India: Considerations Under Section 8 Indian Patent Act, 1970

Last Updated: 26 September 2019
Article by Niharika Sanadhya

Intellectual Property Rights are jurisdictional in nature. Hence, instances wherein different patent applications for the same subject matter filed in different parts of the world are common. PCT (Patent Cooperation Treaty) does make it easier for patent rights to be granted worldwide, however, applicants still prefer filing separate patent applications in countries that aren't covered under the PCT agreement. Filing different applications in varied countries brings with it the obligation to apprise the Indian Patent Office of such filings if the same or a substantially same invention is filed for the grant of a patent in India.

Provisions mandating the disclosure of such information are made under Section 8 of the Indian Patent Act 19701, read with Rule 12 of the Indian Patent Rules 2003.
As per Section 8(1) (a). The Applicant is required to provide 'a statement setting out detailed particulars of such application(s)' in Form 3 as prescribed under Rules 12(1) and 12(1A) of the Patent Rules. This formality must be fulfilled either at the time of filing a patent application for the invention in India or within the subsequent six months of such filing in India.

The Patent Act also makes provisions for apprising the Patent Office of new foreign application. Section 8(1) (b) read with Rule 12(2) requires the applicant to furnish information in respect to 'any other application' if any, as filed in any other country. If such a foreign application is filed subsequent to the application filing in India, the statements (in Form 3) in respect of such foreign application should be filed within six months of the foreign application's filing.

Section 8(2) read with Rule 12(3) provides for discretionary powers for the Controller. In case the applicant is to 'furnish details, as may be prescribed, relating to the processing of the application in a country outside India' as per a requisition by the Controller2, the applicant must do so under Form 3 within six months of the said request.

Consequently, in this way, the Indian Patent Act, 1970 mandates that the disclosure of information relating to a foreign application can be made in 3 distinct ways.

a. When a patent application is already filed in a foreign country for the same or substantially same as the one seeking patent protection in India.

The statements in Form 3 in respect to such a foreign application should ideally be filed together with the Indian patent application in India.

b. When Form 3 containing statements disclosing information in respect to already existing applications in foreign countries could not be filed together with the Indian patent application.

The statements in Form 3 with respect to such a foreign application must be filed within the subsequent six months from filing the Indian patent application.

c. When a foreign application is filed after the lapse of six months from the filing of the Indian patent application.

The statements disclosing information in Form 3 in respect to such foreign application must be filed within the subsequent six months from the filing of such foreign application.

*The time limits may be extended by a month at the discretion of the Controller.

After the requisite information as statements has been provided for in the prescribed Form 3, to fulfill the aforementioned reasons (a) (b) and (c), there is no stated requirement for resubmission of an updated Form 3, to merely update changes in the status of the foreign patent applications which have been previously disclosed. The change in the status can subsequently be shown in any new application that may be filed at a later date to reflect a foreign application in Form 3 which enumerates the previously disclosed foreign applications.

Considering that a patent application is filed in India and an application for the same or a substantially same invention is filed in a foreign country.

Footnotes

1 The Patents Act 1970, as amended by the Patents (Amendment) Act 2005 (Act 15 of 2005) at Section 8 [Patents Act]

2 Such a requisition shall be notified in the FER (First Examination Report).

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

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