Post-Dating in India:
The meaning and merits and demerits of a provisional application have been explained in the previous blog post. Within 12 months of filing a provisional application, the complete specification has to be filed, in order to prevent the provisional application from being abandoned. This is envisaged in Section 9(1) of the Patents Act, 1970. The question that arises then is whether the time limit of 12 months for filing the complete specification can be extended.
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.
Post-dating provisions under Patent Act:
This provision for post-dating a patent application applies to both provisional as well as complete specifications. The content of Section 17 is subject to the provisions of Section 9.
The most significant question that arises is whether post-dating a provisional patent application simultaneously increases the time limit for filing the complete application. In simple words, whether the time limit for filing the complete specification will be calculated from the date of filing the application or from the post-dated date. There is no direct answer to this as neither Section 9 nor Section 17 contains anything about shifting the 12-month deadline.
Owing to this different interpretations must be taken recourse to. The fact that the contents of Section 17 are subject to Section 9 leads to the conclusion that the provisions of Section 9 must comply with before invoking Section 17. This means that irrespective of post-dating, the complete specification must be filed within 12 months of filing the provisional specification. Post-dating a provisional specification does not extend the 12 months time limit for filing the complete application. Given this unsure scenario, it is always better for applicants to file the non provisional application within 12 months.
In the US there is no provision for increasing the time limit for filing the non provisional patent from the provisional patent application date. This means that the deadline for filing a convention application in the US is 12 months, irrespective of whether the application is post-dated or not. However, a nonprovisional application that was filed more than 12 months after the filing date of the provisional application, but within 14 months after the filing date of the provisional application, may have the benefit of the provisional application restored by filing a grantable petition (including a statement that the delay in filing the nonprovisional application was unintentional and the required petition fee) to restore the benefit under 37 CFR 1.78.
Article 87(4) of the European Patent Convention allows for a subsequent application in respect of the same subject-matter as a previous first application and filed in or for the same State shall be considered as the first application for the purposes of determining priority, provided that, at the date of filing the subsequent application, the previous application has been withdrawn, abandoned or refused, without being open to public inspection.
Additionally, WIPO, United Kingdom, and New Zealand also provide post-dating of the patent application. Whether in cases of filing a complete specification after filing a provisional application or filing a convention application, the conditions for the extension of the time limit for filing vary depending on the country. In this uncertain scenario, it is always better to adhere to the general 12 months time limit for filing a non provisional patent application.