Section 8 Compliance: Key to Safeguarding Your Indian Patent

When filing a patent application in India, many applicants focus heavily on drafting strong claims and responding to examination reports. However, one often overlooked requirement can later become a serious threat to the patent’s validity, Statement and Undertaking under Section 8 of the Indian Patents Act, 1970.

What Is Statement and Undertaking?

A Statement and Undertaking is a statutory disclosure requirement that applies when you have filed, or plan to file, corresponding patent applications for the same invention in foreign countries.

• The Statement requires you to inform the Indian Patent Office about details of all corresponding foreign patent applications.
• The Undertaking is a promise that you will continue updating the Controller of Patents about any new foreign filings or prosecution developments while your Indian application is pending.

This information is typically submitted through Form 3.

Why is Section 8 so important?

The purpose of section 8 is transparency. It helps the Indian patent office check

• Whether your invention is novel and inventive globally
• Whether similar claims have been accepted, rejected, or amended elsewhere

The law requires this disclosure to be made within six months of filing your Indian application, and updated whenever there are material developments abroad. Failure to comply can have serious legal consequences, even after the patent is granted.

What Happens If You Don’t Comply?

Indian courts have repeatedly emphasized that Section 8 compliance is not a mere formality.

1. Chemtura Corporation v. Union of India

In this landmark case, Chemtura Corporation’s patent was challenged because it failed to disclose updates regarding corresponding foreign patent applications during prosecution in India. The Delhi High Court ruled that the non-compliance with Section 8’s requirement to disclose and keep the Controller informed of foreign filings was a prima facie ground for patent revocation. The applicant had not submitted office actions and examination reports from the USPTO and the EPO, which were critical for deciding patent validity. This case highlighted the duty of candor towards the patent office and the serious legal risks of not complying with the Statement and Undertaking provisions.

2. Google LLC v. Controller of Patents (2024)

In a recent case, the Delhi High Court dealt with Google’s patent application where it was found that the company had failed to disclose the filing of related European patent filings. The court imposed a financial penalty for this failure and emphasized the strict nature of transparency required under Section 8 rules. This case reinforced that non-disclosure might result in both penalties and jeopardize patent rights, reflecting the seriousness of the Statement and Undertaking compliance.

3. Roche v. Cipla

In this infringement case, Cipla raised a counterclaim against Roche for not disclosing information about corresponding US patent applications while prosecuting an Indian patent. The allegation of non-compliance with Section 8 was used as a ground to challenge the validity of Roche’s patent. This case demonstrated how violating Statement and Undertaking obligations could be strategically used in patent litigation to challenge or revoke patents.

A simple example

Imagine you invent a new type of smartphone camera lens. You apply for a patent in the US first, then in India. Under Section 8, you must:

• Disclose your US filing details to the Indian Patent Office

Continue updating them if you later file in Europe, Japan, or elsewhere

Failing to do so could put your Indian patent at risk, even years later.

Conclusion

Statement and Undertaking rules were introduced to make patent applications more transparent and fairer. It stops people from hiding information and ensures that patents are only granted when the invention is truly unique globally.

Hence, for inventors and businesses, following the Statement and Undertaking rules is very important. It protects your rights and helps you avoid legal problems later. Think of it as keeping the patent office in the loop about where else you are seeking protection for your invention. Understanding and correctly filing your Statement and Undertaking is a key step toward successfully securing a patent in India while staying aligned with international patent laws.