Post-dating refers the process of changing the priority date of a patent application to a later date. The Indian Patent Act, 1970 allows a patent application to be post-dated under Section 17 of the Act to a period which shall not excess 6 months from the date of making the patent application, subject to the condition that the request for post-dating is made before patent registration.
Reason for Post-dating of patent application
The general idea behind the requirement of post-dating is that post-dating is done to extend the 12 months deadline to file the complete specification after filing a provisional specification, as in some cases the inventor require an extended time for filing. Nevertheless, it cannot be post-dated as explained below in the analysis. In certain cases, post-dating of a patent application may provide the applicants with an extension of time to complete certain post-filing formalities of the patent application provided the applicant ensures that the invention covered by the patent application has not been publicly disclosed either by the applicant himself or by any other party before post-dating the application. It is preferable if a thorough search of patent and non-patent literature is conducted to ensure that there is no disclosure of similar subject matter as that of the invention by any other person or entity, in the intervening period.
Another case that may arise is, the deadline for filing PCT application, that is 12 months, is missed which was claiming priority from an Indian Application. In such a case post-dating the filing date of the Indian patent application may be carried on.
Analysis of Indian Statutes related to Post Dating
The regulations pertaining to post-dating of the patent applications are governed by Section 9 and Sec 17 of the Patents Act, 1970. The provisions of Section 17 are subject to the provisions of Section 9 of the Act. This means that the powers of the controller as mentioned in Sec 17 for post-dating a patent application are restrained by the provisions of Sec 9(1) according to which complete specification must be filed within 12 months from the date of filing of the provisional application.
The following provisions deal with the post-dated filing of the application:
1) According to section 17(1), the request for post-dating can be made any time before the grant of the patent.
2) According to section 17(1), the post-dating can be done for a maximum period 6 months from the date of the application.
3) A provisional specification independently cannot be post-dated without filing the complete specification. In the matter concerning Standipack Pvt. Ltd. Vs. Oswal Trading Co. Ltd. (AIR 2000 Delhi 23), wherein the court while considering the provisions of postdating held that the aforesaid provisions make it quite clear that postdating of the patent can be done only to the date of filing of the specifications in entirety.
4) Sec 9(4) governs the possibility of post-dating the patent application, according to which, where a complete specification has been filed in pursuance of an application for a patent accompanied by a provisional specification or by a specification treated in accordance with the directions under sub-section (3) as a provisional specification, the Controller may, if the applicant requests at any time, before the grant of patent, cancel the provisional specification and post-date the application to the date of filing of the complete specification.
Section 9(4) implies that when the inventor has not provided sufficient disclosure or has provided incomplete information in the provisional specification, he can file a complete specification within 12 months of filing the provisional specification and thereafter may request to cancel the such provisional specification. In such a case, the date of application will be the date on which such complete specification is filed.
Therefore, applicants may exercise the option of post-dating a patent application after carefully weighing the possible implications of the same. Post-dating is a grey area in Indian patent law as the judiciary is yet to interpret the provisions of the Act.
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