Which information and documents are required to be submitted under Section 8 of the Patents Act?

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Section 8 of the Patents Act together with Rule 12 of the Patents Rules requires the applicant to furnish the details of corresponding foreign applications at the Indian Patent Office. Under this requirement, two types of information are required to be submitted at the Indian Patent Office, as stated below:

i. Information under Section 8 (1):

Section 8 (1) of the Patents Act requires an applicant to voluntarily submit the details of all the corresponding foreign applications at the Indian Patent Office and keep the Indian Patent Office informed from time to time of the updated status of these applications. The required details include name of country, application number, filing date, status and patent number and date of grant, if available. This information is required in respect of all applications for the same or substantially the same invention as that of the Indian Application and includes divisional/CIP applications. 12

Briefly, the obligation to file details under Section 8 (1) can be divided into three stages-

1. Submission of details of corresponding foreign applications filed on or before the filing date in India: As per Rule 12, the period within which the applicant is required to file this information is six months from the date of filing the application in India.

2. Submission of details of corresponding foreign applications filed after filing the application in India: The period within which the applicant shall keep the Controller informed of the details of such applications is six months from the date of such filing.

3. Updating the status of all the corresponding foreign applications

Under Section 8(1), it is pertinent to highlight that the Patents Act prescribes the time limit only for submitting the details of corresponding foreign applications at the Indian Patent Office. While the Patents Act does require the applicant to keep the Controller informed of updated status of all the corresponding applications from “time to time” till grant, it does not prescribe a time limit for the same. The Act accordingly requires the applicant to inform the Controller as and when there is any change in the status / details of the corresponding foreign application(s) but does not require him to update the details of corresponding foreign applications every six months.

ii. Information under Section 8(2):

If requested by the Controller, details of prosecution of a corresponding application in a foreign country may have to be provided. Such a request is generally made in the examination report. When requested by the Controller, this information must be submitted within six months of date of request.

Briefly, the requirement under Section 8 (2) can be met by submitting:

1. examination reports (both adverse and favourable);

2. any claim amendments made, and

3. claims as allowed/ granted in corresponding foreign applications if available.

Where these documents are not in English, appropriate translation should also be filed.

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