Section 8 of the Patents Act, 1970
Information and undertaking regarding foreign applications
Requires an applicant with corresponding foreign applications to disclose their particulars and keep the Controller informed as prosecution continues abroad.
Official legal text
The verbatim statutory text of this provision is reproduced from the official source and checked by our legal reviewer before it is published here. Until that check is complete for this page, read the exact wording directly from the official source linked below — it is the only version that governs.
Read this as a plain-language summary. If it and the official text, or a relevant Gazette notification, say different things, the official text and the notification are what count.
What this section says, in plain language
Section 8 is a disclosure obligation, not a patentability test. If an applicant in India is also prosecuting an application for the same or substantially the same invention in a country outside India, whether alone or jointly with someone else, the Indian Patent Office wants to know. The purpose is transparency. The Controller can then see what search results and objections other offices have raised, and can weigh them while examining the Indian application.
The obligation has two limbs. The first is automatic. The applicant must file a statement setting out the particulars of the foreign applications, and an undertaking to keep the Controller informed in writing about any further foreign application filed later for the same or substantially the same invention. This is done on Form 3, and Rule 12 governs when it must be filed and updated. Form 3 is normally filed with the application or within six months of filing, and the undertaking is a continuing one, so a new foreign filing triggers a fresh Form 3.
The second limb is on request. Where the Controller requires it, the applicant must furnish details of the processing of the foreign applications, such as objections raised, claims allowed, or refusals. This limb only bites once the Controller asks. The Patents (Amendment) Rules, 2024 reshaped the timing here, tying the update to the first statement of objections, and expressly allowing the Controller to use accessible and available databases instead of demanding documents the office can look up itself. Check the current text of Rule 12 for the exact period, since this has been amended.
The consequences of getting Section 8 wrong are serious out of proportion to how routine the form looks. Failure to disclose the information required by Section 8, or furnishing information that is false to the applicant's knowledge, is a ground of pre-grant and post-grant opposition and a ground of revocation under Section 64. Many Indian revocation actions have been argued on this ground. Courts have, however, held that the consequence is not automatic. The Controller and the court retain discretion, and they look at whether the lapse was deliberate, whether it was material, and whether the omission actually withheld anything useful.
The practical answer is process, not argument. Applicants with a global portfolio should maintain a simple docket that records every foreign filing for each invention family and generates an updated Form 3 whenever a new filing is made. Where an Indian agent handles only the Indian file, someone must own the task of feeding foreign filing news to that agent. Most Section 8 failures are administrative gaps, not attempts to hide anything.
Why this section matters
Any applicant, Indian or foreign, who is pursuing patent protection for the same invention in more than one country.
From filing onwards, throughout prosecution, and whenever a new foreign application is made in the family.
A continuing duty of disclosure to the Controller, and a right in the Controller to call for foreign prosecution details.
The application can be opposed and the granted patent revoked under Section 64 for non-compliance or false information.
How it works in practice
A missed update in a growing family
Kestrel Robotics Pvt Ltd files an Indian application for a warehouse navigation system and files Form 3 on time, listing a single corresponding United States application. Eighteen months later the company files in Europe and Japan, using a foreign firm engaged directly by its investors. Nobody tells the Indian agent. When the Indian application is granted, a competitor files a post-grant opposition and raises Section 8, pointing to the two undisclosed filings. Kestrel produces its docket, shows that the omission was an administrative gap rather than concealment, and shows that the European and Japanese offices had cited the same prior art already on the Indian file. The Controller weighs the materiality of the omission rather than treating it as automatically fatal, but Kestrel spends months and considerable cost defending a point that a two-page filing would have avoided. The company then puts a standing rule in place: no foreign filing instruction goes out without a copy to the Indian agent.
Simplified illustration only. Actual legal outcomes depend on the facts.
Key points to remember
- Section 8 applies whenever the same or substantially the same invention is being pursued outside India.
- The statement and undertaking are filed on Form 3 under Rule 12.
- The undertaking is continuing, so each new foreign filing in the family calls for an updated Form 3.
- The Controller may separately require details of how the foreign applications are being processed.
- The 2024 Rules changed the timing of updates and allow the Controller to rely on accessible databases.
- Non-compliance is a ground of opposition under Section 25 and revocation under Section 64.
- Courts treat the consequence as discretionary and look at materiality, not just the fact of omission.
Common mistakes and misunderstandings
- Treating Form 3 as a one-time filing. The undertaking continues for as long as the Indian application is pending.
- Assuming that because the Patent Office can search foreign databases, disclosure is optional. The statutory duty still rests on the applicant.
- Disclosing only the priority application and not later family members in other countries.
- Believing a Section 8 objection automatically kills the patent. It is a real risk, but the outcome depends on materiality and the decision maker's discretion.
- Leaving the duty with a foreign attorney who has no instruction to report back to the Indian agent.
Connected provisions
A section of the Act states what the law requires. The detail of complying with it, including forms, periods and office procedure, sits in the Patents Rules, 2003. The Rules are a separate instrument and change far more often, so they are shown alongside rather than folded into the section.
Forms, deadlines and fees
Forms used under the Patents Rules are prescribed in the Second Schedule. They are revised when the Rules change, so download the current version from the Patent Office website rather than reusing a copy saved earlier.
- The statement and undertaking on Form 3 is filed with the application or within six months of filing, as prescribed by Rule 12.
- An updated Form 3 is required when a further foreign application for the same or substantially the same invention is filed; the 2024 Rules link the update to the first statement of objections, so check the current Rule 12 for the exact period.
- Details of foreign prosecution under the second limb must be furnished within the time the Controller specifies in the requisition.
Open the deadline calculator — and have every date confirmed against the current Rules before you rely on it.
Where a fee is payable under this provision, the figure comes from the First Schedule. Categories of applicant are charged at different rates, and electronic filing is treated differently from paper filing, so an accurate number can only come from the Schedule in force on the day you file. How Indian patent fees work.
Amendment history
What changed in this provision, newest first. Read the footnotes in the official consolidated text for the full record.
- 2005The Patents (Amendment) Act, 2005The duty was tied to the grant of the patent rather than to acceptance of the specification, and the wording on giving details of how corresponding foreign applications are being processed was reworked.
- 2002The Patents (Amendment) Act, 2002The section was amended as part of the move to a publication and examination system, with the periods and the manner of giving information left to the Rules. Attribution pending reviewer confirmation.
Compiled from official consolidated texts and Gazette notifications. See the site-wide change log.
Related judgments
Maj. (Retd.) Sukesh Behl & Anr. v. Koninklijke Philips Electronics N.V.
FAO(OS) 16/2014 (Delhi High Court, judgment dated 7 November 2014)
Question before the courtWhether a failure to file complete information about corresponding foreign applications leads automatically to revocation of the patent.
HeldThe Division Bench refused to revoke the patent at that stage. It read the word may in the revocation provision as leaving the court a discretion, so a shortfall in the foreign filing information does not by itself end a patent. The court must ask whether the omission was a deliberate suppression of material information or an inadvertent or clerical lapse, and whether what was left out actually mattered. Because that question depends on evidence, it could not be decided on affidavits and was left for trial.
Citation details are being confirmed against an official report before this summary is treated as verified.
Case notes are written in our own words from the judgment and are published only after legal review. They are not advice and not a prediction about any other matter. All case notes.
Questions people ask about Section 8
What is Form 3 under the Patents Act?
Form 3 is the statement and undertaking regarding foreign applications required by Section 8 and prescribed by Rule 12. In it the applicant lists the particulars of applications for the same or substantially the same invention filed outside India, such as the country, application number, filing date and status, and undertakes to keep the Controller informed of later foreign filings. It is normally filed with the Indian application or within six months of filing, and an updated Form 3 is filed as the family grows.
What happens if you do not comply with Section 8?
Failure to disclose the information required by Section 8, or furnishing information that the applicant knows to be false, is a ground of pre-grant opposition, post-grant opposition and revocation under Section 64. In practice the outcome is not automatic. Indian courts have held that the Controller and the court have discretion, and they consider whether the omission was deliberate, whether it was material, and whether it deprived the office of information that would have mattered. Even so, the risk and the cost of defending the point are significant.
Do I have to file Form 3 if I have no foreign applications?
The undertaking limb still applies. Applicants routinely file Form 3 stating that no corresponding foreign application has been made, together with the undertaking to inform the Controller if one is filed later. That is the safer course, because the duty is triggered the moment a foreign filing is made and the undertaking is the mechanism through which the office is told. If you never file abroad, nothing further is required beyond the initial statement.
Did the 2024 Rules change Section 8 compliance?
The section itself was not rewritten, but the Patents (Amendment) Rules, 2024 changed how it is administered. The timing for filing updated details was linked to the first statement of objections rather than to each foreign filing date, and the Controller was expressly permitted to use accessible and available databases instead of requiring the applicant to supply documents the office can retrieve. The Controller may also condone delay or extend time on a request under Rule 138. Always read the current Rule 12 text.
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