Filing a postdated patent application – Patent

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The term “postdating” refers to changing the priority date of a patent application to a later date. The Indian Patent Act, under Sections 9 and 17, allows a patent application to be postdated up to a maximum of 6 months from the priority date, provided that the postdating request is filed before the grant of the patent.

Sections 9 and 17, Patents Act, 1970

The requirements listed in sections 9 and 17 of the Patents Act 1970 govern the regulations relating to the postdating of patent applications. The provisions of Section 17 are subject to the restrictions of Section 9. This means that the Controller’s discretion to allow postdating of a patent application, as specified in Section 17, is limited by the provisions of Article 9(1), which stipulates that a complete specification must be filed within 12 months from the date of filing of a provisional application.

Patent Office Practices and Procedures Manual

Various practical provisions have been published under Chapter 9.5 of the Patent Manual (Practice and Procedure), in particular to guide the authorization of postdating of a patent application, as provided for in the Patent Act, the interpretation of which is described below:

  1. A request for postdating can be made at any time before the grant of the patent. (section 17(1));

  2. The postdated period is limited to six months from the priority date (Article 17(1));

  3. Post-dating of the patent can only be carried out up to the date of filing of the complete description[asinthecaseof
    Standipack Pvt. Ltd v Oswal Trading Co. Ltd. (AIR 2000 Delhi 23, 80 (1999).

  4. In addition, Section 9(4) of the Patents Act specifies the types of applications which may be postdated, as follows:
  • Section 9(1) provides that a full specification filed within 12 months of the date of filing of the provisional specification
  • Section 9(3) provides that a filed full specification may be converted to an interim specification within twelve months of the filing date by instructing the Controller to treat the full specification as an interim specification, provided that the patent application in question is not an agreement. application or a PCT application. In other words, the entire specification must belong to an ordinary application to receive the benefit allowed under Article 9(3).

Fees and forms

By filing Form 30 and paying the required amounts, an applicant may request postdating of the complete specification. A request to postdate an application may be made at any time before the grant of the patent application.

Fee for filing a post-date application for a patent application:1






Post-date request of a patent application
Application Relevant form For electronic filing Physical deposit








publication request
Individual, startup, small entity or educational institution Others, alone or with a natural person, start-up, small entity or educational institution Individual, startup, small entity or educational institution. Others, alone or with a natural person, start-up, small entity or educational institution
Post – dating an application Form 30 800 4000 880 4400

Examination of the postdated application

A postdated application may be examined before or after the issuance of the first examination report of the patent application.

  1. Where a postdating request is filed prior to examination of a patent application, the postdated application is examined using the postdated date as the priority date of the application.

  2. When a request for postdating is filed after the issuance of the first examination report of a patent application, the controller carries out a new examination on the basis of the postdated date.

Deadline for submitting a request for a post-dated agreement

An important point to note here is that according to Section 136(3) of the Indian Patents Act, a patent application cannot be post-dated, using the provisions of Section 17(1), to a date later than the date on which, under the provisions of the Patent Act, a conventional application could have been filed.

Relevant factors

Therefore, while requesting that a patent application be postdated, it is necessary to keep the following in mind:

  1. A change in the priority date may result in the inclusion of related prior art published between the period of the original filing date and the date the application is postdated.

  2. The covered invention must not have been publicly disclosed in the meantime, either by a third party or by the applicant;

  3. It is desirable to carry out extensive searches of patent and non-patent literature to ensure that no third party has disclosed subject matter equivalent to that of the invention in the meantime.

Footnote

1 http://ipindia.gov.in/writereaddata/Portal/IPOFormUpload/1_11_1/Fees.pdf

For more information, please contact SS Rana & Co. email: [email protected] or call (+91- 11 4012 3000). Our website can be accessed at www.ssrana.in

The content of this article is intended to provide a general guide on the subject. Specialist advice should be sought regarding your particular situation.

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