The Second Chance: Strategic Post-Dating of Patent Applications in India
Post-dating is the legal process by which the priority date of a patent application is shifted to a later date, available under certain conditions in many patent offices.
Under Section 17 of the Indian Patents Act, 1970, an applicant or authorized agent may request the Controller of Patents to post-date an application, provided that the revised date is not later than six months from the original filing date. In the USPTO, it is not standard with priority fixed at filing (requiring withdrawal/refiling for true post-dating); under the EPO (Article 87(4) EPC), post-dated applications serve as priority documents only if the original is withdrawn, abandoned, or refused without public disclosure or rights outstanding; and for PCT applications, post-dating impacts the 12-month international filing window if requested early, potentially requiring restoration under Rule 26bis.3.
At first glance, post-dating may appear to be a procedural or administrative indulgence. In reality, it is far more consequential. Post-dating fundamentally alters the legal identity of a patent application. In effect, the applicant is asking the Patent Office to treat the invention as though it were born later in time.
To put differently, post-dating is equivalent to telling the Patent Office:
“Disregard my original filing date and treat my application as if it were filed on a later date.”
Because priority lies at the heart of patent rights, this request carries significant doctrinal and strategic consequences.
Why Post-Date? Strategic Use Cases
Despite its risks, post-dating may be deliberately invoked in narrow and carefully evaluated circumstances. Advanced patent strategy sometimes demands sacrificing priority in exchange for procedural or substantive advantages.
- Missed PCT DeadlineWhere an applicant files first in India but misses the 12-month priority deadline for filing an international application under the Patent Cooperation Treaty (PCT), post-dating (up to six months) may effectively reset the international filing clock.This can preserve access to international markets but only if no intervening prior art has emerged.
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Insufficient Disclosure in the Provisional Specification
If the provisional specification is later discovered to be non-enabling or inadequately disclosed, reliance on the original priority date may be more harmful than beneficial.
Post-dating allows the applicant to abandon the flawed priority claim and rely on a later date provided that no intervening disclosures or filings compromise novelty or inventive step.
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Time to Generate Experimental or Technical Data
In technology-intensive fields such as pharmaceuticals, biotechnology, or advanced materials, applicants may require additional time to generate:
- experimental results,
- comparative data, or
- proof of industrial applicability.
Post-dating may allow the complete specification to be strengthened, thereby improving the application’s defensibility during examination or opposition.
The Double-Edged Sword: Risks and Realities
Post-dating is not a benign extension, it is a calculated gamble.
By moving the priority date forward, the applicant expands the universe of prior art that may be cited against the application. Every publication, patent filing, or disclosure made during the intervening period becomes potentially fatal.
Illustrative Scenario
Suppose:
- You file a patent application on 1 January, and
- a competitor publishes a similar invention on 1 March.
If you post-date your application to 1 April, that March publication now becomes prior art capable of defeating novelty or inventive step.
Legal Exposure from Your Own Disclosures
Equally dangerous is the applicant’s own conduct. Any public disclosure during the intervening period, including:
- conference presentations,
- academic publications,
- trade shows, or
- investor pitches
may now operate as self-colliding prior art.
By post-dating, the applicant voluntarily relinquishes the protective shield of the original priority date.
The Technical Interplay: Section 17 vs. Section 9
| Section 17 – Power of Controller to make orders respecting dating of application | Section 9 – Provisional and complete specifications |
| (1) Subject to the provisions of section 9, at any time after the filing of an application and before the grant of the patent under this Act, the Controller may, at the request of the applicant made in the prescribed manner, direct that the application shall be post-dated to such date as may be specified in the request, and proceed with the application accordingly: Provided that no application shall be post-dated under this sub-section to a date later than six months from the date on which it was actually made or would, but for the provisions of this sub-section, be deemed to have been made. |
(1) Where an application, for a patent (not being a convention application or an application filed under the Patent Cooperation Treaty designating India) is accompanied by a provisional specification, a complete specification shall be filed within twelve months from the date of filing of the application, and if the complete specification is not so filed, the application shall be deemed to be abandoned. |
| (2) Where an application or specification (including drawings) or any other document is required to be amended under section 15, the application or specification or other document shall, if the Controller so directs, be deemed to have been made on the date on which the requirement is complied with or where the application or specification or other document is returned to the applicant on the date on which it is re-filed after complying with the requirement. | (2) Where two or more applications in the name of the same applicant are accompanied by provisional specifications in respect of inventions which are cognate or of which one is a modification of another and the Controller is of opinion that the whole of such inventions are such as to constitute a single invention and may properly be included in one patent, he may allow one complete specification to be filed in respect of all such provisional specifications.
Provided that the period of time specified under sub-section (1) shall be reckoned from the date of filing of the earliest provisional specification. |
| (3) Where an application for a patent (not being a convention application or an application filed under the Patent Cooperation Treaty designating India) is accompanied by a specification purporting to be a complete specification, the Controller may, if the applicant so requests at any time within twelve months from the date of filing of the application, direct that such specification shall be treated, for the purposes of this Act, as a provisional specification and proceed with the application accordingly. | |
| (4) Where a complete specification has been filed in pursuance of an application for a patent accompanied by a provisional specification or by a specification treated by virtue of a direction under sub-section (3) as a provisional specification, the Controller may, if the applicant so requests at any time before grant of patent, cancel the provisional specification and post-date the application to the date of filing of the complete specification. |
A common misconception among applicants is that Section 17 operates independently and confers an unfettered discretion on the Controller. This is incorrect.
While Section 17 empowers the Controller to allow post-dating, that power is expressly subject to the statutory scheme governing specifications, particularly Section 9, which regulates provisional and complete specifications.
This relationship was authoritatively clarified by the Delhi High Court in Standipack Pvt. Ltd. v. Oswal Trading Co. Ltd. (AIR 2000 Delhi 23). The Court held that post-dating cannot be used to defeat or bypass mandatory statutory timelines, especially the requirement under Section 9(1) that a complete specification must be filed within 12 months of the provisional specification.
Judicial Clarification
In Standipack, the applicant filed:
- a provisional specification on 11 April 1989, and
- a complete specification on 11 October 1990, well beyond the 12-month statutory limit.
The applicant sought to rely on post-dating to cure this defect by shifting the filing date to a later point within the permissible window. The Court rejected this attempt, holding that:
- Post-dating cannot retrospectively validate an application that is already statutorily barred.
- Section 17 does not override Section 9; rather, it must operate within its confines.
Thus, post-dating is a procedural adjustment, not a mechanism to resurrect a legally lapsed application.
Conclusion: Proceed with Caution
Post-dating is a sophisticated procedural tool, not a safety net for poor filing discipline. It should be exercised only after:
- a comprehensive prior art search covering the intervening period, and
- a clear assessment that the strategic benefit outweighs the loss of priority.
Before filing Form 30 to request post-dating, the critical question is not whether it is permissible but whether it is prudent.
In the high-stakes arena of patent prosecution, the earliest valid priority date is often the most valuable asset an applicant possesses. Surrendering it should never be done lightly.
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