Statement and Undertaking

Section 8 & Rule 12

Statement and Undertaking (Form 3) – Under Section 8 Of The Indian Patents Act 1970

Is it mandatory to file Form-3 under section 8 in India? What are the consequences of non-compliance under section 8 in India?

The requirement of the disclosure on Form 3 in the form of statement and undertaking is governed by Section 8 of the Patent Act is . Under Section 8(1) of the act, applicant for the patent has to provide a statement disclosing the detailed particulars of application(s) filed outside India corresponding to its Indian patent application. According to the Clause (b) of this section the applicant provides an undertaking that he would keep the controller updated about the progress of applications filed elsewhere in the world relating to the same or substantially the same invention upto the grant of patent in India. The time within which the applicant has keep the Controller informed regarding the aforesaid details is six months from the date of such filing.

In addition, Section 8(2) states that the applicant must furnish the Controller with details of the processing of applications filed elsewhere in the world if and when the Controller requests such updates.

Non-Compliance of Section 8 i.e. if applicant fails to disclose or furnishes false information, is one of the grounds of pre-grant opposition or post grant opposition under Section 25, and subsequent revocation of patent under section 64(1)(m) of the Indian Patents Act.

The authoritative/landmark judgments wherein the Non- Compliance of the Section 8 of the Indian Patents Act rendered patent vulnerable to revocation includes: Chemtura Corporation vs Union Of India CS(OS) No. 930 of 2009), Tata Chemicals Limited vs Hindustan Unilever Limited (M.P. NO.73 OF 2011, M.P. NO.7 OF 2012, M.P. No.16/2012 AND M.P. NO.22 OF 2012 IN ORA/18/2010/PT/MUM ANDORA/18/2010/PT/MUM)

However, in a recent judgement “Sukesh Behl v/s Koninklijke Phillips Electronics (FAO(OS) No.16 OF 2014)”, the Delhi High Court has ruled that patentee’s non-compliance with section 8 of the Indian Patents Act, 1970 will not automatically revoke the patent u/s 64(1) (m). The fact that the word “may” is used in Section 64(1) itself indicates the intention of the legislature that the power conferred thereunder is discretionary.

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The Indian Patents Act 1970

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