These are the provisions of Section 8(1) of the Indian Patents Act.

As far as this subsection is concerned, two scenarios therefore arise. Corresponding patent applications may be filed before the filing of the Indian application or after the filing of the Indian application. These two sets of filings are subject to different time limits for the purposes of complying with the requirements of Section 8(1).

In respect of the corresponding patent applications filed outside India before the filing of the Indian application, the bibliographic details must be provided within six months of the filing of the Indian application. If within the prescribed period, the details are not provided, the applicant is in default. In respect of the corresponding patent applications filed outside India after the filing of the Indian application, the bibliographic details must be provided within six months of the event occurring i.e. after filing of the corresponding application. A petition can be filed under Rule 137 for condonation of delay and the document may be taken on record subject to the Controller’s approval.

When changes occur in the corresponding applications such as publication, grant, rejection, opposition and the like, this information is also required to be conveyed to the Indian Controller of Patents within six months of the event occurring.An applicant for a patent in India is not required to voluntarily provide prosecution details of corresponding applications to the Indian Controller of Patents. This requirement arises under Section 8(2) when the examiner in the course of examination requires the applicant to furnish prosecution details of corresponding applications. This invariably happens when the first examination report is issued and according to the current Indian practice, is a mandatory requirement of the Controller in the FER. A specimen of the requirement from the FER is reproduced:

“Details regarding the search and/or examination report including claims of the application allowed, as referred to in Rule 12(3) of the Patent Rules,2003, in respect of same or substantially the same invention filed in all the major Patent Offices along with appropriate translation where applicable, should be submitted within a period of six months from the date of receipt of this communication as provided under section 8(2) of the Indian Patents Act."

As far as Section 8(2) is concerned, again two scenarios arise. The prosecution details may arise either before the issue of the examination report or thereafter.In respect of the details of prosecution in the corresponding application that arise before the issue of the examination report, these details are required to be provided to the Controller within six months of the issue of the Indian examination report. The compliance of the requirement under Section 8(2) is not therefore dependent on the substantive compliance of the examination report itself and therefore these two compliances are to be treated differently.In respect of any details of the prosecution in the corresponding application that arise after the date of the issue of the Indian FER, these details are required to be provided within six months of the event occurring. According to Section 8(2), the Controller may require the applicant to furnish the prosecution details anytime up to the time of grant of a patent or the refusal to grant of a patent. As with Section 8(1), a petition can also be filed in this instance under Rule 137 for condonation of delay and the document may be taken on record subject to the Controller’s approval.

The prosecution details required to be furnished include any examination reports, objections, claim or specification amendments, oppositions, rejections, grants, withdrawals and the like made in each of the corresponding applications.Failure to provide these prosecution details will be considered as non-compliance of Section 8(2). If the 8(2) requirement is not complied with within the prescribed period, the Indian application is then vulnerable to attack in opposition or revocation proceedings.

We recommend that the applicant should not wait to comply with Section 8(2) until the FER is issued but provide this information periodically so that no details are inadvertently left out which would give an opponent the opportunity to raise objections to the grant of the patent.

For further information, please contact Dr Mohan Dewan on dewan@rkdewanmail.com