Everything About “Foreign Filing Permit” That An Indian Inventor Should Know

In the area of “Intellectual Property”, a patent applicant is required to obtain a written Foreign Filing License FFL permit from the national patent office prior to applying for a foreign patent.

When FFL requirement arises?

• When there is less or no market for an invention where it has been developed

• Invention is considered a non-patentable subject matter in country of origin

• Invention is produced by members of R&D teams working in more than one country

Why FFL is required?

The whole idea behind following this procedure is monitoring the inventions, in particular, defense and atomic energy inventions in national interest and for security reasons.

FFL Requirements: India

In India, the statute governing FFL is Section 39 of the Indian Patent (Amendment) Act 2002, amended in 2005. The Controller disposes permission for filing abroad ordinarily within 21 days from filing such request before the Indian Patent Office. Similar provisions to FFL exist in other jurisdictions as well, though with slight variance.

Documents required for filing Foreign Filing License (FFL) before Indian Patent Office:

1.    A brief description of the invention, title of the invention including drawings, if any with the FFL form.

2.    Name and addresses of Inventor(s) who are ‘resident in India’, co-inventors not residing in India and assignee, if any

3.   Name of the countries in which the patent application of the invention would be filed (with reasons) after obtaining the FFL

4. Power of Attorney from the inventor(s) or the patent applicant who are resident in India, where a patent agent/patent attorney is appointed to represent them before the Indian Patent Office.

Other Countries (US, UK and Others)

USPTO, under 35USC 184, imposes an obligation on a person not to file or cause or authorize to be filed an application for patent in a country outside the US without obtaining a license from the Commissioner of Patents for an invention made in the US. On USPTO website, first time filers have access to a downloadable guide and assistance is also available via Patents Electronic Business Center.

UK Patents Act 2004, under section 7 requires first filing in the UK only if the invention is related to military technology, or if for any reason the publication of the information in the application might prejudice national security or public safety.

South Korea and Canada also impose some sought of FFL requirements. On the other hand, countries like Japan, Indonesia, Taiwan, Mexico, and Australia apparently do not impose any such restriction.

How to Check FFL Requirements for a Country?

It is prudent to check the FFL requirements of the country of citizenship of an inventor in addition to the country of residence, in case both are not same. For that, writing a mail to the concerned patent office to confirm its stand in this regard and keeping a record of it is a good idea.

What If You File For A Patent in a Foreign Destination Without Getting FFL in India?

A defaulter who files outside India (US or other foreign destination) without obtaining a FFL here, is liable for penalty for contravention of the Section 39. Also, if later he files a patent application in India, it may be rejected.

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