Statement and Undertaking
The provision for Statement and Undertaking regarding foreign applications is envisaged under Section 8 of the Patents Act, 1970.
Section 8 envisages three things:
According to Section 8(1) (a), the Applicant has to provide a statement disclosing the particulars of Applications relating to the same or substantially similar invention, filed outside India. The Applicant must provide the information within 6 months from the date of filing the patent application in India.
Section 8(1) (b) states that until the grant of the patent in India, the Applicant must provide an undertaking that he will keep the Controller updated with regard to the filing of the applications outside India. This sub-section envisages a scenario where foreign applications are filed subsequent to filing the statement and undertaking. The Applicant must provide the information within 6 months from the date of filing.
Section 8(2) gives the Controller the power to ask the Applicant to furnish details regarding the processing of the applications filed outside India. The Applicant must furnish the details sought by the Controller within 6 months from the date of communication by the Controller.
On the whole, Section 8 entrusts upon the Applicant the responsibility for disclosing information about foreign applications relating to the same or similar invention. The disclosure under Section 8 is compulsory and voluntary.
Despite being voluntary, the fact that it is compulsory means that the Applicant will have to face statutory repercussions for not complying with the requirements of Section 8 and issuing a Statement and Undertaking.
What are the repercussions for not complying with Section 8?
Violating Section 8 may be a ground for:
Post-grant opposition
Revocation of the patent
Judicial interpretation of the effect of non-compliance:
Given the effects of not complying with Section 8, the next question that arises for consideration is whether not meeting the requirements of Section 8 automatically invokes the aforementioned effects.
Initially, the Judiciary took a strict stance insofar as fulfilling the requirements of Section 8 was considered a ground for revoking patents. However, with progress in time, the Courts have softened their stance with regard to compliance with Section 8.
In the precedent Sukesh Behl vs. Koninklijke Phillips Electronics (FAO (OS) No. 16 of 2014), the Delhi High Court opined that non-compliance with Section 8 does not automatically entitle the revocation of the patent. The power conferred under the Patents Act, 1970 for the revocation of a patent is discretionary and not mandatory.
Section 8 is a vital section insofar as it eases the process of examination of patents. The recent judgment of the Delhi high court gives rise to the interpretation that though compliance with Section 8 is mandatory, its non-compliance will not necessarily cause irreparable damage in the form of revocation of the patent.
