Indian Patents Act 1970, mandates filing of Form-3 under Section 8 for a Patent Application. Specifically, obligatory requirements under the two sub sections, i.e. section 8(1) and 81(2), are different. Section 8(1) of the Indian Patents Act, requires the applicant to provide a statement setting out the detailed particulars of application(s) filed outside India corresponding to its Indian patent application and subsection(2) requires the applicant to furnish/ provide the Controller with details of processing of every other application filed elsewhere outside India, if requested by the Controller. This article examines in detail as to why it is important/ mandatory to file Form-3 under section 8 in India, consequences of not filing Form-3 timely, landmark judgments wherein non-compliance under section 8 led to revocation of patent applications and last but not the least best practices to be followed in filing Form-3 during prosecution of patent applications with IPO.
Section 8 and Rule 12- Backbone of Form-3
Section 8 (1) (a)2 read along with Rule 12(1)3 and 12(1A)2 requires the applicant to voluntarily furnish a statement setting out detailed particulars of such application(s) at the Indian Patent office in the prescribed 'Form 3' at the time of filing the application in India or subsequently within 6 months.
Section 8(1)(b)4 read along with Rule 12(2)5 requires the applicant to voluntarily furnish information of 'every other application', if any, filed elsewhere outside India subsequent to the filing of the statement of form- 3 under Section 8(1)(a) within six months of filing any such new application.
Section 8(2)6 read along with Rule 12(3)7 requires the applicant to 'furnish details, as may be prescribed, relating to the processing of the application in a country, outside India' upon requisition by the Controller within six months from the date of such request.
The information under section 8(1)(b) and 8(2) of the Indian Patents Act, are to be provided to the Controller till the disposal of the application, i.e. till the grant or refusal of the application in India.
Clarity on minute confusion on time-limit
It is to be noted that under section 8(1), the Patents Act prescribes the time limit only for submitting the details of corresponding foreign applications at the IPO. However, the Patents Act does require the applicant to keep the Controller informed of updated status of all the corresponding applications from "time to time" till grant, and it does not prescribe any time limit for the same. Therefore, the Act requires the applicant to inform the Controller as and when there is any change in the status or details of the corresponding foreign application(s) but does not require him to update the details of corresponding foreign applications every six months.
To view the full article please click here.
1. The Patents Act 1970, as amended by the Patents (Amendment) Act 2005 (Act 15 of 2005) at ection 8 [Patents Act].
2. Ibid. at Section 8(1)(a).
3. The Patents Rules, 2003 at Sections 12(1) and 12(1A) [Patents Rules].
4. Patents Act, supra note 1, at Section 8(1)(b).
5. Patents Rules, supra note 3, at Section 12(2).
6. Patents Act, supra note 1, at Section 8(2).
7. Patents Rules, supra note 3, at Section 12(3).
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.