Post dating means changing the priority date of a patent application to a later date. The Indian Patent Act enables a patent application to be post dated under Sec 17 of the Patents Act to a maximum of 6 months from the date of making this kind of application, provided that the request for post dating is made before the grant of the patent.
Why is Post dating done?
Securing the earliest priority date for a patent is a known fact; filing a provisional application is done for this precise reason. But if that is a known fact, why in some instances, do inventors choose post dating for their patent applications?
The general perception behind the requirement of post dating is that post dating is done to extend the 12 months timeline to file the complete specification after filing a provisional specification, as in some cases, the inventor needs more time for filing. However, it can not be postdated, as explained below in the analysis.
Another scenario might be when the deadline for filing a PCT application (i.e., 12 months) is missed, which was claiming priority from an Indian Application; post dating the filing date of the Indian patent application might be advised.
Analysis of Indian Statutes related to Post Dating:
The regulations about post dating of the patent applications are governed by the provisions mentioned in Sec 9 and Sec 17 of the Patents Act. The requirements of Sec 17 are subject to the provisions of Sec 9. This means that the powers of the Controller, as mentioned in Sec 17 for post dating a patent application, are restrained by the requirements of Sec 9(1) that a complete specification must be filed within 12 months from the filing date of the provisional application.
Regarding the post dating of the applications, some provisions have been published in chapter 9.5 of the Patents Manual, whose interpretation is given below:
– The request for post dating can be made any time before the grant of the patent. (Sec 17(1))
– The post dating can be done for a maximum of 6 months from the date of the application. (Sec 17(1))
– A provisional specification alone cannot be post dated without filing the complete specification. In Standipack Pvt. Ltd. Vs. Oswal Trading Co. Ltd. (AIR 2000 Delhi 23, 80 (1999), wherein the judge, while considering the provisions of postdating, clearly stated in paragraph 8 that “The provisions mentioned above make it quite clear that postdating of the patent can be done only to the date of filing of the complete specifications.”
– Sec 9(4) governs the possibility of post dating the patent application, which reads as:
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 by a direction under sub-section (3) as a provisional specification, the Controller may, if the applicant so requests at any time before [grant of the patent], cancel the provisional specification and postdate the application to the date of filing of the complete specification.
The interpretation of Sec 9(4) is 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 may request to cancel such provisional specification. In this case, the date of application will be the date on which such complete specification is filed.
Adhering to the Patent Application timelines is crucial. It is always advised to seek professional help to ensure appropriate guidance for your patent applications.
