[Pct] PARIS CONVENTION QUESTION --> Indian provisional application -- shifting the filing date by 3 months

Fri Jun 28 15:17:47 EDT 2024

I think the result will differ from country to country.

In the U.S., the applicable law is found in 35 USC 119(a), which says:
(a) An application for patent for an invention filed in this country by any person who has ... previously regularly filed an application for a patent for the same invention in a foreign country ... shall have the same effect as the same application would have if filed in this country on the date on which the application for patent for the same invention was first filed in such foreign country, if the application in this country is filed within 12 months from the earliest date on which such foreign application was filed.
I haven't researched this issue, but the highlighted phrases lead me to believe that shifting the filing date by three months from the actual filing date might not be well received. On the other hand, the Paris Convention and 35 USC 119(c) allow shifting the filing date three months by abandoning the first application and filing a second application at the three month mark (this assumes all the requirements of Article 4 are satisfied). It could be argued that allowing the latter but not the former exalts form over substance (but then again we do that all the time).

Scott Nielson

801-660-4400

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From: Pct <pct-bounces at oppedahl-lists.com> on behalf of Jim Boff via Pct <pct at oppedahl-lists.com>
Sent: Friday, June 28, 2024 12:45 PM
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Cc: Jim Boff <jboff at atllp.co.uk>
Subject: Re: [Pct] PARIS CONVENTION QUESTION --> Indian provisional application -- shifting the filing date by 3 months

Something in the back of my mind said New Zealand post-dating and I found this https://www.jamesandwells.com/wp-content/uploads/options-for-allowing-greater-time-to-complete-your-patent-application.pdf which acknowledges that  “Another disadvantage is that a few countries

(notably the United States) do not accept post-dated priority dates”.

At least one European case dealt with the issue of post-dating and didn’t like it https://www.epo.org/en/legal/case-law/2022/clr_ii_d_2_5.html.

Turning to the question, if the priority document shows the original filing date, then that starts the priority period so April 2025 would be too late and this would be obvious on the face of the document.

If the priority document shows only a post-dated filing date, then that would be tantamount to state-sponsored fraud.  Strong language – but I speak as I find.

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From: Pct <pct-bounces at oppedahl-lists.com> On Behalf Of William Ahmed via Pct
Sent: Friday, June 28, 2024 1:17 PM
To: for Users of the Patent Cooperation Treaty <pct at oppedahl-lists.com>
Cc: William Ahmed <ahmed.william at ymail.com>
Subject: [Pct] PARIS CONVENTION QUESTION --> Indian provisional application -- shifting the filing date by 3 months

Dear List,

A friend of mine in Europe asked me a question which I now refer to the list - I think this topic is actually very interesting

My friend said that in India, after an applicant files a provisional application (i.e. an Indian provisional application, not a US provisional), the Indian office

allows POST-FILING for the applicant to move the filing date to a later date by up to 3 months during the priority year.

For example, if someone filed a provisional application on Jan 15, 2024, she can later request an April 15, 2024 filing date.

THE QUESTION --> can someone file an Indian provisional on Jan 15, 2024 (receiving a filing receipt in late January 2024 indicating a filing date of Jan 15, 2024),

and THEN in November 2024, get the patent office to give them a NEW date (i.e. for the same application) of  April 14, 2024, and then file on April 1, 2025 a PCT (or local application in Europe)

claiming priority to the Indian provisional HOPING to get a worldwide 'priority date' of April 14, 2024?

I am NOT an expert on India (I actually know almost nothing about local law in India), but I understanding from US agent that in the USA there is something analogous.

Someone might file a US non-provisional, forget a drawing, and then petition for the LATER filing date.

What would Article 4 of the Paris convention say this situation?

Have a great weekend,

Bill

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