Postdating dyfed dating
Section 9(1) addresses a common concern raised by most applicants – will the deadline for filing a complete specification pursuant to a provisional application be calculated from the original filing date or the post-dated date?
It is preferable if applicants file the complete specification within 12 months of the original filing date of the provisional application to avoid pitfalls of any kind that may jeopardize the validity of the application.
Section 17 of the Indian Patents Act provides for postdating of patent applications.
If the complete specification is filed well within the 12 months period, a request can be made to the Controller for cancelling the provisional specification and postdating this application to the date of filing of the complete specification.
Sub-section 1 of Section 9 clearly states that where an application for a patent is accompanied by a provisional specification, a complete specification shall be filed within 12 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. This makes it clear that the date of the provisional specification cannot be postdated.
This clearly means that the powers of the Controller under Section 17 for postdating an application are fettered by the provision of Section 9(1) that a complete specification must be filed within 12 months from the date of filing of the application. It was found that in several cases inventors / applicants are unable to provide sufficient data to file an adequate complete specification within 12 months of the filing date of the provisional specification.
Thereafter the complete specification is converted to a provisional and further complete specification was being filed in respect of the complete specification (now converted to a provisional).
The Patent Office now is no longer accepting the step of conversion under Section 9(3), which was originally filed as a provisional specification for conversion of a complete specification to a provisional specification.
An application under the PCT can be filed thereafter designating all countries including India and then filing a national phase in India based on that PCT.