Section 8 explained: this guide covers what it means, who it applies to, the step-by-step process, documents required, fees, due dates and penalties in India — so you can stay compliant with confidence and avoid costly mistakes.
If you are applying for a patent in India for an invention that you are also pursuing abroad, section 8 requires you to tell the Controller. You file a statement of detailed particulars of the foreign application, and an undertaking to keep the Controller informed until the patent is granted. Section 8(2) also lets the Controller ask for details of how the foreign application is being processed. Applicants who treat this as a formality are the ones most likely to be caught out later, so it belongs in any patent examination request plan.
Where an applicant is prosecuting a patent application outside India for the same or substantially the same invention (or knows that someone through whom he claims, or deriving title from him, is doing so), he must file a statement of detailed particulars and an undertaking to keep the Controller informed in writing up to the date of grant. Under 8(2), the Controller may, until grant or refusal, require details of the processing of the application in a country outside India, and the applicant must furnish the information available to him within the prescribed period.
Section 8(1): who must give information
The trigger is in the opening words: "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".
That gives three situations:
| Situation | Text |
|---|---|
| The applicant himself, alone or jointly | "prosecuting ... an application for a patent in any country outside India" |
| A person through whom the applicant claims | "to his knowledge ... prosecuted by some person through whom he claims" (for example, the inventor who assigned the right to apply) |
| A person deriving title from the applicant | "some person deriving title from him" (for example, an assignee) |
In each case the foreign application must relate to "the same or substantially the same invention". The words "substantially the same" widen the duty beyond identical claims. The test of knowledge ("to his knowledge") applies to the second and third situations, not to the applicant's own foreign filings.
What must be filed, and when
The applicant "shall file along with his application or subsequently within the prescribed period as the Controller may allow":
- Clause (a): "a statement setting out detailed particulars of such application"; and
- Clause (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."
Timing. The statement can go in with the application, or later "within the prescribed period as the Controller may allow". The period itself is prescribed by the Patents Rules, 2003, which are not part of the text we consulted, so no figure is given.
Duration of the undertaking. "Up to the date of grant of patent in India". The footnote records that the words "up to the date of the acceptance of his complete specification filed in India" were replaced by the 2005 Amendment Act, with effect from 1-1-2005, after the old acceptance step was omitted from the Act (see our article on section 21, which names the omitted sections 22 to 24). Clause (a) was substituted by the 2002 Act (with effect from 20-5-2003), and the words "detailed particulars as required under" in clause (b) came from the same Act.
What the undertaking covers. It covers "every other application relating to the same or substantially the same invention ... filed in any country outside India subsequently" to the statement. So later foreign filings must also be reported.
Section 8(2): the Controller's power to ask
"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."
Note the following:
- Who acts: the Controller requires; the applicant furnishes.
- Window: from the filing of the Indian application until a patent is granted or refused.
- What: "details, as may be prescribed, relating to the processing of the application in a country outside India". The Act does not list what those details are; the Rules do.
- How much: "information available to him". The duty is to give what the applicant has, not to find out what he does not have.
- Period: "such period as may be prescribed".
Sub-section (2) was substituted by the 2005 Amendment Act (with effect from 1-1-2005).
What the section does not say
- It does not state a penalty for failing to give the information. Section 8 on its face sets out a duty and a power, but names no consequence in its own text. Other provisions of the Act deal with the effect of non-compliance, and we explain those where they arise in the series.
- It names no form, fee or period; all are "prescribed".
- It does not define "prosecuting", and does not limit the foreign application to a convention country: the words are "any country outside India".
Worked example
Example. Verma Hydro Systems Pvt Ltd files an Indian application for a fictional compact turbine blade. Three months earlier, its engineer Rohit Verma, from whom the company took an assignment, filed a corresponding application in a foreign country, and the company is aware of it. Under section 8(1), the company must file a statement setting out detailed particulars of that foreign application, along with the Indian application or later within the prescribed period the Controller allows, and an undertaking to keep the Controller informed until grant. Six months later the company files another foreign application for the same blade. The undertaking requires it to inform the Controller of that one too, in writing, within the prescribed time. After examination begins, the Controller writes to the company to furnish details of how the foreign application is being processed. Under section 8(2), the company must furnish the information available to it within the prescribed period.
Practical points
Keep a log of every foreign counterpart, including those of an assignor or assignee, update it up to grant, and keep the foreign processing record in case the Controller asks under section 8(2). Convention and PCT routes are different filings under the Act (see the convention application guide); section 8 speaks of any country outside India.
For how examination proceeds after filing, see our overview of the examination process, request, FER and hearing.
Need help with ...?
Keeping the foreign-filing statement accurate and up to date is easier with a single docket across jurisdictions. Our team can help you manage the filing record and the examination stage under patent examination request support.
Key takeaways
- If you prosecute, or know someone connected to you is prosecuting, a foreign application for the same or substantially the same invention, you must file a statement of detailed particulars and an undertaking.
- The undertaking runs up to the date of grant of the Indian patent and covers later foreign applications.
- Periods and details are "as prescribed" under the Patents Rules, 2003.
- Under 8(2) the Controller may, until grant or refusal, require details of foreign processing; you furnish the information available to you.
Read next
- Section 7: form of application
- Section 9: provisional and complete specifications
- Section 12: examination of application
- Convention application and Paris Convention priority
Disclaimer: Based on the Patents Act, 1970 as amended up to the Jan Vishwas (Amendment of Provisions) Act, 2023, as consulted on 1 October 2026. Forms, fees and time limits under the Patents Rules, 2003 change from time to time and are not covered here. This article is general information, not legal advice; check the official text before acting.