Section 9 of the Indian Patents Act 1970 broadly deals with patent applications accompanied by provisional and complete specifications. Sub section (i) states that once a patent application accompanied by a provisional specification is filed at the Indian Patent Office, it is mandatory to file the complete specification within a period of 12 months from the filing date of the application. If the complete specification is not filed within this period of 12 months the original application filed will be treated as abandoned and the invention will lose priority. This filing process is unlike the filing process of the US, where after filing of the application accompanied by a provisional specification, a second application accompanied by a non-provisional specification with claims needs to be filed within a period of 12 months.

 

 

The provisions of section 10(7) of the Patents Act allows an applicant to include in the complete specification and even claim improvements or modifications in the invention which was part of the provisional specification. This is unlike the provisions in other jurisdictions where improvements or modifications cannot be included in the non-provisional or complete specification to be filed after 12 months. In India these improvements or modifications generally enjoy the same priority date as the date of filing of the application which accompanied the provisional specification.

 

 

The importance of securing the earliest possible priority date for the invention is important because the prior art is considered with respect to that date. If any art prior to that date overlaps on the invention, both the novelty and the inventive step of the invention will be in jeopardy. Therefore, the priority date is relevant for the determination of these parameters of the invention. However, for the purposes of the grant of a patent to the invention, there must be sufficient disclosure and sometimes aspects like technical advantage and efficacy are necessary in the specification to enable grant. Inventors and applicants are not able to establish these parameters within the 12 months period. Also, the invention itself may be undergoing trials and including the results of the trials may be required to be added in the specification. The applicants and the inventors may need more time. The Patents Act in India has envisaged this difficulty of inventors and included section 17 which allows for post-dating of a patent application up to a period of six months from the original filing date. Post-dating means the priority date of the application is shifted by a specific time period (not more than six months). Post-dating may also be required if the applicant misses the time line for filing of an application under the PCT.

 

 

There is a school of thought that suggests that an application accompanied by a provisional specification can be post-dated. However, according to this author, it is submitted that what is lost sight of is the provision of section 17 itself, which states that the powers of the Controller under section 17 are limited by the provisions of section 9, which prohibits a complete specification being filed after a period of 12 months from the date of filing of the application accompanied by a provisional specification. This issue was considered in the case of Standipack Pvt. Ltd. Vs. Oswal Trading Co. Ltd., where court while considering the provisions of postdating clearly 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 specification”. This makes it clear that the date of the application which is accompanied by a provisional specification cannot be post-dated.

 

 

Then how does an applicant make use of section 17 to gain additional time? The answer to this question is that the applicant must comply with section 9(i) and file a complete specification within the 12 months time period. This complete specification now enjoys a priority date of the date of filing of the application accompanied by the provisional specification. Now taking advantage of section 17 the application can be post dated to a date convenient to the applicant to allow the applicant to introduce crucial subject matter or make or file an application under the PCT, and therefore enter into its international phase or file a convention application in a crucial country. After the complete specification is post-dated, there is another provision in the Patents Act (section 9(3)) which allows for converting of a complete specification into a provisional specification. The applicant should make use of this provision if the applicant desires to add additional matter in the specification.