What is Form 3 in Patent Act?

What is statement of undertaking in patent

Form 3 in Patent Act is a means to inform the Indian Patent Office about all foreign filings made by an Applicant. Section 8 of Indian Patent Act requires the Applicants to inform the Indian Patent Office about the detailed particulars of foreign counterpart applications of an Indian patent application made by them.

Section 8 of Indian Patent Act reads as follows:

“(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 or subsequently within the prescribed period as the Controller may allow—

              (a) a statement setting out detailed particulars of such application; and 

              (b) an undertaking that, up to the date of grant of patent in India, he would keep the Controller informed in writing, from time to time, of 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.”

Section 8(1) implies that if an Applicant has filed or is prosecuting a foreign application related to the corresponding Indian application filed by the Applicant, the Applicant is required to inform the Controller about this foreign application. This information is given in Form 3 and it should include:

  • A statement indicating the particulars of this application (e.g. application number and filing date etc.)
  • An undertaking that after the statement is filed and until the Indian patent application is granted, the Applicant would keep the Controller informed from time to time about the foreign applications.

Therefore, form 3 needs to be filed by the Applicant in 2 scenarios:

  1. When the Indian application is filed – The applicant can file Form 3 along with the Indian application or up to 6 months from the filing date of the Indian application.
  2. After filing the Indian application and until its grant (periodically) – The applicant should file Form 3 up to 6 months from filing of each foreign application. It is also a good practice to file Form 3 thereafter every 6 months or so, to inform the Controller about any changes in status of all foreign applications/publication notices/Office Action issuance/Patent Grants/Abandonments etc.

In an additional scenario, section 8 also allows a Controller to ask the Applicant for the foreign filing information at any given stage in prosecution of the Indian application. Section 8(2) reads as follows:

“(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.”

If a Controller requires the particulars of any foreign counterpart application, the Applicant is required to respond with the requisite information within 6 months from the date when the Controller asks for this information.

What is the fee required to file Form 3?

There is no official fee required to file Form 3 under any scenario discussed above. However, there may be a professional fee charged by your Patent Agent or Patent Attorney depending on your agreement with them.

What are the consequences of not filing Form 3?

Form 3 is a critical requirement under the Patent Act. If form 3 is not filed or not timely filed, it can serve as a ground for opposition of the patent/patent application or even revocation of a granted patent.

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