Information and undertaking regarding foreign applications
Section 8 of the Patents Act, 1970 deals with information and undertaking regarding foreign applications. Where an applicant for a patent under this Act is prosecuting either alone or jointly with any other person an application for a patent in any country outside India in respect of the same or substantially the same invention, or where to his knowledge such an application is being prosecuted by some p The Act came into force on 01 Apr 1978.
(1) Where an applicant for a patent under this Act is prosecuting either alone or jointly with any other person an application for a patent in any country outside India in respect of the same or substantially the same invention, or where to his knowledge such an application is being prosecuted by some person through whom he claims or by some person deriving title from him, he shall file along with his application 1[or subsequently 2[within the prescribed period as the Controller may allow]]--
3[(a) a statement setting out detailed particulars of such application; and]
(b) an undertaking that, 4[up to the date of grant of patent in India], he would keep the Controller informed in writing, from time to time, of 5[detailed particulars as required under] clause (a) in respect of every other application relating to the same or substantially the same invention, if any, filed in any country outside India subsequently to the filing of the statement referred to in the aforesaid clause within the prescribed time.
6[(2) At any time after an application for patent is filed in India and till the grant of a patent or refusal to grant of a patent made thereon, the Controller may also require the applicant to furnish details, as may be prescribed, relating to the processing of the application in a country outside India, and in that event the applicant shall furnish to the Controller information available to him within such period as may be prescribed.]
Section 8, The Patents Act, 1970 (Act 39 of 1970).
Cross-references
Extracted from the operative text of the enactments themselves. Every destination below exists in our corpus.
Related judgements & precedents
These are some judgments that construed this section, and hold precedence value. They hold authority on how to read, interpret and use this section.
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Microsoft Technology Licensing LLC v. The Assistant Controller of Patents & Designs
Court's Decision & Legal Precedent
Patents Act s.8 Form-3 foreign-application disclosure is a substantive filing duty; Controller refusal that finds “no Form-3” despite three Form-3 filings on record is non-application of mind and cannot stand — refusal set aside and de novo consideration directed before a different Controller within six months (review to be withdrawn).
On this section: True
The holding above is the ratio decidendi as extracted from the judgment by eCourts India, reproduced unaltered — it is a rendering of the court's reasoning, not a substitute for its words. Read the order itself before relying on it.
Judgments citing this section
These may be obiter dicta or a precedent, for you to study. These are the judgments where this section is quoted.
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… Further contentions of Glenmark: 18.1 Glenmark further contended that IN 816 was vulnerable to invalidity as Merck had not supplied details of foreign patent applications in respect of the same or similar products, as was required by Section 8 of the Patents Act. It was further contended, by Glenmark, that IN 816 did not disclose the process by which the SFB could be isolated from Sitagliptin. The only salt claimed with an enabling disclosure in IN 816, it was contended, was Sitagliptin Hydrochloride. No other salt was exemplified in the suit patent. As …
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… In the instant case, it is no doubt true that the Patent Attorney of the plaintiff himself in his affidavit filed before the COP stated that certain information in relation to corresponding foreign applications was omitted while filing the information as required under Section 8 of the Patents Act. However, it is not as if there was total failure on the part of the plaintiff to disclose the information in terms of the undertaking filed under Section 8(1)(b). The omission was only to furnish a part of the information for the reasons stated therein. It is also the specific case of the …
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… In the instant case, it is no doubt true that the Patent Attorney of the plaintiff himself in his affidavit filed before the COP stated that certain information in relation to corresponding foreign applications was omitted while filing the information as required under Section 8 of the Patents Act. However, it is not as if there was total failure on the part of the plaintiff to disclose the information in terms of the undertaking filed under Section 8(1)(b). The omission was only to furnish a part of the information for the reasons stated therein. It is also the specific case of the …
Made under this section, and citing it
4 instruments name this provision in its title or its text without being made under it.
Questions about Section 8
What have the courts held on Section 8 of the Patents Act?
Microsoft Technology Licensing LLC v. The Assistant Controller of Patents & Designs (05 Mar 2024) is the leading judgment on this section among those set out below: True.
How do I find court cases under Section 8 of the Patents Act?
In judgments and charge sheets this section is written several ways, and each form finds a different set of orders. These search the full text of every order eCourtsIndia holds, best matches first: Patents Act 8, section 8 Patents Act, section 8 of the Patents Act. People searching for it also type patent act 27 8 and section 8 of patent act 1970. Each opens the full list of orders on eCourtsIndia, where it can be narrowed by court, year and outcome. 1 reported judgment on this section is set out on this page, beginning with Microsoft Technology Licensing LLC v. The Assistant Controller of Patents & Designs (05 Mar 2024).
What should I read with Section 8 of the Patents Act, and has it changed?
3 other provisions in this corpus refer back to it. 4 instruments name it without being made under it, most recently Patents (2nd Amendment) Rules, 2020 (2020), then The Patents (Amendment) Rules, 2014 (2014).
When did Section 8 of the Patents Act come into force?
Section 8 of the Patents Act, cited as Patents Act 8, came into force on 01 Apr 1978, having been enacted on 19 Sep 1970. It is in force as at the date shown on this page.
Other sections of this Act
Source and method. Compiled from the enactments of Parliament and of the State legislatures as published on India Code, and republished together with commentary and other original matter under section 52(1)(q)(ii) of the Copyright Act, 1957. Structured, cross-referenced and maintained by eCourtsIndia. Text as in force on 18 Oct 2026. This page is not a substitute for legal advice.