Deciphering Post-Dating of Patent Applications

While post-dating a patent application comes with the risk of new prior arts against the invention and the possibility of disclosure, it also gives the inventor sufficient time to file their application comprehensively

OVERVIEW

With the global pandemic, COVID-19, taking over our lives on every front, its impact on the grant of patents has been considerable; scientists and innovators have been restricted to their homes with only time as a constant. This in turn has made post-dating of patent applications more relevant and necessary to prevent applications from being abandoned due to incomplete research and submissions.

Post-dating of patent applications in India is analogous to several other common law jurisdictions. In a nutshell, post-dating a patent application implies to change or replace the priority date of the application to a later date; Section 17 of the Patents Act, 1970 (hereinafter 'the Act') read with Section9 of the Act provides for the same. This article sheds light on the procedure established in the Indian jurisdiction for post-dating by analyzing the said provisions under the Act, and relevant case law.

TIMELINES

In India, the Act enables a patent application to be post-dated under Section 17 to a maximum period of six (6) months from the date of filing an application; provided that, the request for post-dating must be made before the patent is granted by the Controller. The powers of the Controller as stipulated under Section 17 of the Act for post-dating a patent application are subject to the provisions of Section 9 of the Act, and more particularly, Section 9(1) viz., a complete specification must be filed within twelve (12) months from the date of filing of the provisional application, failing which, the application will be considered as abandoned.

PROVISIONAL VIS-À-VIS COMPLETE PATENT APPLICATION

A patent application under Section 9(1) of the Act must necessarily be accompanied by a provisional or complete specification, as mandated under the said provision. Since Section 17 of the Act is subject to the provisions of Section 9 of the Act, an application post-dated under Section 17 of the Act will always be considered to be within the deadline imposed by Section 9(1) of the Act.

In Imperial Chemical Industries Ltd. (Clark's) Application,¹ it was held that a provisional specification had to contain only a description of the general nature of the invention, its field of application and the anticipated result. Similarly, in Sandow Ld. v. Szalay,² it was held that the purpose of the provisional specification is to ascertain and describe the nature of the invention. But the complete specification must ascertain and particularly describe the nature of the invention and also mention the manner in which the invention is to be executed. The pertinent issue here is the process by which an applicant or inventor can add to an existing application without losing out on the priority date.

ATTEMPT TO UNRAVEL SECTION 17 IN A DIFFERENT WAY:

The applicability of post-dating was elucidated by the Hon'ble Delhi High Court, in Standipack Private Ltd. v. Oswal Trading Co. Ltd.,³ wherein it was authoritatively held that post-dating of the priority date of an application for a patent could be done only to the date of filing the complete specification. Thereafter, Sections 9 and 17 of the Act were amended to extend the deadline for filing a request for post-dating from any time before the acceptance of the complete specification to before the grant of the patent.⁴

The following section contains an analysis of some of the applications wherein the request for post-dating was in accordance with the procedure to post-date a patent application along with certain refusal orders to comprehend the grounds of such refusal.

In an order dated March 31, 2016, in relation to Application No. 1343/DEL/2005, the Controller concluded that Section 17 should always be read in conjunction with Section 9 of the Act. Section 9(1) of the Act mandates that a complete specification must be filed within twelve (12) months from the date of the provisional application. The Controller held that since the complete specification, filed on August 24, 2006, exceeded the twelve (12) month period from the date of application i.e., May 25, 2005, the 'gap' could not be filled by filing a request for post-dating the patent application, thus resulting in the abandonment of the patent application under Section 9(1) of the Act.

Further, the Controller stated that the revival of an application by post-dating a provisional application was against the law, as once a thing was deemed to be abandoned, it cannot be reconstituted or revived. Similar orders were passed for the other applications as well viz., 2036/DEL/2005, 1536/DEL/2005, and 1064/DEL/2010.

ANALYSIS

This next segment of the article analyzes the Act in the light of the orders passed by the courts and patent office.

DATE OF FILING AN APPLICATION

Section 17 mandates the filing of a post-date request, "any time after the filing of an application and before the grant of the patent under this Act." The relevant question is, what ought to be considered as 'filing of an application' or 'date of filing.' To decode this, reference is made to Sections 7, 9, and 11 (7) of the Act.

Section 7 defines the form of a patent application, whereby the date of filing will be the date on which the application is filed in the patent office. Further, Section 9(1) of the Act states that where a patent application is accompanied by a provisional specification, the complete specification must be filed within twelve (12) months from the date of filing of the application. Thus, 'date of filing' as per Section 9(1) of the Act is the filing of the provisional specification. At this juncture, it is pertinent to mention that Section 9(4) of the Act permits post-dating of an application, whereby the Controller can, at the request of the applicant, post-date the application to the date of filing of the complete specification.

In a case relating to post-dating, the applicant M/s. Hikal Limited⁹ filed an application with provisional specification on August 14, 2007; later, on August 14, 2008, a request was made to the Controller for post-dating the application by one (1) month. In other words, the priority date was shifted from August 14, 2007 to September 14, 2007, thereby enabling the filing of the complete specification by September 14, 2008, twelve (12) months from the requested post-dating. The applicant contended that the ratio of the Standipack judgment was based on the Act before the amendments. However, after the amendment, specifically in Section 45 of the Act, the same judgement may no longer be applicable. The applicant thus submitted that upon grant of patent for the instant Application, the term of patent commences from September 14, 2007. Therefore, the law permits post-dating of application for patent. The Controller concurred with the applicant's submissions and the patent was held to be eligible for grant vide order dated February 20, 2018. The key takeaway from the Controller's decision in the Hikal case is that Section 17 of the Act includes the post-dating of provisional application.

INTERPRETATION OF SECTION 11 (7) OF THE ACT

Section 11(7) of the Act clarifies that, "the reference to the date of filing of the application or complete specification in cases where there has been a post-dating under Section 9 or Section 17 shall be a reference to the date so post-dated." This section bypasses any ambiguities and clarifies that the 'date of filing of the application' and the date of filing of the 'complete specification' can be two different dates and reference to the 'date of filing of the application' is to the later date, if applicable under Section 17 read with Section 9 of the Act.

Adding impetus to this provision is the Manual of Patent Office Practice and Procedure ('the Manual'),¹⁰ which, although not legally binding, serves as a practical guide for effective prosecution of patent applications in India. On the topic of post-dating a patent application, it states that Section 17 of the Act permits post-dating of an application for both, provisional and complete applications, provided it is post-dated before the grant of the patent. Further, it states that if post-dating is allowed after publication of the application, the same must be published in the Official Journal and specify the new date of filing.

SECTION 17 IS SUBJECT TO SECTION 9 OF THE ACT:

It is necessary to establish that while Section 17 of the Act provides for post-dating a patent application, Section 9 is the governing provision. Admittedly Section 9(1) stipulates that a patent application accompanied by a provisional application requires a complete specification to be filed within twelve (12) months from the date of filing the application – is this then to be interpreted that provisional applications cannot be post-dated?. Section 11(7) offers an alternate interpretation whereby it can be understood that both, provisional and complete applications, can be post-dated.

Reference may be made to Justice N. RajagopalaAyyangar's Report, where, relying on Terrell's 'Law of Patents', Justice Ayyangar highlighted the concept and effect of post-dating as an option for the applicant to obtain more time to file a complete specification but at the risk of having his patent wholly or partially invalidated by some disclosure or application made in the meantime.¹¹ Thus, in the light of this, Section 11(7) of the Act, and the Manual, it is reasonable to conclude that provisional applications can be post-dated, provided they are done before the patent has been granted.

Legislative intent ought to be taken into consideration; Section 9(1) of the Act specifies the twelve (12) month period to prevent perpetual extensions of a patent application and/or withholding further innovation. At the same time, Section 9 of the Act should not be narrowly interpreted to only permit post-dating of applications with complete specifications, but rather permit post-dating of both, provisional and complete applications, provided it is prior to the grant of the patent.

Another point to be noted from a practical perspective is that, irrespective of the interpretation of Section 9 of the Act, nothing prevents an applicant to withdraw a previously filed provisional application and file a fresh provisional at a later date. After such withdrawal, he may also file directly a complete specification. In the former case, the requirement of having to file a complete specification within 12 months of the provisional specification would arise only from the date of the freshly filed provisional application. In adopting this methodology, the applicant bears the risk of intervening prior arts. Thus, it appears that interpreting Section 9 of the Act to only permit post-dating of applications subject to the complete specifications being filed within 12 months of the provisional specification seems illogical.

CONCLUSION:

As is known, while post-dating a patent application comes with the risk of new prior arts against the invention and the possibility of disclosure, it also gives the inventor sufficient time to file their application comprehensively. Considering the decisions of the patent office and in the absence of an authoritative ruling of a superior court, it is advisable to file the complete specification within twelve (12) months from the filing date of the original provisional application to avoid any adverse order.