Foreign Application Disclosures Under Section 8: Passing The Parcel?

The Draft Patents (Amendment) Rules, 2023 (Draft Rules¹) published in August 2023 proposes amendments to several critical aspects of patent prosecution before the Indian Patent Office. One such aspect is the obligation on a patent applicant to file information about corresponding foreign patent applications within prescribed timeline as per Section 8 of the Patents Act, 1970. This article discusses the proposed changes to timelines for filing information about corresponding foreign patent applications, and its potential to increase the burden on the patent office.

Scope of Section 8

Section 8 of India's Patents Act, 1970 requires that an applicant seeking a patent in India, must provide details of an application filed in any other country with respect to same or substantially same invention (corresponding foreign application). Section 8(1) read with Rule 12 requires the applicant to,