Post-dating

1An application can be post-dated at the request of the applicant. In cases where a complete specification is filed following a provisional specification or where a complete specification is filed after the specification purporting to be a complete specification is treated as a provisional specification under sub-s (3) of s 9, the Controller may upon the request of the applicant, at any time before the grant of the patent, cancel the provisional specification, and post-date the application to the date of filing of such complete specification. (Patents Act 1970, s 9(4).) A reference to the date of filing or of the complete specification in s 11 shall be a reference to the date so post-dated or ante-dated. (Ibid, s 11(7). See Standipack v Oswal Trading Co (1999), where the Delhi High Court held that “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.” “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 Court concluded that “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.” (para 8)

2Post-dating can affect the priority date of applications. Where a complete specification is found not to be fairly based on its provisional application, the Patent Office may require the application to be post-dated. But on applying the fair basis test, if it is determined that the disclosure in the specification as originally filed would have provided a fair basis for the amended claim, then the amended claim would be allowed without post-dating. (United-Carr Incorporated’s Application (1971) RPC 23.) If the feature omitted from the claim pursuant to the amendment is not an essential feature of the invention, the amendment can be allowed without post-dating. (Ibid.) An applicant must not gain priority by amendment if his application as filed did not disclose how his invention worked. An amendment cannot cure that defect so as to preserve the applicant’s priority. Additionally, there is to be some limit on the extent to which an applicant can widen his claim for monopoly, but preserve his priority, for example by omitting features of his invention which appeared to be essential in his application as filed. (Edwards (AC) v Acme Signs (1992) RPC 131, p 147 (CA). See also Beloit Technologies Inc v Valmet Paper Machinery Inc (1995) RPC 705.)