Section 8 non compliance

1. CHENNAI
3rd Floor, ‘Creative Enclave’,
148-150, Luz Church Road,
Mylapore,
Chennai - 600 004.
Tel: +91 - 44 - 2498 4821
BANGALORE
Suite 920, Level 9,
Raheja Towers,
26-27, M G Road,
Bangalore - 560 001.
Tel: +91 - 80 - 6546 2400
COIMBATORE
BB1, Park Avenue,
# 48, Race Course Road,
Coimbatore - 641018.
Tel: +91 - 422 – 6552921
EMAIL
info@altacit.com
WEBSITE
www.altacit.com
SECTION 8 NON COMPLIANCE
By
SUCHITRA BAI
PATENT DEPARTMENT

2. CHENNAI
3rd Floor, ‘Creative Enclave’,
148-150, Luz Church Road,
Mylapore,
Chennai - 600 004.
Tel: +91 - 44 - 2498 4821
BANGALORE
Suite 920, Level 9,
Raheja Towers,
26-27, M G Road,
Bangalore - 560 001.
Tel: +91 - 80 - 6546 2400
COIMBATORE
BB1, Park Avenue,
# 48, Race Course Road,
Coimbatore - 641018.
Tel: +91 - 422 – 6552921
EMAIL
info@altacit.com
WEBSITE
www.altacit.com
SECTION 8
Information and Undertaking regarding Foreign
Applications: 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 is 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.

3. CHENNAI
3rd Floor, ‘Creative Enclave’,
148-150, Luz Church Road,
Mylapore,
Chennai - 600 004.
Tel: +91 - 44 - 2498 4821
BANGALORE
Suite 920, Level 9,
Raheja Towers,
26-27, M G Road,
Bangalore - 560 001.
Tel: +91 - 80 - 6546 2400
COIMBATORE
BB1, Park Avenue,
# 48, Race Course Road,
Coimbatore - 641018.
Tel: +91 - 422 – 6552921
EMAIL
info@altacit.com
WEBSITE
www.altacit.com
RULE 12
• 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.
• The period within which the applicant shall
file the statement and undertaking under
section 8 shall be six months from the date
of filing the application.

4. CHENNAI
3rd Floor, ‘Creative Enclave’,
148-150, Luz Church Road,
Mylapore,
Chennai - 600 004.
Tel: +91 - 44 - 2498 4821
BANGALORE
Suite 920, Level 9,
Raheja Towers,
26-27, M G Road,
Bangalore - 560 001.
Tel: +91 - 80 - 6546 2400
COIMBATORE
BB1, Park Avenue,
# 48, Race Course Road,
Coimbatore - 641018.
Tel: +91 - 422 – 6552921
EMAIL
info@altacit.com
WEBSITE
www.altacit.com
FORM 3
• F O R M 3
•
• THE PATENTS ACT, 1970
• (39 of 1970)
• &
• THE PATENTS RULES, 2003
• STATEMENT AND UNDERTAKING UNDER SECTION 8
• (See section 8; rule 12)
We, X, a Company incorporated under Indian Companies Act,1956 having address at YY , do hereby declare:
That we who have made this application No ----- dated ------- jointly with the Indian Patent Office made for the same
invention application for patent in the other countries, the particulars of which are given below:
That, We undertake that up to the date of acceptance of the Provisional specification by the Controller, we would keep
them informed in writing the details regarding corresponding applications for patents filed outside India within six
months from the date of filing of such application.
Dated this day of 2016 Agent for Applicant
To, The Controller of Patents, The Patent Office, At Chennai
Name of the
Country
-
Date of
Application
-
Application
No
-
Status of the
application
-
Date of
publication
-
Date of grant
-

5. CHENNAI
3rd Floor, ‘Creative Enclave’,
148-150, Luz Church Road,
Mylapore,
Chennai - 600 004.
Tel: +91 - 44 - 2498 4821
BANGALORE
Suite 920, Level 9,
Raheja Towers,
26-27, M G Road,
Bangalore - 560 001.
Tel: +91 - 80 - 6546 2400
COIMBATORE
BB1, Park Avenue,
# 48, Race Course Road,
Coimbatore - 641018.
Tel: +91 - 422 – 6552921
EMAIL
info@altacit.com
WEBSITE
www.altacit.com
REVOCATION OF PATENT
• Section 64(1)(m) of the Patents Act lays down “(m)
that the applicant for the patent has failed to disclose
to the Controller the information required by section
8 or has furnished information which in any material
particular was false to his knowledge” as a ground
for revocation of patent.
• A revocation due to non-compliance with Section 8
would only follow if the court is of the view that the
omission to furnish the information required
according to Section 8 by the Applicant/Patentee was
deliberate or intentional. Another important
question to be considered by the court would also be
the materiality of the omitted information for the
decision to grant a patent.

6. CHENNAI
3rd Floor, ‘Creative Enclave’,
148-150, Luz Church Road,
Mylapore,
Chennai - 600 004.
Tel: +91 - 44 - 2498 4821
BANGALORE
Suite 920, Level 9,
Raheja Towers,
26-27, M G Road,
Bangalore - 560 001.
Tel: +91 - 80 - 6546 2400
COIMBATORE
BB1, Park Avenue,
# 48, Race Course Road,
Coimbatore - 641018.
Tel: +91 - 422 – 6552921
EMAIL
info@altacit.com
WEBSITE
www.altacit.com
• The Patent 218255 was granted in India on 13th
February, 2008.
• The Appellants [Sukesh Behl] asserted that the Patentee
[Koninklijke Philips Electronics] failed to furnish details of
corresponding foreign applications in terms of the
undertaking given under Section 8 (1)(b) of the Indian
Patents Act within the period of six months provided
under Rule 12 (2) of the Act. Thus, based on Section 64
(1)(m) of the Act, the Appellants therefore requested
revocation of patent no. 218255 due to non-compliance
with Section 8.
• This request was dismissed by the learned Single Judge
of the Delhi High Court.
SUKESH BEHL & ANOTHER V. KONINKLIJKE
PHILIPS ELECTRONICS

7. CHENNAI
3rd Floor, ‘Creative Enclave’,
148-150, Luz Church Road,
Mylapore,
Chennai - 600 004.
Tel: +91 - 44 - 2498 4821
BANGALORE
Suite 920, Level 9,
Raheja Towers,
26-27, M G Road,
Bangalore - 560 001.
Tel: +91 - 80 - 6546 2400
COIMBATORE
BB1, Park Avenue,
# 48, Race Course Road,
Coimbatore - 641018.
Tel: +91 - 422 – 6552921
EMAIL
info@altacit.com
WEBSITE
www.altacit.com
CONTD…
The information necessary for compliance with Section
8(1)(b) and Rule 12(2) was provided by the Patentee to
the agent. In an affidavit the agent confirmed that all
information was received from the Patentee. When
preparing the submission of the information to the Indian
patent office in the agent´s office, some information was
missed out because it was inadvertently not scanned
when preparing the submission. It was established that a
paralegal missed out scanning some information that was
comprised on the reverse side of a page which was
omitted during scanning. Thus, the information was not
withheld intentionally by the Patentee or the Patentee´s
agent.
.

8. CHENNAI
3rd Floor, ‘Creative Enclave’,
148-150, Luz Church Road,
Mylapore,
Chennai - 600 004.
Tel: +91 - 44 - 2498 4821
BANGALORE
Suite 920, Level 9,
Raheja Towers,
26-27, M G Road,
Bangalore - 560 001.
Tel: +91 - 80 - 6546 2400
COIMBATORE
BB1, Park Avenue,
# 48, Race Course Road,
Coimbatore - 641018.
Tel: +91 - 422 – 6552921
EMAIL
info@altacit.com
WEBSITE
www.altacit.com
CHEMTURA CORPORATION
VS. UNION OF INDIA
• It was held in this case mere simply filing
of information on the status of the
application will not fulfil the obligation
under section 8 (2) of the Act. Applicant is
required to submit all foreign search
reports.

9. CHENNAI
3rd Floor, ‘Creative Enclave’,
148-150, Luz Church Road,
Mylapore,
Chennai - 600 004.
Tel: +91 - 44 - 2498 4821
BANGALORE
Suite 920, Level 9,
Raheja Towers,
26-27, M G Road,
Bangalore - 560 001.
Tel: +91 - 80 - 6546 2400
COIMBATORE
BB1, Park Avenue,
# 48, Race Course Road,
Coimbatore - 641018.
Tel: +91 - 422 – 6552921
EMAIL
info@altacit.com
WEBSITE
www.altacit.com
TATA CHEMICALS VS. HINDUSTAN
LEVER
• In this case it was held that the International
Preliminary Examination Report (IPER) is
related to the processing of an application in
country outside India, it would take within
it a series of actions to be taken in order to
achieve a particular result. Therefore the
respondent is required to file the IPER in
order to comply with the requirements of
section 8(2) as stated by the IPAB.

10. CHENNAI
3rd Floor, ‘Creative Enclave’,
148-150, Luz Church Road,
Mylapore,
Chennai - 600 004.
Tel: +91 - 44 - 2498 4821
BANGALORE
Suite 920, Level 9,
Raheja Towers,
26-27, M G Road,
Bangalore - 560 001.
Tel: +91 - 80 - 6546 2400
COIMBATORE
BB1, Park Avenue,
# 48, Race Course Road,
Coimbatore - 641018.
Tel: +91 - 422 – 6552921
EMAIL
info@altacit.com
WEBSITE
www.altacit.com
CONCLUSION
The purpose of submitting documents under Section 8 is to
support the examiner in examining the patent application.
Applicant should diligently scrutinize all the documents
before submitting them to the patent office. It is suggested
that the applicant should not wait for issuance of First
examination report (FER) to comply with Section 8(2) but
submit information at regular intervals so that no details are
unintentionally gone missing which would otherwise offer a
chance to an opponent to raise objections on granting the
patent in India.