/ / Filing statement and undertaking as to corresponding foreign application

Filing statement and undertaking as to corresponding foreign application.

A patent is an exclusive right granted to an inventor for an invention that protects the inventor against any unauthorized use of such a patent, the patent is mostly granted for 20 years and the patent holder can take legal action against any unauthorized use of such patent.

The patent holder has the right to grant an exclusive or non-exclusive license to use the patent to anyone for a specific period, the patent holder shall receive consideration for the license. The licensee’s rights to use the patent shall be limited and the licensee shall pay a royalty to the patent holder out of the profit made by use of such patent. Therefore we can say A patent is basically the granting of protection to an invention, which is a means of doing something new or providing a new technical solution to a problem. However, there are some inventions that might not get patents such as discoveries, mathematical methods, commercial methods, plants and animal varieties, scientific theories, etc. Also, methods, surgeries, and treatments that are done on humans and animals do not get patented in some nations.

At the time of filing a patent application in India, the applicant must submit an undertaking stating that he would keep the Controller updated from time to time about patent applications filed outside India relating to the same or substantially the same invention as filed in India. Such updates shall be provided till the patent is granted in India. The objective of seeking such information from the applicant is to assist the Indian Patent Office in examining the Indian patent application.

Section 8 of Indian patent law places certain obligations on an applicant for a patent to advise the Controller of details of corresponding foreign applications and their developments as well as particulars of the prosecution of such foreign applications.

As per Sec 8(1), an applicant of an Indian patent application shall provide detailed particulars about patent applications filed outside India (foreign applications) for the same or substantially same invention. It shall be noted that such detailed particulars will have to be submitted as long as those foreign applications are filed by the instant applicant, or by any person deriving title from him or by any person through whom he derives title. The disclosure under Sec 8(1) is a mandatory voluntary disclosure. It empowers the Controller to seek detailed particulars corresponding to the foreign applications at any time during the prosecution of the Indian patent application. Violation of Sec 8 can be a ground for revocation of the patent. 

Time limit to file statement and undertaking: 

  • The applicant should file the statement and undertaking as mentioned in Section 8 of the act within 6 months of filing the Indian Patent application.
  • Where foreign applications are filed subsequent to the filing of form 3 then detailed particulars of such applications shall be filed within 6 months of such filing.
  • The information required by the Controller under Section 8(2) shall be furnished within 6 months from the date of such communication from the Controller.

In case an applicant misses out on any of the above-mentioned deadlines, he can file a petition under Rule 137 of the Patent Rules, 2003 to condone the delay in filing Form-3. However, the condonation depends on the discretion of the Controller.

Repercussion for non-observance of section 8

If the Applicant does not disclose the information required by Section 8 or furnish information that is false to his knowledge then it can be a ground of

  • Pre-grant Opposition under Section 25(1)(h) of the Patent Act, 1970; or
  • Post-grant Opposition under Section 25(2)(h) of the Patent Act, 1970; or
  • Revocation of Patent under Section 64(1) (m) of the Patent Act, 1970.

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