Working Statement and Undertaking (Form 3): Patents
Introduction
For startups, MSMEs, and international patent applicants, compliance with Section 8 of the Indian Patents Act, 1970 is critical for maintaining a valid patent in India. Section 8 ensures transparency between Indian and foreign patent filings, enabling the Indian Patent Office (IPO) to evaluate inventions accurately while reducing the risk of oppositions or revocations.
The submission under Section 8 is made through Form 3 – Statement and Undertaking, which serves as a formal declaration regarding foreign filings and related updates.
What is Form 3 Under Section 8?
Form 3 is a statutory requirement under Section 8 of the Indian Patents Act. It requires patent applicants to:
- Disclose all foreign patent applications corresponding to the Indian application, including filing numbers, jurisdictions, and priority dates.
- Provide an undertaking to keep the Controller informed about the progress of these foreign applications until the Indian patent is granted.
Key compliance timeline: Updates must be provided to the Controller within six months of any new foreign filings or status changes. The Controller may also request updates at any stage during the examination process.
Is Filing Form 3 Mandatory?
Yes, filing Form 3 is mandatory for all patent applicants in India with corresponding foreign applications. Non-compliance may lead to:
- Pre-grant opposition under Section 25
- Post-grant opposition
- Revocation under Section 64(1)(m) for false or incomplete disclosures
However, the Delhi High Court clarified in Sukesh Behl vs. Koninklijke Philips Electronics[1] that non-compliance alone does not automatically trigger patent revocation. Section 64(1)(m) grants the IPO discretionary power, meaning each case is evaluated on its merits.
Legal Precedents Highlighting Section 8 Compliance
Several landmark cases illustrate the importance of Section 8 compliance:
- Chemtura Corporation vs. Union of India[2] – Demonstrated that failure to disclose foreign filings could make a patent vulnerable to revocation.
- Tata Chemicals Limited vs. Hindustan Unilever Limited[3] – Emphasized timely and accurate Form 3 submissions.
- Sukesh Behl vs. Koninklijke Philips Electronics[4] – Reinforced that discretionary powers prevent automatic revocation solely based on non-compliance.
Strategic Importance for Startups, MSMEs, and International Applicants
Startups and MSMEs:
- Ensures uninterrupted patent prosecution in India
- Mitigates risk of opposition or revocation
- Builds credibility with investors and partners through a robust IP compliance strategy
Foreign applicants:
- Aligns with Indian patent law obligations
- Protects patents against challenges in India
- Enhances cross-border IP portfolio management
- By complying with Section 8, businesses can strengthen their patent strategy, enabling smoother operations and global expansion.
Best Practices for Section 8 Compliance
- Maintain a tracker for all foreign patent applications related to Indian filings.
- Submit Form 3 statements promptly, adhering to the six-month deadline.
- Respond immediately to Controller requests for updates.
- Avoid false or incomplete disclosures, as they may trigger opposition or revocation proceedings.
- Integrate Section 8 compliance into your global IP management policy to maintain a seamless international filing strategy.
Conclusion
Section 8 and Form 3 play a crucial role in maintaining patent integrity in India, particularly for startups, MSMEs, and international applicants. Accurate disclosure of foreign applications and timely updates to the IPO reduce legal risks, support strategic IP management, and enhance global credibility.
For comprehensive guidance on Section 8 compliance, Form 3 submissions, or managing foreign patent disclosures, you can contact us at info@ssrana.com.
[1] (FAO(OS) No.16 of 2014
[2] CS(OS) No. 930 of 2009
[3] M.P. No.73/2011 & related cases
[4] (FAO(OS) No.16 OF 2014
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