Section 8 of the Patents Act, 1980 casts an obligation upon the applicant of a patent under this Act who is also prosecuting the same or substantially the same invention outside India, to disclose details regarding corresponding foreign applications from time to time. It was based on the suggestions of Ayyangar Committee Report that Section 8 was incorporated into the Patents Act. It was with a view to ensure that the Indian Examiners are in the know of the status of corresponding foreign applications.
The argument against filing such status updates is that the Ayyangar Report was in the 1960s and that today all patent related information is available on the internet. However, the IPAB in 2013 explained its reasons for not doing away with Section 8.
“We must remember that we are not the law makers. For good reasons S.8 is there. The Controllers cannot ignore it and condone the breach. The patentee cannot tell the Examiners, ” We are filing applications nineteen to the dozen, compliance is very difficult, and in any case there is the Super Kamadhenu the Internet which will give you what you want.” We cannot wish S.8 a relieved farewell. Tough for Inventors it may be, but S.8 must be complied with. When George Mallory was asked “Why do you want to climb Mount Everest?”, he is supposed to have replied, ”Because it is there.” To the question “Why should we comply with S.8?” The Answer is “Because it is there.”
What is Form 3?
A patent applicant makes an undertaking to update the Patent Office regarding any same or substantially same corresponding patent application filed on their behalf by filing a Form 3 either at the time of filing an application under this Act or within six months from the date of filing the corresponding foreign application.
Additionally, the Controller is vested with the power to require patent applicants to furnish details regarding corresponding application at any time from filing of application to grant or refusal of the patent application.
What are the details to be filed in Form 3?
The purpose of filing a status report of corresponding foreign applications is to keep the Indian Patent Office informed of the developments with respect to the patent application. The online filing system, as shown below, requires us to file details pertaining to the status of the application, publication and grant. Further, Section 8 or the corresponding Rule 12 doesn’t explicitly state that the applicant is required submit hard copies of the office actions received in reference to the patent application and the online system doesn’t require us to upload any documents.
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How often should it be filed?
A statement under Form 3 should be filed when there is a publication, grant, opposition, rejection abandonment or any office actions in any of the corresponding patent applications. As per the Patent Act and Rules, a Form 3 indicating the changes or update in the status of patent applications is to be filed within 6 months from the date of such change or update. Therefore, ideally it would suffice to file a Form 3 once every 6 months to ensure that the changes, if any, are filed with the Patent Office.
What are the consequences of non-compliance?
Non-compliance of Section 8 is a ground for opposition of patent and also revocation of a patent and includes non-disclosure of status of corresponding foreign applications and also disclosure of information which is false to the knowledge of the person. It was in Chemtura v. Union of India, that the Court for the first time revoked a patent on the grounds of non-compliance of the requirements of Section 8.
The process of filing an updated status every 6 months might seem like an extremely cumbersome process, especially for big corporations who file a number of corresponding patent applications in several countries. It is therefore advisable for them to comply with the requirements of Section 8 because a procedural non-compliance shouldn’t come in the way of a long drawn battle to obtain a patent grant.