Section 8 asks for something that sounds administrative: tell us what you’ve filed elsewhere. It has been one of the most effective grounds for knocking out Indian patents — not because applicants concealed anything, but because they stopped updating.
What must be disclosed
Section 8(1) of the Patents Act, 1970 requires an applicant to disclose corresponding foreign patent applications — including applications for inventions that are “substantially the same” as the Indian application.
The disclosure is made in Form 3, and courts have made clear that it calls for a meaningful declaration rather than a formality: applicants are expected to state the current status of each foreign application, not simply record that applications are “pending”.
The deadlines
As originally framed: the initial declaration had to be filed either with the Indian application or within six months thereafter. Further declarations were then due within six months of any change in status of the foreign applications, continuing until grant.
That continuing obligation was the source of most difficulty. Prosecution of a family across many jurisdictions generates a constant stream of status changes, each triggering a fresh six-month clock in India — and a lapse years into prosecution could be raised long afterwards.
What the 2024 Rules changed. The Patents (Amendment) Rules, 2024 substantially relaxed this. The requirement to file periodic updates every six months has been replaced by a much lighter obligation, with Form 3 required at filing (or within six months) and thereafter within a defined period tied to the first statement of objections. The Controller is also expressly empowered to access publicly available databases for this information, and to condone delay or extend time for filing Form 3 on request.
That is a meaningful reform, and it responded directly to the criticism that Section 8 had become a technical trap rather than a disclosure mechanism. Verify the current requirement before relying on either description — this is precisely the area where an out-of-date checklist causes harm.
Section 8(2) — information on request
Separately, Section 8(2) requires the applicant to furnish additional information when the Patent Office asks for it — including examination reports and objections raised in other jurisdictions.
In practice, applicants typically receive this request with the first examination report, and must respond within the period allowed for that reply.
What happens if you get it wrong
Failure to comply properly creates vulnerability at three stages:
- pre-grant opposition;
- post-grant opposition; and
- revocation of the granted patent.
Non-compliance with Section 8 is an express ground under Section 64(1)(m), and it has historically been among the most commonly and successfully pleaded grounds in Indian revocation proceedings — partly because it is objectively verifiable from the file, requiring no expert evidence about the invention itself. A challenger does not need to show the undisclosed information mattered; historically it sufficed to show it was not furnished.
Courts have since moderated the harshest applications of this, treating revocation under Section 64(1)(m) as discretionary rather than automatic, and looking at whether the omission was deliberate or material. But the discretion is the court’s, not the patentee’s, and it is not a position worth ending up in.
Why the requirement exists
The purpose is straightforward: it helps the examiner evaluate the application in light of its prosecution history elsewhere. Knowing what prior art was cited abroad, what claim amendments were required, and what objections were sustained informs the Indian decision on grant, amendment or refusal.
That rationale also explains the 2024 reform. When the Office can access foreign prosecution data directly from public databases, requiring the applicant to relay the same information every six months serves little purpose beyond generating grounds for later attack.
The takeaways
- Section 8 requires disclosure of corresponding foreign applications, through Form 3.
- Section 8(2) requires more on request — typically with the first examination report.
- Non-compliance is a ground for opposition and revocation under Section 64(1)(m).
- The 2024 Rules relaxed the updating obligation — check the current requirement.
Frequently asked questions
What does Section 8 of the Patents Act require? Disclosure to the Indian Patent Office of corresponding foreign patent applications, including those for substantially the same invention, made through Form 3.
What happens if I fail to disclose properly? It exposes the application or patent to pre-grant opposition, post-grant opposition, and revocation under Section 64(1)(m).
Do I still have to update Form 3 every six months? No — the Patents (Amendment) Rules, 2024 replaced the periodic updating obligation with a lighter requirement, and empowered the Controller to access public databases and condone delay.
What is Section 8(2)? A separate obligation to furnish information about foreign prosecution — such as examination reports and objections — when the Patent Office requests it.