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June 2016

A Practical Approach to Fulfilling Section 8 Requirements

by Mukundan Chakrapani

Background

Section 8 of the Indian Patents Act, 1970 mandates applicant(s) filing an application for a patent in India to furnish information pertaining to applications for a patent for ‘the same or substantially the same invention’ filed in any country outside India. Section 8 consists of two subsections that each create specific obligations on the applicant(s).

Section 8(1)(a) read with Rules 12(1) and 12(1A) of the Patents Rules requires the applicant(s) to provide ‘a statement setting out detailed particulars of such application(s)’ in the prescribed ‘Form 3’ at the time of lodging the application in India or subsequently within six months.

Section 8(1)(b) read with Rule 12(2) of the Patents Rules further requires the applicant(s) to undertake to furnish information of ‘every other application,’ if any, filed elsewhere subsequent to the filing of the statement under Section 8(1)(a) within six months of filing such new application.

Section 8(2) read with Rule 12(3) of the Patents Rules requires the applicant(s) 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 of such a request. The obligations under Sections 8(1)(b) and 8(2) of the Patents Act are to be carried out up to the disposal (grant or refusal) of the application for the patent in India. Table 1 below summarizes these requirements.

 

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