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Reporting on corresponding foreign patent filings in India

Indian patent law places a unique requirement on patent applicants and holders to not only inform the Indian patent office (“IPO”) of applications filed in other jurisdictions for the same or similar invention but also to periodically update the IPO on the status of these applications. Failing to meet this requirement, under Section 8 of the Indian Patents Act, 1970 (“the Act”), may invite revocation proceedings against a granted patent. Not surprisingly, this provision has become a popular ground for defence in infringement cases in India. While only some patents have been revoked under this provision, some patent holders have been denied interim relief in infringement suits, especially where patent claims were narrowed in other jurisdictions due to prior art that was not before the IPO.

Overview of Section 8

The requirements under Section 8 of the Act fall under three heads:

Section  What is required When to submit
8 (1) (a) Details of other countries this application has been filed in, and their status. For applications filed in other countries on or before filing in India: At the time of filing in India or within six months of filing in India.


For applications filed in other countries after filing in India: within six months of filing the application abroad.

8 (1) (b) Undertaking to comply with Section 8(1)(a) till grant of patent in India. At the time of filing in India.
8 (2) Search and examination reports in other countries. When requested by the Controller and within six months of the request.

Section 8(1)(a): What details do I need to submit?

A patent application in another jurisdiction for the same or substantially same invention must be included in the Section 8 filing. The details are to be submitted in the format contained in Form 3 of the Indian Patent Rules, 2003 (“the Rules”). For each relevant patent application, the following details are expected: 

Name of Country Date of Application Application No. Status of  Application Publication No. & Date of Publication Date of Grant

The “same or substantially same invention” would include applications of the following kind:

  • Priority application
  • PCT application
  • Corresponding convention application
  • Corresponding national phase application
  • Divisional applications
  • Continuation applications
  • Continuation-in-part applications
  • Applications that claim same priority
  • Patent of Addition

Section 8(1)(a): By when must details of corresponding foreign applications be submitted? 

Under the law, the details of all corresponding foreign patent applications filed before the Indian filing must be submitted to the IPO at the time of filing in India or within six months of filing in India. For patent applications in other countries filed after the Indian patent filing, the details must be submitted within six months from date of filing in that country. 

How often must status updates be provided to the IPO?

The biggest frustration applicants face with Section 8 is the ambiguity around how often a status update must be filed before the IPO. Each compliance filing also incurs additional prosecution costs. As things stand, neither the Act nor the Rules specifically state that applicants are required to provide status updates, and certainly do not list out any timelines. One interim order of the Delhi High Court (Chemtura Corporation vs. Union of India, IA Nos. 6782/2009 and IA No.8372/2009 in CS (OS) 930 of 2009, dated 28 August 2009) took the view that the Section 8 requirement included status updates “from time to time” but did not specify what the periodicity of such updates ought to be.

A conservative view in this regard is that Form 3 must be filed every six months. A more practical approach, however, is that after the initial round of details of corresponding applications has been provided to the IPO, a status update be provided when filing a response to the examination report, and if there is any change in status at the time, also in response to the hearing notice. This approach potentially limits prosecution costs, and if a Controller raises an objection, a petition for condonation of delay (for a fee of USD 115) may be filed along with the response to the examination report or hearing notice. The prosecution costs of these filings may be less than that of filing a status update every six months.

Must search and examination reports of other patent offices be submitted to the IPO?

Patent applications – in any jurisdiction – entail several office actions. The IPO does not require details of all these actions under Section 8(2). The requirements under this provision may be summarized as follows:

Details/documents to be submitted
Office Actions/Search reports Yes, for all jurisdictions.
Allowed/granted claims Yes, and it is advisable not to submit machine translations.
Response to office actions No
English translations of office actions Only summary of objections in English. No verified English translations required.
Opposition/ Revocation proceedings Yes
Prior Art Documents cited in other jurisdictions No

Note that it is advised to submit these documents upon request even if they are available online. The law requires that these details be submitted to IPO within six months of the request having been made. 


Since 2018 India has been both a providing and receiving office under the WIPO Centralized Access to Search and Examination (“CASE”). The 2019 Manual of Patent Office Practice and Procedure issued by the IPO also requires Controllers to upload documents accessed from CASE to the Indian file wrapper. However, the Manual requires applicants to specifically invite the Controller to do so, and accordingly, it is good practice to include, along with the Indian application, a specific invitation to the Controller to also check status updates at WIPO CASE.

Consequences of non-compliance with Section 8

Non-compliance with the obligation under Section 8 may be a ground for:

  1. a) pre-grant and post-grant opposition proceedings before the IPO
  2. b) revocation of a patent

However, Indian Courts have clarified that the revocation on this ground cannot be automatic but must be based on the specific facts and circumstances of the case. Courts are expected to enquire into whether there was a deliberate or willful suppression and whether the undisclosed information was in fact material to the grant of the patent.

In Sukesh Behl v. Koninklijke Phillips (FAO (OS) No. 16 of 2014, dated 7 November 2014), the Delhi High Court held that it is mandatory to comply with Section 8, and non-compliance is a ground for revocation under Section 64(1) of the Act. However, the Court concluded that the use of the word “may” in Section 64(1) points to the legislative intent that the power so conferred is discretionary. The Court found that this makes revocation upon non-compliance of Section 8, discretionary.


Section 8 is an unusual provision in patent law, and unfamiliarity with this provision can take applicants by surprise. Complying with Section 8 in India involves a fair bit of documentation and can be overwhelming on the face of it. Structured planning, calendaring, and proper guidance, can prevent missteps along the way, as well as help make judicious decisions in managing prosecution costs.