Post-Dating a Patent Application – A Global overview

Post-dating allows the patent application to shift the original application date forward to a later date. Usually, the period to shift the original application date is maximum six months.

Some countries such as India, New Zealand and United Kingdom provide an option to extend the period for filing the complete specification up to six months. In New Zealand, a request to post date must be filed within 15 months of the original filing date.

As per Article 87 (4) of the European Patent Convention (EPC), a post dated application can be considered as priority application, provided that, at the date of filing the European application, the previous application has been withdrawn, abandoned or refused, without being open to public inspection and without leaving any rights outstanding, and has not served as a basis for claiming a right of priority. The previous application may not thereafter serve as a basis for claiming a right of priority.

In 2000, the 6 Gulf countries namely Bahrain, Kuwait, Oman, Qatar, Saudi Arabia and the United Arab Emirates had come together to form a unitary, uniform and harmonized cooperation council to ensure a single system of patent rights protection by way of a single application covering all the 6 participating countries. This council named as ‘The Gulf Cooperation Council’ ensured a smooth and effective filing, protection and implementation system wherein applicants have the ease of seeking effective patent rights over their inventions. Applicants must ensure filing of applications with the GCC within 12 months of the priority date. It will be not possible if it is more than a year. The GCC is not a membership of Paris convention or the Patent cooperation treaty. However, the GCC is TRIPS compliant and priority arising out of other treaties and conventions is recognized.

However, it is not be noteworthy that  when a patent application is proposed to be filed in USPTO either through PCT route or convention route, and if the original filing date of a foreign priority application is more than one year prior to the proposed U.S. filing date, no right of priority can be claimed based upon the foreign priority application. Consider that the original filing date of the foreign priority application is March 31, 2015 and the applicant post-dated to September 30, 2015. The applicant then filed an application in the United States on January 31, 2016. Based on the decision from the Controller of patents in In re Clamp, 151 USPQ 423 (Comm’r Pat. 1966), the original filing date is determinative. “The Paris Convention never contemplated the creation of an arbitrary date”. Thus, the USPTO will accept a patent application filed within March 31, 2016 only.

By S. Raghu Raman

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