 17 allows a patent application to be post-dated upto a maximum of 6 months from the priority date, provided that the request for post-dating is filed before the patent is granted.
Sections 9 and 17, Patents Act, 1970
The requirements listed in Sections 9 and 17 of the Patents Act, 1970, control the regulations pertaining to post-dating of patent applications. The provisions of Section 17 are subject to the restrictions of Section 9. This means that the Controller’s discretion for allowing postdating of a patent application, as specified in Section 17, are limited by the provisions of Section 9(1), which states that a complete specification must be filed within 12 months of the date of filing of a provisional application.
Manual for Patent Office Practice and Procedure
Various practical provisions have been published under Chapter 9.5 of the Patents Manual (of Practice and Procedure), inter alia to guide the allowance of post-dating of a patent application as provided for under the Patents Act, the interpretation of which is described below:
- A request for post-dating can be made at any time before the patent is granted. (Section 17(1));
- The post-dating period is limited to six months from the priority date (Section 17(1));
- Post-dating of the patent can be done only till the date of filing of the complete specification [as held in the case of Standipack Pvt. Ltd. vs. Oswal Trading Co. Ltd. (AIR 2000 Delhi 23, 80 (1999).
- Furthermore, Section 9 (4) of the Patents Act specifies the types of applications that can be post-dated, as follows:
- Section 9(1) states that a complete specification filed within 12 months from the filing date of provisional specification
- Section 9(3) states that a filed complete specification can be converted to a provisional specification within twelve months of the date of filing by requesting the Controller to treat the complete specification as a provisional specification, provided that the subject patent application is not a convention application or a PCT application. In other words, the complete specification must belong to an ordinary application to avail the benefit allowed under Section 9(3).
Fees and Forms
By filing Form 30 and paying the required money, an applicant can request for the post-dating of the complete specification. A request to post-date an application can be submitted at any time before the grant of the patent application.
Fee for filing a request to post -date a patent application:
|Application||Relevant Form||For e-filing||Physical Filing|
|Natural person, startup, small entity, or educational institution||Others, alone or with natural person, start up, small entity or educational institution||Natural person, startup, small entity or educational institution.||Others, alone or with natural person, start up, small entity or educational institution|
|Post – dating an application||Form 30||800||4000||880||4400|
Examination of Post-Dated Application
A post-dated application can be examined either before or after the issuance of the first examination report of the patent application.
- When a request for post-dating is filed prior to the examination of a patent application, the post-dated application is examined using the post-dated date as the priority date of the application.
- When a request for post-dating is filed after the issuance of first examination report of a patent application, the controller performs a fresh examination based on the post-dated date.
Timeline to file Post-dated convention application
An important point of note here is that according to Section 136 (3) of the Indian Patent Act, a convention application cannot be post-dated, utilizing the provisions under Section 17 (1), to a date subsequent to the date on which, under the provisions of the Patent Act, a convention application could have been made.
As a result, while requesting that a patent application be post-dated, it is necessary to keep the following in mind:
- A change in the priority date may result in inclusion of related prior arts published between the period of initial filing date and the date to which the application is post- dated.
- The covered invention should not have been publicly disclosed in the intervening period, either by a third party or by the applicant;
- It is desirable to perform extensive patent and non-patent literature searches to guarantee that no third party has disclosed equivalent subject matter to that of the invention in the intervening period.