In scenarios wherein a particular technology has not arrived in India, an applicant may not see the benefit of protecting that invention in the Indian market. As a result, he/she may choose to file the patent application directly in a foreign country, instead of filing it in India first. Similarly, in cases where an invention is not patentable in India (i.e., it falls under section 3 of the Patents Act), the applicant may choose to file the patent application overseas.

In this regard, it is important to understand that whenever an Indian applicant intends to file a patent application in a foreign country or submits a Patent Cooperation Treaty application, it is imperative that they obtain a Foreign Filing License (FFL) from the Indian Patent Office.

Foreign Filing License and its Importance

Foreign filing license is a written permission granted by the Indian Patent Office to an Indian applicant to file a patent application directly in a foreign country. As per the Indian Patents Act, 1970, it is mandatory for an Indian applicant to obtain FFL while seeking protection in a foreign country without first filing an application in India. Furthermore, the Foreign Filing License is also required when the applicant has filed a patent application in India but wants to file the application in a foreign country before completion of six weeks from the date of filing the patent application in India.

It is important to file Foreign Filing License so that the government can review subject matter of the application before it is filed in a foreign country. Some inventions may fall under the category of national interest. For example, inventions related to military applications (defense and atomic energy) fall under the ambit of national security, and therefore should be monitored before they are allowed to be filed in a foreign country. The Foreign Filing License helps the government in determining the same, and once it is concluded that there is no such issue with regards to disclosing the details of the invention in a foreign country, the Indian Patent Office usually grants the Foreign Filing License within 21 days of receiving the request.

Statutory Provisions for Obtaining Foreign Filing License in India

Section 39 of the Indian Patents Act, 1970

It discloses information on the Foreign Filing License and states that residents shall not apply for patents outside India without prior permission.

“(1) No person resident in India shall, except under the authority of a written permit sought in the manner prescribed and granted by or on behalf of the Controller, make or cause to be made any application outside India for the grant of a patent for an invention unless-

(a) an application for a patent for the same invention has been made in India, not less than six weeks before the application outside India; and

(b) Either no direction has been given under sub-section (1) of section 35 in relation to the application in India, or all such directions have been revoked.

(2) The Controller shall dispose of every such application within such period as may be prescribed: Provided that if the invention is relevant for defense purpose or atomic energy, the Controller shall not grant permit without the prior consent of the Central Government.

(3) This section shall not apply in relation to an invention for which an application for protection has first been filed in a country outside India by a person resident outside India.”

Rule 71 of the Patent Rules, 2003

It talks about the permission for making patent application outside India under section 39.

“(1) The request for permission for making patent application outside India shall be made in Form 25.

(2) The Controller shall dispose of the request made under sub-rule (1) within a period of twenty-one days from the date of filing of such request: Provided that in case of inventions relating to defence or atomic energy, the period of twenty-one days shall be counted from the date of receipt of consent from the Central Government.”

Details Required for Filing Foreign Filing License

As mentioned above, in order to obtain a Foreign Filing License, the applicant will have to disclose the details of the invention to the Indian Patent Office. The details of the invention should include the title of the invention, its description, and the drawings (if any). This facilitates better understanding of the invention. Along with these details, following forms need to be submitted:

• Form 25 – application for permission for making patent application outside India
• Reason for making the application (low market potential, non-patentable subject matter)
• Name and address details of inventors who are resident in India
• Name and address details of Assignee if the application has been assigned
• Name of foreign countries where the application is expected to be filed after receiving the Foreign Filing License
• Power of attorney when the applicant is being represented by a patent attorney or agent
• Form 28 – in case the applicant is a start-up or a small entity

It is important to note that the only way by which the Indian Patent Office can determine whether the applicant or inventor is a resident of India is through the address used by the applicant or inventor in the first filed and/or subsequent patent applications. Therefore, if any application is filed in India via PCT or convention route and the priority application discloses an Indian address of any applicant or inventor, then the Patent Office is expected to object and question the non-compliance of Section 39 requirement.

Penalty for Contravention of Section 39

As per the Indian Patents Act, if an applicant fails to obtain a Foreign Filing License before filing an application in a foreign country, they may have to face penalty. Section 118 of the Indian Patents Act refers to the penalty in case the applicant does not comply with section 39. In such cases, the applicant shall be punishable with imprisonment for a term which may extend to two years, or a fine, or both. Furthermore, Section 40 of the Indian Patents Act states that if a patent application has been directly filed in a foreign country without first filing a Foreign Filing License, the application shall be deemed to have been abandoned and, if the patent application is granted, then the patent shall be liable to be revoked.

Conclusion

Applicants may choose to file for a patent outside India first for several reasons. However, before moving ahead with the process, it is imperative to obtain Foreign Filing License from the Indian Patent Office. Failure to acquire this license can result in monetary penalty, or imprisonment, or both.

Sagacious IP’s patent filing services enable businesses to file well-structured patent application. They are in accordance with rules and guidelines of the respective patent office. Our trained and highly experienced patent practitioners are committed to secure your invention in the most efficient and cost-effective manner.

-Ronnie George (IP Drafting, Filing & Prosecution) and the Editorial Team

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