Different jurisdictions by way of their national laws have different restrictions over Patent Application filings proceedings, outside their authority in order to safeguard national security. Most jurisdictions’ national laws make it mandatory to file the Patent Application in their jurisdiction first, before entering to another Jurisdiction. However, some jurisdictions require prior foreign filing license before filing the Patent Application in another jurisdiction.

India is one of those jurisdictions where Indian resident inventors are required Foreign Filing License from the Indian Patent Office to file the Patent Application outside India. When an Indian Patent Application is filed in India and six weeks’ time period has been passed, the Indian resident Inventor can file the corresponding Patent Application in another jurisdiction without any prior permission from the Indian Patent office.

The Indian Patent Office without prior permission prohibits the Patent Application filing in another jurisdiction due to National Security considerations and with the intent of having a check on the defense and atomic energy-related inventions. In light of this, section 39 of the Indian Patent Act prohibits the Patent Application filing in another jurisdictions or PCT, if the Invention is made by the Indian resident inventor and/or Invention is made in India.

Explanation:
If the invention is made in India by any foreign entity, the foreign filing license will be required from the India Patent Office.

If the invention is made in another country by the Indian inventors and/or any inventors were NOT resident/domiciled in India between the time periods of the invention, the foreign filing license will not be required from the India Patent Office.

If the invention is made in India and a patent application for it is filed by another country’s applicant, the foreign filing license will be required from the India Patent Office.

Requirements:
To seek the permission of the foreign filing license, the applicant and its agent need to submit a disclosure of the invention along with the Form-25. If the Form-25 is being filed by the Patent Agent, the original Power of attorney from the applicant or inventor will be submitting along with Form-25.

Timeline:
The Indian Patent Office issues permission within 21 days after the completion of requirements. However, this timeline changes for the inventions related to defense or atomic energy, where the period of twenty-one days starts from the date of receipt of consent from the Central Government.

Sections And Rules Related To Foreign Filing Licence:

The request to seek the permission of the foreign filing is filed under section 39 and rule 71 of the Indian Patent Act. Related sections and rules have been outlined below for your easy reference:

Section 39: Residents not to apply for patents outside India without prior permission:

1. No person who is a resident of 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:
   
   1. 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
   2. 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: Permission for making a patent application outside India under section 39:

1. The request for permission for making a 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.

Non-Compliance & Consequences:

There can be some consequences for inventors and applicants, where the Indian Patent Office or third party find out that the inventors and/or applicants have not complied section 39. If the Indian Patent Office finds out that the patent outside India was filed in contravention of section 39, the application for patent shall be deemed to have been abandoned and the patent granted, if any, shall be liable to be revoked under section 64. Also, the inventors and/or applicants will be punishable with imprisonment for a term which may extend to two years, or with fine, or with both, if they made an application for the grant of a patent in contravention of section 39.

Conclusion:
It can be seen that the Foreign Filing License is a mandatory requirement under the Indian Patent Act. Accordingly, the inventors, as well as applicants, are required to comply with the requirement of the Foreign Filing License to avoid any loss of right and unwanted criminal/ financial liability.

I hope the article will help you with your foreign filing strategy. In case of any query, you can write to me at


Written By: Vishal Bhardwaj, Managing Partner, Anuation Research & Consulting LLP
Email: [email protected].