Foreign Filing Disclosure in India on Form 3: A Practitioner’s Guide to Disclosure and Risk Management
1. Introduction Section 8 of the Patents Act, 1970 (“the Act”) and the corresponding provisions of the Patents Rules, 2003 (“the Rules”), particularly Rules 12(1), 12(1A), 12(2), 12(3) and 12(4), impose a continuing obligation on patent applicants to keep the Controller of Patents informed about applications for the same or substantially the same invention filed in countries outside India. This obligation is discharged primarily through Form 3 — the Statement and Undertaking prescribed under the Act. Non-compliance with Section 8 remains one of the most frequently invoked grounds for pre-grant opposition, post-grant opposition, and revocation of a patent in India. A thorough understanding of the scope, timing, and content of this obligation is therefore essential for every patent practitioner. 2. Section 8(1)(a) read with Rules 12(1) and 12(1A) — Initial Statement and Undertaking 2.1 Statutory Provision Under Section 8(1)(a) of the Act, read with Rule ...