– Dr.S.P.Subramaniyan, Former Joint Controller of Patents and Designs
The filing date of a patent application is one of the most significant date for all the purpose of the application in the patent system. It determines the priority date, influences the assessment of novelty and inventive step, and decide the term and expiry of patent. Because of its legal significance, the priority date cannot be ordinarily altered, but permits only in limited circumstances. One such mechanism is post-dating, provided under Section 17 of the Act.
The Patent Bargain: Rights in Exchange for Knowledge
Post-dating is a statutory mechanism that permits the Controller of Patents, upon the applicant’s request, to change the filing date of a patent application to a later date, maximum upto six months.
Section 17(1) of the Patents Act, 1970 provides:
“Subject to the provisions of section 9, at the request made by the applicant at any time before the grant of a patent, the Controller may direct that the application shall be post-dated to such date as may be specified in the request, but not later than six months from the date on which the application was actually made or would, but for the provisions of this section, be deemed to have been made.”
Post-dating is a statutory provision that may be used in situations involving the filing of provisional specifications, completion of the invention, alignment of procedural timelines, or correction of filing strategy. Although Section 17 has existed since the enactment of the Patents Act, 1970, it has received comparatively little judicial attention. One of the most debated aspects of this provision is the opening phrase:
“Subject to the provisions of Section 9…”
This raises an important legal question:
Does Section 17 permit post-dating only where an application was initially filed with a provisional specification, or does it extend to applications filed directly with a complete specification?
This article examines the statutory language, legislative intent, and established principles of statutory interpretation to explore the scope of Section 17.
Why Is Section 9 Mentioned in section 17?
Section 17 begins with the words:
“Subject to the provisions of Section 9…”
Section 9 primarily governs the relationship between provisional and complete specifications. It establishes the legal framework for filing a provisional specification and prescribes the time limit for filing complete specification. Where a patent application is filed under Section 9 of the Patents Act, 1970, the provisions relating to post-dating operate subject to the requirements prescribed under Section 9.
This provision is not applicable to applications filed as a complete specification. The maximum post-dating period under the provision to Section 9 is 12 months, or part thereof, depending upon the period within which the complete specification is filed. Section 9(4) deals with post-dating of complete specifications filed after provisional specification constitutes a special provision, whereas Section 17 is a general provision that applies to any patent application filed other than those filed under Section 9 of the Act.
The phrase “subject to the provisions of Section 9” signifies that the power of post-dating under Section 17 cannot be exercised in a manner that extends or overrides the statutory time limits prescribed under Sections 9(1) and 9(3) of the Patents Act, 1970. The provisions of Section 17 should not override applications filed under Section 9 of the Act.
Section 17 supplements the law by conferring a general power on the Controller to allow post-dating. Therefore, whenever Section 9 applies, Section 17 cannot be invoked to alter the time limits stipulated under Section 9.
The timeline provided under Section 9(4) extends to a maximum of 12 months, whereas under Section 17(1) the maximum time limit is 6 months. Section 9(4) constitutes a special provision governing the post-dating of applications filed under Sections 9(1) and 9(3). Therefore, in accordance with the principle that a special provision prevails over a general provision, Section 17(1) does not apply to post-dating in such cases. Since Section 17(1) is open-ended, with no restriction on post-dating, it may be applied to post-date any application other than those filed under Section 9 of the Act.
The legal maxim: “Generalia specialibus non derogant” — a general provision (Section 17(1)) cannot override a special provision (Section 9(4)).
Section 9 is the special provision dealing with provisional specifications and post-dating those applications; Section 17 is the general provision governing post-dating.
General Interpretation:
The phrase “subject to Section 9” in Section 17 applies only to those applications initially filed with a provisional specification. According to this interpretation, applications filed directly with a complete specification would not be eligible for post-dating.
Interpretation of unknown source:
“Post-dating under Section 17(1) is subject to the provisions of Section 9, which require that a complete specification be filed after the provisional specification within the prescribed time period. In the instant case, a provisional application was not filed; instead, the application was filed as a complete specification. As this request does not fulfil the requirements of Section 9, it is not allowable.”
From the above interpretation adopted by the unknown source, it appears that post-dating is treated as applicable only to applications filed under Section 9 of the Patents Act, 1970, and not to applications filed directly under Section 7 with a complete specification.
Legislative Intention:
It appears that the legislative intentions behind Sections 9 and 17 are distinct:
· Section 9 was enacted to regulate provisional specifications and the timelines for filing complete specifications.
· Section 17 empowers the Controller to post-date an application.
The phrase “subject to”:
This expression signifies that one provision is controlled by another in the event of an inconsistency. The phrase “subject to” in Section 17(1), which binds it to Section 9, means it cannot override Section 9 — however, this is not always the case. The Hon’ble Supreme Court has consistently recognised that the true meaning of a given phrase depends upon its context, the statutory scheme, and legislative intention.
Ensuring Fairness to Competitors
Patent documents serve as a notice to the public regarding the scope of protected technology. Competitors should be able to understand what has been invented and how the invention operates.
An enabling disclosure promotes legal certainty by allowing competitors to evaluate the technology and determine whether alternative solutions can be developed without infringing the patent. It also enables competitors to prepare for lawful use of the technology after the patent expires.
Without adequate disclosure, competitors may face uncertainty regarding the true scope and technical content of the patented invention, resulting in unfair restrictions on innovation and market competition.
Section 17 reveals that the legislature deliberately employed the broader expression “the application,” rather than restricting it to a “provisional application.” If the legislative intention had been to confine post-dating exclusively to provisional applications, the statute could have expressly stated “provisional application” instead of “the application.”
The phrase “subject to the provisions of Section 9” undoubtedly places statutory limitations on Section 17; however, Section 17 has an independent procedural role, and those limitations apply only to applications filed under Section 9 as provisional applications. Section 17 is an independent provision, but it is not an absolute or overriding one.
The phrase “subject to the provisions of Section 9” means that its operation is limited by Section 9 whenever Section 9 applies; it does not restrict applications filed under other provisions of the Act. Thus, Section 17 is an independent provision conferring power on the Controller to post-date an application.
Section 17 operates independently, but it cannot override the provisions contained in Section 9. Although no reported decision appears to have directly determined whether Section 17 extends to applications filed initially with a complete specification, the Supreme Court has repeatedly explained the meaning of the phrase “subject to” in several contexts
In South India Corporation (P) Ltd. v. Secretary, Board of Revenue, Trivandrum, (1964) 4 SCR 280 (AIR 1964 SC 207), the Supreme Court held that the expression “subject to” denotes that one statutory provision is subordinate to another and must yield in the event of inconsistency. However, the phrase does not, by itself, imply that the subordinate provision is deprived of its independent operation. The extent of such subordination depends upon the context, scheme, and legislative intent of the statute.
Therefore, the mere use of the expression “subject to the provisions of Section 9” at the commencement of Section 17 does not, by itself, establish that the operation of Section 17 is confined exclusively to applications filed with provisional specifications.
Indian courts generally apply the doctrine of harmonious construction, which requires that every statutory provision should be interpreted in a manner that allows all provisions to operate effectively.
Applying this principle:
· Section 9 continues to regulate provisional and complete specifications;
- Section 17 continues to regulate post-dating of patent applications; and
- neither provision unnecessarily diminishes the scope of the other.
This interpretation preserves the legislative purpose of both provisions.
In my harmonious view, Section 17 is an important procedural provision within the Patents Act, 1970, enabling the Controller to permit limited post-dating of patent applications before grant. The expression “subject to the provisions of Section 9” imposes a statutory limitation on the exercise of that power; however, it should be construed as a reasonable qualifying restriction rather than a prohibitory phrase that completely excludes the independent operation of Section 17.
Applying the principles of harmonious construction and the settled judicial interpretation of the expression “subject to”, Section 17 should be construed as an independent procedural provision, while Section 9 operates as a statutory limitation only to the extent of any inconsistency between the two provisions.
About the Author
This article is intended for academic discussion and professional analysis of the Patents Act, 1970. It reflects a statutory interpretation of Section 17 based on the language of the Act, principles of legislative interpretation, and relevant judicial guidance on the expression “subject to”. It should not be construed as legal advice or as representing the official practice.
