Lately, we have been receiving a number of queries from our International clients related to the submission of Form 3 at the Indian Patent Office. The queries range from timing, frequency, content and information included in the Form 3. The aim of this article is to quickly put forth salient features of the Section 8, bring some light on the procedure and formulate some general guidelines which should be adhered to.
Form 3 is a Statement and Undertaking regarding Foreign Applications which is required to be submitted to the Indian Patent Office under Section 8. Section 8 is defined as:
8 (1) 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 his 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-
(a) a statement setting out the name of the country where the application is being prosecuted, the serial number and date of filing of the application and such other particulars as may be prescribed; and
(b) an undertaking that, up to the date of the acceptance of his complete specification filed in India, he would keep the Controller informed in writing, from time to time, of details of the nature referred to in clause (a) in respect of every other application relating to the same or substantially the same invention, if any, filed in any country outside India subsequently to the filing of the statement referred to in the aforesaid clause, within the prescribed time.
8 (2) The Controller may also require the applicant to furnish, as far as may be available to the applicant, details relating to the objections, if any, taken to any such application as is referred to in sub-section (1) on the ground that the invention is lacking in novelty or patentability, the amendments effected in the specifications, the claims allowed in respect thereof and such other particulars as he may require.
In simple words Form 3 is submitted to furnish information/actions/status relating to the patent applications filed in other countries for a particular Indian Patent Application. Further, Section 8 requires that the Applicant will keep the patent office informed (in Form 3) up to the date of grant of patent in India in writing the details regarding corresponding applications for patents filed outside India from time to time.
The Proper and timely submission of the Form 3 has gained all the more importance following a famous Chemtura Case when interim injunction was revoked against Chemtura Corporation by a Division Bench of Delhi High Court in a patent infringement suit involving one reason as the Non–compliance with Section 8(1) and 8 (2). In brief, Chemtura Corporation filed first Form 3 while filing Indian National Phase Application on 21st June 2001. After that, in spite of the changes in the status of the Applications in other countries particularly in US and Europe where Rejection Letters were issued and claims were narrowed down, no further Form 3 updating the status was submitted in accordance with Section 8(1). Further in accordance with Section 8(2), the Controller asked to furnish the details of the Examination Reports of countries like US, EP and JP, which Chemtura failed to comply with.
Though Indian Patent Act has defined the Section 8 mentioning the details regarding the submission of Form, the utmost clarity on the frequency, timing and the content/information relating to the subsequent Form 3 is required. We, at our Firm Khurana & Khurana, typically follow the general guidelines to adhere to the requirements of Section 8(1) and 8(2) as follows:
Timing, Frequency and Content of Form 3
- First Form 3 is filed along with Filing the Application in India mentioning the countries, Application Nos., Publication nos. (if applicable) and the current status of the Application in respective countries.
- Next within six months of filing the Application, the second and updated Form 3 mentioning the changes in the status if any is filed. The status can be “Published”, “Awaiting Publication”, “Undergoing Examination”, “First Examination Report Received”, “Withdrawal of Application”, “Granted” etc and the same is updated from time to time up to the date of grant. Writing “Pending” as the Status of an application should be avoided as the decision of the Chemtura Case holds that “status” does not mean “pending” or “dismissed”. “
- Then, we advise our clients to inform us the updated status of the Application in any country within six months of that status change. If desired, we also follow up with clients six months after their previous Form 3 submission date.
- We also strongly advise our clients to submit the copies of the Examination Reports, Responses to the Objections, Amendments etc.
Information of which Countries
- We submit information of all Foreign Applications whether they are PCT National Phase Applications or the Convention Applications based on Paris Convention taking priority within 12 months.
In conclusion, submission of Form 3 should not be held lightly as little delay or any missing status can cost the patent rights in India, as one of the grounds of the Revocation, Pre- & Post- Opposition of the Patent/Patent Application is non-compliance with the Section 8 of the Indian Patent Act.
About the Author: Ms. Gopanjali Singh, Patent Associate at Khurana & Khurana and can be reached at: Gopanjali@khuranaandkhurana.com