IP Lab

File Foreign Application Prosecution History With Indian Patent Office

During the prosecution of the Indian patent, one provision (Section 8), which has attained importance is the requirement of filing information about foreign patent applications in relation to the same or substantially the same invention. Noncompliance of this provision is a ground for pre-grant opposition, post-grant opposition and revocation of a patent, irrespective of the fact that the invention is novel, non-obvious and useful.

The courts and tribunals in the recent past in India have revoked the patents for non-compliance with Section 8.

Please click here to accesses the article analyzing the nuances of the relevant statutory provisions, case laws and the problems faced by patent applicants in complying with this requirement.

-  Ajay Chandru, Aditi Jha & Gowree Gokhale
You can direct your queries or comments to the authors

Disclaimer

The contents of this hotline should not be construed as legal opinion. View detailed disclaimer.

This hotline does not constitute a legal opinion and may contain information generated using various artificial intelligence (AI) tools or assistants, including but not limited to our in-house tool, NaiDA. We strive to ensure the highest quality and accuracy of our content and services. Nishith Desai Associates is committed to the responsible use of AI tools, maintaining client confidentiality, and adhering to strict data protection policies to safeguard your information.

This hotline provides general information existing at the time of preparation. The Hotline is intended as a news update and Nishith Desai Associates neither assumes nor accepts any responsibility for any loss arising to any person acting or refraining from acting as a result of any material contained in this Hotline. It is recommended that professional advice be taken based on the specific facts and circumstances. This hotline does not substitute the need to refer to the original pronouncements.

This is not a spam email. You have received this email because you have either requested for it or someone must have suggested your name. Since India has no anti-spamming law, we refer to the US directive, which states that a email cannot be considered spam if it contains the sender's contact information, which this email does. In case this email doesn't concern you, please unsubscribe from mailing list.