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Post – Dating of a Patent Application – Indian Perspective
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Section 17 and 9(4) of the Indian Patent Act deals with post-dating of a patent application. It shall be noted that only a complete application can be post-dated to a later date. To interpret the provisions of post -dating an application, one has to rely on the Judgement passed by Delhi High Court on MAY 26, 1999 in Standipack Private Limited & … vs M/S. Oswal Trading Co. Ltd.
The Judgement recites:
“8. The aforesaid provisions make it crystal clear that post-dating of the patent can be done only to the date of filing of the complete specifications. In the present case the Controller of Patents had filed the original records relating to the grant of patent in favour of the plaintiff. The said records reveal that the application for the grant of patent was originally filed by plaintiff on 11.4.1989 and the complete specification was filed on 11.10.1990. The Controller of Patents however, post-dated the patent to 11.7.1989 although complete specifications followed by the provisional specification was filed on 11.10.1990. Thus the post-dating of the patent by the Controller to 11.7.1989 prima facie appears to be in violation of the provisions of Section 9 of the Act. The date of the patent, therefore, should have been 11.10.1990. The patent documents referred the validity of the patent for 14 years from 11.7.1990. Thus the validity of the patent has also been ignored by the Controller of Patents. The plaintiff also during the course of arguments admitted that complete specifications were submitted on 11.10.1990, which is the date from which the Patent granted would be effective. Thus post-dating the Patent to 11.7.1989 appears to be illegal in view of the provisions of Section 9(4) of the Patent Act and the provisions of Section 17 are subject to Section 9.”
Further, section 9 (4) of the Indian patent act clearly mentions the type of application that can be post-dated which are as follows:
- A complete application filed within twelve months in pursuance of a provisional specification filed under section 9(1) and
- A complete specification filed in pursuance of section 9(3). Section 9(3) recites that a complete specification that has been filed can be converted to a provisional specification within twelve months from the date of such filing on requesting the Controller to treat the complete specification as provisional specification, provided the complete specification not being a convention application or a PCT application. In other words, the complete specification must be an ordinary application for the provision of section 9 (3).
How long an application for patent be post-dated?
An application for a patent can be post -dated only to six months from the date of filing of the complete specification. No application can be post- dated to a date later than six months from the date of such filing (Section 17).
Section 17 should not lead to violation of the provisions section 9
Section 17 can be implemented only when the provisions of section 9 are met. This implies that post-dating does not shift the filing date of the complete specification more than 12 months as required under section 9 (1). The complete specification accompanied by the provisional specification has to be filed with the twelve months from the date of filing of the provisional specification.
In this context, a brief summary and decision of the Controller w.r.t 1064/DEL/2010 is discussed herewith for better clarity.
Fact of the case:
|
Application type |
Filing date |
Controller Decision |
|
Provisional application |
06 May, 2010, |
Refused Date: 31/03/2016 |
|
Complete application |
08 August, 2011 |
|
|
Request to post date of the provisional application from 06/05/2010 to 06/08/2010 |
05 May, 2011. |
In the present case, the Applicant had filed a request to post -date the provisional application on 05, May 2011 and subsequently filed the complete specification within twelve months from the new priority date i.e., 06/08/2010. Thus, extending the prescribed time limit of filing of complete specification to 08/08/2011 lead to violation of the provisions of section 9 of the Act.
Decision of the Controller recites,
“In view of above, complete specifications followed by the provisional specification was filed on 08/08/2011, while according to section 9(1), a complete specification shall be filed within twelve month from the date of application, which is 06/05/2010. There is GAP, which could not be filled by filing request for postdating of provisional application, which could be filed anytime before the grant of Page 3 of 3 patent, leading to abandonment of application under section 9(1) of The Patents Act, 1970, and revival of application by postdating of provisional application is against Law of Nature, as once anything treated as deemed to be abandoned, cannot be reconstituted/revived. There is GAP, but, present invention could motivate more innovation and could give momentum to WHEEL OF INVENTION, having potential of industrial applicability, if any. Thus, complete specification has not been filed within the prescribed time period according to section 9(1)of The Patents Act, 1970, and accordingly the application is hereby treated as deemed to have been abandoned according to section 9(1)of The Patents Act 1970.”
Fees and Form
An applicant can file a request to post-date the complete specification by filing Form 30 and paying the prescribed fee. The request to post-date an application can be filed any time before the grant of the patent application.
Fee for filing a request to post -date a patent application:
|
Application |
Form |
For e-filing |
Physical Filing |
||
|
Natural person, start up, small entity or eligible educational institution |
Others, alone or with natural person, start up, small entity or eligible educational institution |
Natural person, start up, small entity or eligible educational institution |
Others, alone or with natural person, start up, small entity or eligible educational institution |
||
|
Post – dating an application |
Form 30 |
|
|
|
|
Examination of post – dated application:
|
Post-dating request made before examination |
Post-dating request made after examination |
|
The examination of the post-dated application is conducted considering the post- dated date as the priority date of the application. |
A fresh examination considering the post-dated date is carried, when a request to post-date, an application is made after the issuance of First Examination Report. |
Timeline to file a post- dated convention application in India
Section 136 (3) of the Indian Patent Act states that a convention application cannot be post-dated under Section 17 (1) to a later date. This implies that the convention application should be filed within twelve months from the date of the first application.
CONCLUSION:
Shifting the priority date to a new date bear the risk of including more number of prior art references with respect to the claimed invention. Additionally, one has to take utmost care to avoid violation of section 9, while applying for post-dating of a patent application as it may lead to refusal of the patent application. Therefore, one has to analyse the repercussions of the post dating a patent application before opting for such provision.
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Proof of Right requirements for PCT national phase applications
According to Section 6 of the Patents Act, an application for a patent can be made by a true and first inventor, an assignee of the inventor, or a legal representative of any deceased person who immediately before his death was entitled to make such an application. Further, in cases, where an application is made by an assignee of the true and first inventor, according to Section 7(2) of the Act, the applicant is required to furnish a “proof of right” within six months from the date of filing. In case of a Patent Cooperation Treaty (PCT) national phase application, a separate proof of right document need not be submitted in India, provided a declaration under PCT Rule 4.17(ii) had been submitted before the World Intellectual Property Organisation (WIPO). This was reaffirmed by the IPAB in its order dated October 27, 2020.
Facts of the case
The Appellant Dow AgroSciences LLC, referred to as DOW hereinafter, filed a PCT national phase application 8373/DELNP/2014 on Oct 08, 2014. It shall be noted that, during the filing of the national phase application, the Appellant submitted the PCT document – PCT Declaration under Rule 4.17(ii) supporting the ‘Applicant’s entitlement to apply for or be granted a patent’, thereby complying with the proof of right requirement. However, in the first examination report (FER) dated June 20, 2018, the Respondent (Patent office) raised an objection that proof of right has not yet been filed according to Section 7(2) of the Act. The Appellant responded by pointing out that a declaration under Rule 4.17(ii) has been filed in place of proof of right.
Despite this submission, the Respondent raised the same objection in the hearing notice. Once again the Appellant responded by pointing out Rule 51bis 2(ii) of PCT guidelines which states that “a designated office shall not require any document/evidence for applicant’s entitlement to apply for Patent, if declaration under Rule 4.17 (ii) is complied with PCT request, unless, it may reasonably doubt the veracity of the declaration, it is humbly submitted that the said declaration should be sufficient and no further evidence/document may be required of the applicant in this context.”
The Respondent, on Jan 30, 2020 issued a decision rejecting the application on the ground of non-filing of proof of right. In the decision, the Respondent cited an earlier order passed by IPAB in NTT DoCoMo Inc. v Controller of Patents and Designs to support the decision. Further, the Appellant made an appeal with the IPAB under Section 117A of the Act against the decision of the Respondent.
Findings and Inferences
The IPAB after examining the appeal, listening to the arguments and analyzing the facts and rules set forth in the PCT treaty and Indian Patents Act, pointed out that the case (NTT DoCoMo Inc. v Controller of Patents and Designs) under reference was based on different facts. The petitioner therein had contention that they had preferred a conventional application which is governed by section 135 of the Patents Act, 1970 and as per section 135, it is clear that section 6 is applicable only to ordinary application and not to conventional applications. Further, the board pointed out that no indication was available to suggest that the Respondent at any point of time had shown a reasonable doubt on the veracity of the indications or declaration concerned. There was no objection on its format either. In case of any doubt on veracity of the declaration, the Respondent could have required any further document or evidence to substantiate the contention of the appellant, in accordance with Rule 51bis.2 of the Regulations under Patent Cooperation Treaty (PCT) but no such finding were available on records. While stating that the Respondent did not take into account the comprehensive look on the legally accepted norms by which the requirements of filing proof of right could be satisfied, it showed utter obstinateness on the part of the Respondent. Upon making these observations, the board set aside the decision issued by the Respondent and directed the Respondent to grant the patent to the Appellant.
There are few key takeaways from the order issued by the IPAB. Firstly, it is clear from the order that the furnishing of PCT declaration under Rule 4.17(ii) for a PCT national constitutes to proof of right. Therefore, for PCT national phase applications there is no need to submit the proof of right as the declaration under Rule 4.17(ii) would suffice. This negates the need of additional documentation work involved in preparing and filing the proof of right. Secondly, the order also provides a clear cut guidelines to the patent office that if the patent office has reasonable doubt on the veracity of the indications or declaration, it may raise it with the applicant and may further ask the applicant to provide any document or evidence to refute the patent office’s contention. This observation provides the applicant a chance to make necessary submissions to counter the patent office’s contention.
Conclusion
The important thing to be noted here is that, the applicant shall submit a PCT declaration under Rule 4(ii) and need not submit a proof of right only in cases where the assignee and the inventor in the national phase application is same as that in the international application. In a situation where there is a change in the assignee or the inventor after filing the international application and before filing the national phase application, a notification issued by the International Bureau through Form PCT/IB/306 denoting the change in the assignee or the inventor, a form requesting change in the applicant of the national phase application, and a separate proof of right shall be submitted to the patent office. Further, in a situation where the International Bureau has not issued a notification issued by the International Bureau through Form PCT/IB/306 denoting the change in the assignee or the inventor, the applicant should file the national phase application in the name of original assignee and later should submit a form requesting change in the applicant of the national phase application and a separate proof of right.
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Patent Drawings and their Importance in a Patent Specification
Patent drawings or illustrations in patent applications are the visual form of Patent description or Invention; they aid in understanding the invention clearly. They may include illustration of embodiments, stages, flow charts, chemical equations, several views, reference numbers and photographs (in some cases) of the invention.
The drawings may be required by the law to be in a particular form, and the requirements may vary depending on the jurisdiction. The drawings must preferably show every feature of the invention as specified in the claims. Although it may be noted that inclusion of drawings in a patent application is not mandatory.
Importance’s of Patent Drawings
While including drawings is not mandatory, one may be able to appreciate the importance of providing drawings in a patent application in view of the below example:
Description provided in a patent document:
A spatial logical toy is formed from a total of eighteen toy elements, out of which two sets of eight identical toy elements two connecting elements are provided. The elements of the two sets have cam members with hollows with spherical convex or concave surfaces in-between. The elements are connected by the aid of the cams and the two remaining centrally positioned substantially identical connecting elements each having a T-shape cross-section and when assembled the toy is in the form of a regular or an irregular solid.
Fixation is performed by one single screw passing through bores in the connecting elements. In such a manner the toy elements forming the lateral faces of the spatial logical toy can be rotated along the spatial axes and by yielding several variation possibilities the toy is well suitable for stimulating logical thinking activity.
Will one be able to understand the product described above? Most likely, not. The product being described is a “Rubik's Cube”, and the construction of the same can be better understood when the description is read in light of the below provided drawings.
There are several issues concerning drawings because of which patent applications may be objected or not granted. Some of the issue due to which objections may be raised are provided below.
Drawings
- are not included (if the invention cannot be understood without drawings);
- are not clear;
- does not show all the features of claims;
- have improper reference numbers;
- do not have all reference numbers which are mentioned in description;
- receive objections in a Notice of Draftsperson’s Patent Drawing Review;
- submitted with colour drawings or colour photographs without filing the required petition;
- were done with a pencil or other nonblack writing instrument, or on an ink-jet printer;
- were submitted in poor quality paper, easily erasable paper and translucent paper, among others;
- include incomplete erasures, graphic elements or text that have been overwritten with heavy lines;
- are done on papers of unacceptable size;
- done without proper margin;
- have lack of hatching in section or cut views;
- contains lead lines which crossing each other or other figures;
- have exploded view but not enclosed by a bracket;
- Split onto different sheets but numbered improperly;
- have section or cut view but the section plane not included in general view;
- are in multiple orientations in a same sheet;
- are too small to show the details clearly;
- have poor shading; which does not show the shape or contour clearly of a design patent;
- are numbered in non-Arabic numerals (other than 1, 2, 3,..); and
- Objections in previous examination report are not cleared.
In view of the foregoing discussion, it is important to acknowledge that patent drawings/illustrations have to comply with certain predefined standards. Failure to comply with the standards, and lack of knowledge and skill required for creating patent drawings can lead to objections being raised during patent examination, thereby resulting in increased patent prosecution time and cost.
Below are some of the sample patent illustrations made by InvnTree. The sample illustrations give an idea about how patent illustrations are to be made. InvnTree provides patent illustration services.
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