Section 39 of The Patents Act, 1970:
The regulatory framework for patent applications for Indian residents seeking protection for their inventions outside of the country is emphasized in Section 39 of The Patents Act, 1970. This provision highlights the importance of obtaining explicit authorization from the Controller of Patents, and outlines a structured process for obtaining such permission. To comply with the guidelines, individuals must fulfil certain conditions, including filing an application for the same invention within India at least six weeks before filing a foreign application.

Additionally, applicants must ensure that no directives have been issued under subsection (1) of section 35 regarding the Indian application, or if any directives were issued, they must have been revoked. Section 35 of the Patents Act, 1970 deals with the confidentiality of certain inventions, specifically those related to defence, such as weapons or military technology.

The responsibility of timely processing and adjudication of these applications is delegated to the Controller by Section 39. It sets a strict timeline for the disposal of each application, demonstrating the Act's dedication to efficiency and effectiveness in patent regulation. However, the provision acknowledges exceptions, particularly in cases where the invention has national security implications, such as in defence or atomic energy.

In such cases, prior consent from the Central Government is required before the Controller can grant the necessary permit. Despite these strict regulations, Section 39 allows for some flexibility by exempting individuals residing outside of India from the requirement of seeking prior permission if they had already sought protection for their invention in a foreign jurisdiction before pursuing patent rights in India.

Section 40 of The Patents Act, 1970:
Section 40 of The Patents Act, 1970 works in conjunction with Section 39 by elucidating the repercussions of disregarding the prerequisite for prior authorization. It introduces the concept of liability for non-compliance, ensuring that residents who fail to comply with this mandate face legal consequences. This implies that Indian residents who neglect to obtain prior permission as mandated in Section 39 are held accountable under Section 40.

This obligation is crucial for upholding the credibility and efficiency of India's patent system. Section 40 authorizes authorities to levy penalties on individuals who contravene Section 39. These sanctions may include fines and, in severe cases, imprisonment. Such measures serve as a deterrent against non-compliance. Beyond imposing penalties, Section 40 also acts as a deterrent against unauthorized patent applications abroad. By enforcing accountability, it serves as a protective measure, safeguarding India's interests and preserving the integrity of its patent framework.

Selfdot Technologies (OPC) Pvt. Ltd. v. Controller General of Patents, Designs & Trademarks, 2023 SCC OnLine Mad 7520, decided on 28.11.2023:
In the matter of Selfdot Technologies (OPC) Pvt. Ltd. v. Controller General of Patents, Designs & Trademarks, the Madras High Court delved into the interpretation and consequences of Sections 39 and 40 of the Indian Patents Act, 1970. According to Section 39, Indian residents are required to seek written permission from the Controller before filing a patent application outside India, failure of which can result in penalties as outlined in Section 40, including deemed abandonment of the application filed in India.

The appellant in this case had appealed against the rejection of their patent application for not adhering to the requirements of Section 39. They had initially filed a patent application in India and subsequently filed the same invention under the PCT, which was approved by the US Patent Office. Later on, they sought to expand the scope of their invention and filed a related application in the US without obtaining permission from the Indian Patents Act under Section 39. After obtaining a US patent, which is equivalent to a patent of addition in India, they then filed the same application in India.

However, their Indian application was rejected under Section 40 due to non-compliance with Section 39, which states that failure to seek permission can result in abandonment of the Indian application.

The appellant challenged this decision through an appeal. The court clarified that Section 39 applies to patent of addition applications and emphasized the importance of Indian residents obtaining permission before filing such applications abroad. However, it also took into consideration the appellant's belief that permission was not required due to their initial filing in India. The High Court ultimately concluded that while the appellant's actions may have been a technical breach, they did not amount to a contravention of Section 39.

In its analysis of Bengal Immunity Co. Ltd. v. State of Bihar, 1955 SCC OnLine SC 2 and Mancheri Puthusseri Ahmed v. Kuthiravattam Estate Receiver, (1996) 6 SCC 185, the Court acknowledged that the appellant's actions may constitute a breach, but it would only be considered a minor, technical violation and would not automatically result in deemed abandonment under Section 40 of the Patents Act.

The Court reversed the challenged ruling and sent the application back to the Controller for review. Additionally, it granted the Controller the authority to impose conditions on the appellant for the breach of procedure, utilizing Rule 137 of the Patents Rules 2003 or any other relevant provision. It further instructed the Controller to reach a decision on the patent of addition application within four months.

Written By: Md.Imran Wahab, IPS, IGP, Provisioning, West Bengal
Email: [email protected], Ph no: 9836576565