Interpretation of section 8 of the Indian patent act parallel to rule 12 of indian patent rules, 2003

Interpretation of section 8 of the Indian patent act parallel to rule 12 of indian patent rules, 2003

July 11, 2022 By Khyati Dave

The submission of the details of the corresponding foreign patent applications, periodically, within prescribed time period is a mandatory requirement under section 8 of the Indian Patent Act. The interpretation of the Section 8 of the Indian Patent Act is a bit complex for the applicants, in particular, for the foreign applicants.

The requirement under the sub-section (1) of section 8:

The sub-section (1) of section 8 states that a patent application in any country outside India with respect to the same or substantially the same invention would be considered as corresponding patent application of Indian patent application wherein the corresponding patent application may include patent as well as utility model applications, converted applications from patent to utility model, and vice versa, divisional applications of patent and utility model applications, including continuation/continuation-in-part applications. The corresponding patent application should also include the applications that have been transferred to other person or in the case where applicant himself has received rights from the main applicant/inventor.

The requirement of the sub-section (1) of section 8, statement and undertaking of details of corresponding foreign applications should be filed in prescribed manner on Form-3. Herein, the particulars to be incorporated in the Form-3 includes the name of the country where the application is being prosecuted, the serial number and date of filing of the application, date of publication, legal status of the application and grant date in the respective foreign countries for the filed Indian patent application.

It is to be noted that no fee is prescribed for Form-3. According to Rule 12 (1A) of Indian Patent Rules, 2003, Form-3 can be filed, if not accompanied with the application, within six months from the date of filing the application abroad. In this connection, further to be noted that the applicant has to inform the status of each of such application filed abroad periodically. The time period for providing such particulars in six months from occurring of such filing.

Object of filing the Statement and Undertaking on Form 3

The object of filing the Statement and Undertaking on Form 3 is to assist the Controller to keep track on the prosecution of the foreign counter parts of the Indian patent application, especially in how many other countries the application for the same or substantially same the invention is filed.

Effect of non-filing of the Undertaking on Form-3

If the applicant fails to file the Form-3 or files the petition and the Controller does not allow the Form-3 and refuses to take the Form 3 on record based on circumstances explained in the petition then the application would be liable to refusal or if the application is granted erroneously by virtue of wrongly filed Form-3, the patent is liable to be revoked. It should be noted that mere proof of the above facts will suffice to get the application refused or the patent revoked though the application/patent may satisfy all the other requirement of the Act. However, discretion lies with the concerned controller based on whether such failure in submission of accurate information within due time was intentional or whether it was a mere clerical error.

Therefore, care should be taken not only to file the Form 3 within the prescribed time period, preferably along with the application or within the six months period available for the purpose but also to incorporate in said Form available information diligently and correctly.

Care should also be taken to keep the Controller informed within the stipulated period, within six months, about the each and every new filing of corresponding patent application on the same or substantially the same invention filed abroad received after filing of the application in India till the grant of a patent thereon.

The requirement under the sub-section (2) of section 8:

Further, with regards to the requirement of the sub-section (2) of section 8, at any time after the application is filed in India and till the grant of a patent or refusal to grant of a patent made thereon, the controller may ask the applicant to furnish information relating to objections raised, if any, in respect of novelty and patentability of the invention and other particulars including claims of the application allowed while prosecution of the corresponding foreign applications.

No form is specified for this information. Information has to be submitted in response to communication with the Controller, within six months from the date of such communication by the Controller.

Therefore, it is undeniably important to submit all the prosecution information demanded by the Controller regarding corresponding foreign applications within due time. It is also important to keep the track of filing of corresponding patent applications in foreign countries and to submit the diligently filled statement of undertaking of the same on Form-3 within due time before the Indian Patent Office. As non-submission of the same can lead to undesirable consequences for the applicant/patentee.

The patent attorneys at Parker & Parker always makes sure to protect applicant’s/patentee’s patent rights by advising timely filing of Statement and Undertaking on Form 3 as well as other necessary submission for all statutory requirements which is mandatory as per Indian Patent Act.

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