Implications of post-dating provisional patent applications

A provisional application is generally filed to gain priority for a patent application, as the priority date plays a vital role in the grant of the patent. If an applicant needs more than the prescribed period to file a complete specification, an applicant may post-date a patent application, accompanied by a provisional specification. In patents, post-dating refers to the shift of the priority date of a patent application to a later date.

Provisions for post-dating
In India, Section 17 of the Patents Act deals with post-dating of patent applications, which are subject to Section 9. This report discusses whether invoking the Patent Act provisions relating to post-dating increases the time limit for filing a complete specification when a patent application is filed with only a provisional specification.

Section 17(1) of the Patents Act states as follows:

"17. Power of Controller to make orders respecting dating of application.

(1) Subject to the provisions of section 9, at any time after the filing of an application and [before the grant of the patent] under this Act, the Controller may, at the request of the applicant made in the prescribed manner, direct that the application shall be post-dated to such date as may be specified in the request, and proceed with the application accordingly:

Provided that no application shall be post-dated under this sub-section to a date later than six months from the date on which it was actually made or would, but for the provisions of this sub-section, be deemed to have been made."

Section 17(1) states that a patent application may be post-dated up to six months from the date on which it is actually filed. However, it is evident from the preamble of Section 17(1) that the section is subject to Section 9, which means that all subsections of Section 9 must be complied with before implementing Section 17.

In 1999 the Delhi High Court in Standipack Pvt Ltd v Oswal Trading Co Ltd ((1999 IVAD Delhi 613, AIR 2000 Delhi 23, 80 (1999) DLT 56)) cited Sections 9 and 17, and stated that a patent could be post-dated only to the date of filing the complete specification. In this decision the court did not take into account the legislative intent behind the introduction of the concept of post-dating where the complete specification has not been filed pursuant to the provisional application and where the applicant intends to post-date the patent application. Since this decision, the issue of post-dating has not been addressed by any other court or the IP Appellate Board.

Legislative intent
In order to discover the legislative intent behind the introduction of the post-dating concept in the Patents Act, it is wise to examine the report submitted by the Rajgopala-Ayyangar Committee (RAC) to the government of India on its suggestions for the revision of the Indian patent law to suit industry needs. On the subject of post-dating, the RAC cited the following quote: “The applicant gets more time for filing a complete specification for putting his application in order but at the risk of having his patent wholly or partially invalidated by some disclosure or application made meanwhile.” (Terrell, Law of Patents, page 39.)

Sections 9(1) and 9(4) of the Patents Act are the most relevant when interpreting the scope of Section 17(1) of the act. Section 9(4) deals with post-dating the application, according to which 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. In other words, it is evident from Section 9(4) that it does not apply to cases where, pursuant to filing a provisional specification, the complete specification was not filed at the time of making a request for post-dating under Section 17.

Moreover, Section 17(1) allows the post-dating of a patent application by up to six months, and Section 9(4) allows post-dating by more than six months. Section 17(1) appears not to apply in the case where the complete specification has already been filed pursuant to the provisional application due to the fact that Section 17(1), which allows post-dating by up to six months, is prefaced by the words “Subject to the provisions of Section 9”, and Section 9(4) allows post-dating in similar cases by more than six months. This preface infers that Section 17 is subservient to Section 9 of the Patents Act, and that if any provision of Section 17(1) conflicts with the mandate contained in Section 9, Section 9 will govern. Therefore, Section 17(1) of the Patents Act cannot be interpreted in a way which may conflict with Section 9 of the Patents Act.

Therefore, while invoking Section 17(1) for the post-dating of a provisional application where the complete specification has not been filed, Section 9(4) must not be taken into account.

Further, the reading of Section 17(1) alongside Section 9(1) raises concern as to whether the deadline for filing a complete specification pursuant to a provisional application is to be calculated from the original filing date or from the post-dated date. The Patents Act provides no clear answer. However, the RAC report can be interpreted as suggesting a legislative intent to introduce the post-dating provision into the act in order to provide more time for filing a complete specification at the cost of some risk involved in shifting the priority date.

In view of the unfavourable precedent set by the Delhi High Court in Standipack, an applicant must carefully consider the consequences before requesting a shift in the priority date of a patent application where the intention of the applicant is to obtain an extension of time to file a complete specification.

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