cpc

form 3-statement and undertaking under section 8

INDIAN PATENT AGENT

Filed a continuation application of PCT application (having an Indian priority) in US (Provisional) and later filed non provisional and enterd PCT for that contiuation application. 

Kindly confirm whether we have to file form 3 including the details of the new provisional and  pct filed?

 
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Freelance

Your question requires a little bit of more clarification.  But having said that you would be required to file F-3 since the continuation application is expected to have same subject matter as that of parent. As long as the subject matter is substantially similar, you are bound to keep the controller informed of all such applications (whether continuations or divisionals or may even be continuation-in-part since all of them belong to the same patent family, I am still a bit skeptical about CIPs) being prosecuted in other countries until the grant of Indian patent.

 

Since non filing F-3 as required by Sec 8 can come back and haunt you at a later day, it would be always safe to file the same. Since all of your prosecution history associated with the application will be available through PAIR, I see no point in not filing such information with the Indian Patent Office.

I hope this helps.

 
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INDIAN PATENT AGENT

What exactly iam aking is - filed two provisional specifications in US follwed by non provisional specifications.

These two provisionals are continuation of PCT application claiming priority of an Indian patent application. 

For one of the two provisional specifications filed a new PCT application. 

My question is whether we have to include the details of the newly filed  PCT application in Form 3 or not

Do we have to update the status of the foreign patents already mentioned in Form-3 ?

If so kindly inform the time limit.

 
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Freelance

Thanks Navya for your clarification.

 

It appears that you proceeded via a continuation route in US rather than regular national stage entry. Usually this method is adopted to move back the 102(e) offensive prior art date, besides availing some other flexibilities. [correct me if this is not the case]

 

Irrespective of the tactical maneuvers used in US, one thing that appears from your statements is you are claiming priority from an Indian patent application. Therefore I can safely assume that the subject matter of your subsequent application is similar to what has been disclosed in your priority application (Indian application, which is still active). If this is the case, going by the plain reading of Sec 8, filing F-3 appears to be necessary.

 

This does not constitute any legal advice. You may consult a patent attorney with all the facts as you might not like to discuss so explicitly on a public forum.

 
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I had worked in the paten toffice as an examiner of patents & designs! I answer the queries:

1. YES, you  have to include the details of the newly filed  PCT application in Form 3 (statement & undertaking) in indian application;

2. YES, you are required to update the status of the foreign patents already mentioned in Form-3.

Thanks.

 
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