Journal Article

Section 8 requirements of the Indian Patent Act: neither a mere formality nor a groundless threat

Someshwar Banerjee

in Journal of Intellectual Property Law & Practice

Volume 8, issue 12, pages 939-945
Published in print December 2013 | ISSN: 1747-1532
Published online December 2013 | e-ISSN: 1747-1540 | DOI:
Section 8 requirements of the Indian Patent Act: neither a mere formality nor a groundless threat

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Someshwar Banerjee is a registered patent agent with the Indian Patent Office and is associated with Lakshmikumaran and Sridharan Attorneys, New Delhi, India. Someshwar is primarily involved in drafting and prosecuting patent applications related to computer-implemented inventions, electronic circuits and telecommunications.

Today, India is one of the most attractive consumer markets for multi national companies (MNCs). These MNCs seek patent protection for their products for which India is a potential market. Obtaining patents in India requires applicants to comply with several procedural formalities. Non-compliance may have serious consequences, including revocation. However, few procedural formalities are as lethal as s 8 of the Indian Patent Act 1970 (IPA).

Section 8 provides that, if patent applications for the same or a similar invention are filed in other jurisdictions corresponding to a patent application filed in India, the information relating to the filing and prosecution of such patent applications must be furnished to the Indian Patent Office (IPO). Section 8 imposes a duty on applicants who have filed a patent application in India voluntarily to update the IPO with information relating to the filing of their corresponding patent applications and to provide any specific information relating to them, as and when requested by the IPO.

This article discusses s 8, its legislative intent and its interpretation by Indian courts and tribunals, suggesting practice points on compliance with s 8.

Journal Article.  5665 words. 

Subjects: Arbitration ; Intellectual Property Law

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