This article concentrate on latest updates on Post-dating patent applications and its implication in Indian Patent Law along with USPTO, EPO and PCT jurisdiction.
What is Post-dating patent application?
A patent when first filed is known as the ordinary application and the filing date is known as the priority date. Now if an applicant wants to shift the priority date to a later date, this is known as post-dating.
It means a patent application which has been filed by an applicant can shift the date of filing to a future date instead maintaining the filing date and wishes to lose the priority of the older date.
Why is there a provision of Post-dating
patent application ?
The provision of post-dating is adopted to facilitate two scenarios:
- The applicant has filed a patent application with provisional specifications and is not yet ready with all data or proof of concept to file the complete specifications within the period of 12 months, hence the applicant wishes to extend the deadline for filing of complete specifications; or
- The applicant wishes to post-date and extend the deadline for PCT filing or Convention filing in a foreign country.
What does Indian Patent Act say about post-dating of patent application?
The regulations pertaining to post-dating of the patent applications are governed by the provisions mentioned in Section 9 and Section 17 of the Patents Act. The provisions of Section 17 are subject to the provisions of Section 9.
Section 17 of the Patent Act
Section 17 of the Patents Act, 1970 states that at any time after filing an application but before the grant of a patent the applicant may request for post-dating the patent application. However, the post-dating cannot be made to a date later than 6 months from the date on which the application was made.
Section 9 of the Patent Act
Section 9 (1) specifies that complete specification should be submitted within 12 months counted from the filing date of the provisional application.
The precedents set by Standipack Pvt Ltd v Oswal Trading Co Ltd courts 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). Hence, it is of utmost importance to meet the 12-month deadline to file complete specifications.
Further, Section 9(4) deals with the post-dating of the application. According to Section 9(4) the post-dating of the patent can be done only to the date of filing the complete specification where the complete specification has already been filed pursuant to the provisional application.
Section 17(1) of the Patents Act are to be interpreted in harmony with Section 9 of the Patents Act.Hence, in accordance with Section 9(4) if the complete specification is not filed to a provisional specification within 12 months, a request for post-dating under Section 17 cannot be filed.
What are the implications of post-dating when a patent application enters foreign countries?
USPTO :
§ 201.13 of the Manual of Patent Examining Procedure (MPEP) states that “if the original filing date is more than one year prior to the U.S. filing no right of priority can be based upon the application”. Here, the original filing date indicates the first date on which the provisional application is filed and not from the new filing date obtained after post-dated.
EUROPE :
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.
Generally, when a post-dating of an application is requested, the rights of the original application filed on the original subsists and it is not withdrawn.
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. Hence, unless one withdraws the original application, the new priority of the post-dated application shall not be considered.
PCT :
As per Rule 26bis.1(c) of the PCT, “Where the correction or addition of a priority claim causes a change in the priority date, any time limit which is computed from the previously applicable priority date and which has not already expired shall be computed from the priority date as so changed.” (https://videaimip.com/blog/pct-filing-how-to-correct-priority-date-errors/). 26bis.1 Correction or Addition of Priority Claim – The applicants must request for correction within 16 months from the date of priority. A request must be made within 4 months of the International Filing date.
In cases where the date of priority after correction or addition changes to an earlier date then the 16 months from the priority shall be calculated from the earlier priority date. In cases where the priority date changes from an earlier priority date to a later priority date even then the priority is calculated from the earlier priority date.
CONCLUSION:
It is recommended in this case not to go on a blind date and not to avail post-dating for extension of 12-month deadline for provisional specifications. It is best to comply to the 12-month deadline to avoid any pitfalls during patent prosecution in India and foreign countries.