Section 8 particulars

An entirely administrative duty that has cost patentees their patents, because forgetting it is a ground of revocation.

In simple words

The duty to tell the Indian Patent Office about corresponding applications you have filed outside India for the same or substantially the same invention, and to keep the Controller informed.

Think of it as

Telling India what you are doing everywhere else.

Why it matters

The 2024 Rules simplified this considerably. The statement and undertaking are filed within six months of filing in India, and the duty to keep the Controller informed is now discharged within three months of the first statement of objections - replacing the old rolling six-month obligation. The Controller may also now condone delay or extend time for filing Form 3 by up to three months on a request in Form 4, and may use accessible databases to obtain the information.

A simple example

You file in India in April, then in the EPO in September. Under the current rules the EPO filing is reported with the Form 3 that follows the first examination report, rather than through a separate rolling filing.

Common mistake

Treating a section 8 lapse as fatal. Indian courts have held that revocation on this ground is discretionary and turns on whether the omission was deliberate rather than a bona fide error - but you do not want to be arguing that point at trial.

Where it comes from

Patents Act 1970, section 8 and section 64(1)(m); Patents Rules 2003, rule 12 as amended in 2024