India: Section 8 Requirements: Extant Practice At The Indian Patent Office

There are several requirements stated in the Indian Patents Act and the Patent Rules which an applicant has to comply with. One such requirement is that of filing a statement as per the provisions of Section 8(1) of the Patent Act and Rules 12(1) and 12(1A) of the Patent Rules setting out detailed particulars of corresponding application(s) in Form 3.

Section 8 (1) of the Indian Patents Act

Section 8 of the Indian Patents Act, 1970 mandates an applicant to furnish information and undertaking regarding foreign applications.

The first provision of this Section states:

(1) Where an applicant...is prosecuting... an application for a patent in any country outside India in respect of the same or substantially the same invention, ..., he shall file along with his application or subsequently within the prescribed period as the Controller may allow-

Accordingly, as per part a) when an Applicant enters the national phase in India either through Patent Cooperation Treaty (PCT) or through Paris Convention, there arises an obligation to disclose details of such foreign applications that have been filed before filing of the Indian Application by way of Form 3 included in the Patent schedule.

In case the Applicant fails to disclose such information at the time of filing the Indian application, they can do so within the six-month time frame calculated from the filing date in India. Said timeline can also be extended by one month upon filing a request for extension of time period.

The part b) of the sub-section 1 states that:

(b) an undertaking that, up to the date of grant of patent in India, he would keep the Controller informed in writing, from time to time, of detailed particulars as required under clause (a) in respect of every other application relating to the same or substantially the same invention, if any, filed in any country outside India subsequently to the filing of the statement referred to in the aforesaid clause, within the prescribed time.

As per provision b), the Applicant is obligated until the date of grant, to furnish detailed particulars of any corresponding foreign application filed for same or substantially same inventions. Such details need to be furnished before the Indian Patent Office within the prescribed time of six months from the filing in the respective countries.

However, the provision still leaves a room for interpretation because of the language of said provision which states:

"...he shall file along with his application or subsequently within the prescribed period as the Controller may allow-"

• It has been observed that a few Controllers take a rigid stand on this provision considering the interpretation that the prescribed time-period of six-month for disclosing the already filed foreign application is based on their discretion while other Controllers take a lenient stand on the same. In the latter case, the Controllers allow the filing of Form 3 within 6 months of filing the application in India irrespective of the fact that one or more corresponding application was filed prior to the filing of the Indian application.
• However, if an Applicant furnishes the detailed particulars of existing foreign application details within six month of filing Indian application, some of the Controllers might consider this an irregularity and may raise such an objection at the time of issuance of the Examination Report (FER) or during the Hearing. To overcome the objection, the Applicants have to then file a petition u/r 137 requesting to obviate this irregularity. Although such practice from the Patent Office is not common and merely appears to be monetary driven but there have been a few cases where applicants have encountered such rare scenarios.
• Further, the Patents Act or the Patent Rules do not specifically define the meaning of 'same or substantially same inventions.' Therefore, before filing the details pertaining to corresponding applications, it is crucial to identify the corresponding applications in relation to the newly filed application. Typically, Paris convention or PCT national stage family members, applications sharing a common priority date, continuation applications, divisional applications, and continuation-in-part applications can be considered as corresponding applications.
• Additionally, whenever an Applicant discloses the details of corresponding foreign applications, they do include the status updates of such patent applications in their respective countries. For example, the status may include that a patent may be filed, pending or issued in any jurisdiction, examination report may be issued, etc. Although such status need not be updated from time to time as only the disclosure of the foreign application is sufficient as per the Patents Act, but this scenario carries an exception too, when it comes to Controller's perspective.

Exception 1)- A few Controllers tend to interpret that whenever there is any change in the status of corresponding foreign application, the Applicant must provide updated details through Form 3 within six-month of such update. In case of failure, the Controller may raise an objection in FER or Hearing Notice issued afterwards and the Applicant is then required to file a petition u/r 137 requesting to obviate this irregularity. It is pertinent to note that this approach is less common and opted by minority of Controllers.

Exception 2)- There are few countries that are members of European Patent Organisation (EPO). When an applicant files application with EPO, they also designate some nations where they might get their patent validated after patent is granted by the EPO. Generally, the Controllers do not consider an irregularity if the Applicant has already disclosed the details of EP application within prescribed time limit (6 months from the filing of the new application or from the filing of the corresponding application) even if the updates from the designated countries are not disclosed within the time limit.

However, a few Controllers ask the Applicant to furnish information of the patent applications in the EPO member states within six-month of time period of their respective validations and may consider this an irregularity if the same is not done.

Section 8 (2) of the Indian Patents Act

"At any time after an application for patent is filed in India and till the grant of a patent or refusal to grant of a patent made thereon, the Controller may also require the applicant to furnish details,..., relating to the processing of the application in a country outside India, and in that event the applicant shall furnish to the Controller information available to him within such period as may be prescribed."

The sub-section (2) mandates an applicant to file the Search and Examination reports along with the granted claims for all the corresponding applications (such as divisional, continuation, continuation in part etc.) for the same or substantially same invention that are filed outside India. This includes office actions, notices of allowances, grant decision or refusal decision, granted/allowed claims, all in English language whenever they are in any foreign language.

It is pertinent to note that aforementioned documents need not be voluntarily submitted but they are filed within six-month upon invitation from the Patent Office. It is a common practice form the Patent Office to ask for these documents at the time of issuance of the FER. The Applicant can file the Section 8(2) documents upon their wish too. Practically, the Applicant can consider filing the Section 8(2) information along with the response to the FER within six months of the date of the FER or within the first month of seeking extension of time under Rule 138. If said documents are not filed within the stipulated time period or if extension (u/r 138) is requested but the compliance is not made within the extended period, the applicant for a patent can at any time before the grant of a patent, request the Controller to condone such irregularity in procedure by filing a petition under Rule 137 of the Patents Rules, 2003.

In recent times, it has been observed that ever since the Indian Patent Office became a participating office both as providing and accessing office in the WIPO CASE (World Intellectual Property Organization system for Centralized Access to Search and Examination), the requirements for inviting the documents under Section 8(2) have been reduced to a considerable extent. In the times to come, we might observe that the Indian Patent Office may lessen or not invite the applicant to file the information regarding the processing of the foreign applications that are part of the PCT.

The obligations under Section 8(1) are mandatory on the Applicant if there are "same or substantially same" foreign Applications being filed. On the contrary, the obligations under Section 8(2) arise when the Controller raises an objection in this regard and asks the Applicant to furnish said details. As mentioned above, the Controllers may have different approaches regarding the interpretation of above provisions. However, it is open for the Agents to present their understanding and contest the objections in line with the most reasonable interpretations of the extant laws.

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.