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02 May 2017

Disclosing Multi-Jurisdictional Patent Filings Under Section 8 of the Indian Patent Act

When a patent application is filed in multiple jurisdictions, the applicant is obligated to disclose details of filing in other jurisdictions, to the Indian Patent Office. The details to be disclosed include application number, date of filing, jurisdictions/country(ies) in which the application has been filed, date of publication, date of grant, and status of the application(s). Objective of the section is to keep the controller/patent office apprised about the filing and processing of patent applications based on same or similar inventions in other jurisdictions.

In the last few years, the obligation to disclose foreign filing details has become crucial for applicants or patent practitioners due to several judgments such as Chemtura Corporation vs. Union of India[1] and Maj (Retd) Sakesh Behl & Anr v Koninklijke Philips Electronics[2]. Section 8 is now being even used as a tool to oppose the grant of patent or revoke the patent.

Section 8 (1) mandates the applicant to disclose and submit the status of application(s) on the same or substantially the same invention filed in foreign countries within six months from the filing of the application in other jurisdictions, and said status needs to be updated with the Indian Patent Office as and when the corresponding application status (such as publication, issuance of office action, grant, rejection, opposition, etc.) in other jurisdictions is changed, until the application is granted in India. As a best practice, we recommend submitting information in relation to the following:

  • Same corresponding application
  • Continuation application
  • Continuation in parts application
  • Application for Patent of addition

As this obligation is a continuous one, we recommend that Applicants follow the following milestones and timelines for submission of the aforementioned information under Section 8(1):

  1. Within six months from the filing of the application;
  2. Within six months from the issuance of the first examination report;
  3. Within 12 months from the date of issuance of the first examination report (if the grant of patent is pending); and
  4. If a hearing notice under Section 14 is received, then prior to the due date of the hearing.

 

Another obligation, under Section 8(2) of the Indian Patents Act, arises on receiving a request from the Controller of Patents, normally at the instance of issuance of the first examination report. In view of the requirement raised in the first examination report, the Applicant may be required to furnish the requested details relating to the processing of the application in a country outside India. Such details may include search report, office actions, rejected claims, allowed claims etc. In case any of the documents is in a language other than English, the Controller may require the Applicant to furnish English translation verified by the translator, of the same.

As a prudent practice, we recommend Applicants to file the following:

  1. Search / examination reports and rejected / allowed claims by major patent offices;
  2. Search/examination reports of countries where patent application has been objected; and
  3. Adverse decisions issued in the corresponding application in a country outside India.

Additionally, a PCT application is considered as “a filing outside India”, so we also suggest filing of the search or examination report issued in a PCT Application.

Consequence of not complying Section 8 requirement:

Failure to disclose the information or furnishing false information may invite opposition(s) or revocation proceedings against the patent.

[1] 2009(41) PTC 260(Del)

[2] FAO(OS) No.16 OF 2014

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