I have faced some back to back queries regarding Post Dating of Provisional Applications filed in India under Indian Patent Act (hereinafter IPA). The queries were both from domestic and foreign clients. The simple and straight answer is'No'. There is no clear cut provision that explicitly states post dating a provisional application is possible. Let's go in a step-by-step manner.
1. Under Section 9(1) of IPA, a complete specification has to be filed within 12 months from the date of filing of a provisional specification. If a complete specification is not filed within the stipulated time period of 12 months, the corresponding patent application is deemed to be abandoned.
This section clearly sets a time period of 12 months to file the complete specification, that will be examined and granted, as per law. Failure to do so, will automatically result in abandonment. There is no provision in IPA that will enable revival of such abandoned application.
2. Post dating of applications is provided under Section 9(3), Section 9(4) and Section 17(1) of IPA.
a) Section 17(1) states that a Controller can allow post dating of an application by a maximum of 6 months, upon filing of such request. However, Section 17(1) is subject to the provisions laid down in Section 9. In simple words, Section 9 must be complied with prior to post dating any application under Section 17(1).
b) Section 9(3) states that a Controller can allow posting dating of an application accompanied with a specification purporting to be a complete specification by allowing consideration of such application as provisional application. However, the time to make such request is 12 months from date of filing the application. Accordingly, one is post dating a complete application but not a provisional application.
c) Section 9(4) states that when a complete specification has been filed following a provisional application, then the Controller can allow the application to be post dated to the date of filing of the complete specification. The time to make such request is till grant of patent. Once the patent has been granted, the post dating will not be allowed.
Thus, only applications having complete specifications can be post dated. This makes Section 9(1) sacrosanct. Even the Delhi High Court in the case of Standipack Pvt. Ltd. Vs. Oswal Trading Co. Ltd. (AIR 2000 Delhi 23, 80 (1999), has stated that “The aforesaid provisions make it crystal clear that postdating of the patent can be done only to the date of filing of the complete specifications”. Recently, few Controllers are rejecting such post dated applications as well.
True, with post dating, the applicant is loosing on priority date. Therefore argument stating 'post dating should be allowed for provisional application' is gaining popularity. However, a post dating provisional application is direct violation of Section 9(1) in absence of any overriding section or rule. A consideration should also be given that 12 months are available to draft complete specification and finalize the same after filing provisional application. If applicant is still unable to file application with such give period, then there are two ways:
1) abandon the provisional application and file a new application with complete specification:
This will provide fresh date of filing. However, a priority of provisional application is lost.
2) file complete specification within 12 months, convert the same to provisional application, and file complete specification again.
This will still lead to loss of priority with respect to the first filed provisional application.
Further, a threat of new prior art always looms due to such loss of priority.
Thus, a better solution would be to work on the complete specification without delay after filing the provisional application and avoid any loss of priority.
1. Under Section 9(1) of IPA, a complete specification has to be filed within 12 months from the date of filing of a provisional specification. If a complete specification is not filed within the stipulated time period of 12 months, the corresponding patent application is deemed to be abandoned.
This section clearly sets a time period of 12 months to file the complete specification, that will be examined and granted, as per law. Failure to do so, will automatically result in abandonment. There is no provision in IPA that will enable revival of such abandoned application.
2. Post dating of applications is provided under Section 9(3), Section 9(4) and Section 17(1) of IPA.
a) Section 17(1) states that a Controller can allow post dating of an application by a maximum of 6 months, upon filing of such request. However, Section 17(1) is subject to the provisions laid down in Section 9. In simple words, Section 9 must be complied with prior to post dating any application under Section 17(1).
b) Section 9(3) states that a Controller can allow posting dating of an application accompanied with a specification purporting to be a complete specification by allowing consideration of such application as provisional application. However, the time to make such request is 12 months from date of filing the application. Accordingly, one is post dating a complete application but not a provisional application.
c) Section 9(4) states that when a complete specification has been filed following a provisional application, then the Controller can allow the application to be post dated to the date of filing of the complete specification. The time to make such request is till grant of patent. Once the patent has been granted, the post dating will not be allowed.
Thus, only applications having complete specifications can be post dated. This makes Section 9(1) sacrosanct. Even the Delhi High Court in the case of Standipack Pvt. Ltd. Vs. Oswal Trading Co. Ltd. (AIR 2000 Delhi 23, 80 (1999), has stated that “The aforesaid provisions make it crystal clear that postdating of the patent can be done only to the date of filing of the complete specifications”. Recently, few Controllers are rejecting such post dated applications as well.
True, with post dating, the applicant is loosing on priority date. Therefore argument stating 'post dating should be allowed for provisional application' is gaining popularity. However, a post dating provisional application is direct violation of Section 9(1) in absence of any overriding section or rule. A consideration should also be given that 12 months are available to draft complete specification and finalize the same after filing provisional application. If applicant is still unable to file application with such give period, then there are two ways:
1) abandon the provisional application and file a new application with complete specification:
This will provide fresh date of filing. However, a priority of provisional application is lost.
2) file complete specification within 12 months, convert the same to provisional application, and file complete specification again.
This will still lead to loss of priority with respect to the first filed provisional application.
Further, a threat of new prior art always looms due to such loss of priority.
Thus, a better solution would be to work on the complete specification without delay after filing the provisional application and avoid any loss of priority.
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