Information Disclosure in India Regarding Foreign Patent Applications – New Rules On Compliance and Time-lines

First published in APAA e-Newsletter (Issue No. 44, December 2024)

Innovation over the years have not only revolutionized the manner in which data / information is shared, but also stored and disseminated and thereby made modes of access to information much easier than before. In tandem the Patent Offices across the globe have also largely made available substantial information about application filed at their Offices including its prosecution available on their respective websites. The law cannot be far behind.

The recent amendment to the Patents Rules in India, namely, the Patents (Amendment) Rules, 2024 notified on March 15, 2024 is largely an example of the law adapting to changes in information availability and access, particularly with respect to Section 8 of the Patents Act in India. Section 8 of the Patents Act, 1970 has its origin in the REPORT ON THE REVISION OF THE PATENTS LAW by Shri Justice N. Rajagopala Ayyangar; September 1959.

THE PROVISION IN THE PATENT ACT

Section 8 of the Patents Act, 1970 provides the kind of information about foreign applications required to be disclosed while prosecuting an Indian patent application.
The Section 8, the preamble of which is ‘Information and undertaking regarding foreign applications’, contains two parts, each part sets-out a different kind of information to be disclosed including in manner in which the information is to be disclosed.
The first part of Section 8 which is sub-Section (1), provides the information and undertaking in respect of foreign patent applications that a patent applicant mandatorily requires to furnish in respect of their patent application and concerns voluntary compliance by the patent applicant. The sub-Section (1) itself has two parts which is –

• Section 8(1)(a) –concerns furnishing of details by a patent applicant prosecuting a patent application in India at the time of filing such application in India or within a definite time there from i.e.

(1) Where an applicant for a patent under this Act is prosecuting either alone or jointly with any other person an application for a patent in any country outside India in respect of the same or substantially the same invention, or where to his knowledge such an application is being prosecuted by some person through whom he claims or by some person deriving title from him, he shall file along with his application or subsequently within the prescribed period as the Controller may allow—

(a) a statement setting out detailed particulars of such application;

• Section 8 (1) (b) –concerns filing an undertaking that, up to the date of grant of patent in India, the Controller would be kept informed in writing, from time to time, of detailed particulars as required under clause (a) of Section 8 (1) 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.

The second part of Section 8 is sub-Section (2) of Section 8, which concerns providing specific information when called for by the Controller i.e.

(2) 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, as may be prescribed, 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 PRESCRIBED MANNER OF COMPLIANCE IS IN THE RULES

Before the amendment (amendment effective from March 15, 2024)

Rule 12 (1) of the Patents Rules specifically provides the ‘Form’* and timelines within which such information under Section 8(1) (a) and (b) is required to be furnished by the patent applicant, i.e.,

“(1) The statement and undertaking required to be filed by an applicant for a patent under sub-section (1) of section 8 shall be made in Form 3.

(1A). The period within which the applicant shall file the statement and undertaking under sub-section (1) of section 8 shall be six months from the date of filing the application.

Explanation.—For the purpose of this rule, the period of six months in case of an application corresponding to an international application in which India is designated shall be reckoned from the actual date on which the corresponding application is filed in India.”

The undertaking made under Section 8(1)(b) is included in the ‘Form’, and is to keep the Controller informed in writing, from time to time, of detailed particulars 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 filed under Section 8(1)(a).

The timeline for compliance for subsequent filing of information under Section 8(1) is provided in Rule 12(2) i.e.

(2) The time within which the applicant for a patent shall keep the Controller informed of the details in respect of other applications filed in any country in the undertaking to be given by him under clause (b) of sub-section (1) of section 8 shall be six months from the date of such filing

Section 8(2)

Rule 12 (3) of the Patent Rules concerns manner and time-lines for furnishing the required information under Section 8(2) when called for by the Controller, i.e.

(3) When so required by the Controller under sub-section (2) of section 8, the applicant shall furnish information relating to objections, if any, in respect of novelty and patentability of the invention and any other particulars as the Controller may require which may include claims of application allowed within six months from the date of such communication by the Controller.

After the amendment (amendment effective from March 15, 2024)

Rule 12 (1) remains unchanged in the amended Rules.

The Rule 12 (2) above has been changed by the amendment such that the Applicant after filing the first Form-3 under Rule 12(1), is now voluntarily required to file details regarding the foreign applications only with three months from the date of issuance of first statement of objections (first examination report / first office action).

Likewise, Rule 12 (3) has been amended such as to do away with the requirement of filing search reports / office actions / granted claims, etc. The same has been replaced with requiring the Controller to use accessible and available databases for considering information relating to the applications filing outside India and only for reasons to be recorded in writing, direct the applicant to furnish a fresh statement and undertaking in Form 3 within two months from the date of such communication by the Controller.

The aforesaid time-lines are also extendable on payment of prescribed fee.

*there is also a change in the Form-3 with respect to the undertaking in view of the amendment to Rule 12(2) and also such that now instead of only providing details of date of grant, instead to provide the details of the date of disposal (such as grant, refusal, etc.)

Dominic Alvares

Dominic Alvares has been practicing as an Advocate and Registered Indian Patent Agent for over 14 years. He handles patent prosecution and contentious patent matters such as oppositions. He is an active part of the litigation team. He also handles patentability searches, drafting patent specifications, particularly in the fields of biotechnology and pharmaceuticals, providing non-infringement opinions. He is also a part of the trademarks team and advises clients in several sectors including fast moving consumer goods, engineering and healthcare. He is a regular speaker in IPR awareness programs across India.

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