Section 39 of the Indian Patents Act is of prime importance during Patent prosecution, whereby multinational companies with their research & development (R&D) centers in India, are willing to prosecute their Patent applications directly at international level and not in India. There are instances when an applicant for a Patent, an individual or a company intends to file an invention in a foreign country directly or as an international application under PCT without first filing the application in India. The reasons for not filing first in India due to various factors such as less or no demand in the market; subject matter of the invention falling under non-patentable inventions in India and co-ordination with different teams situated globally and so on. Further, a lot of inventions churned out of the R&D centers may have to be first filed in a foreign country.
In such situations, permission to file a patent application outside India has to be obtained from the Indian Patent Office which is commonly referred to as the Foreign Filing License (FFL)
The foreign filing license requirement was introduced in the Indian Patents Act of 1970 in 2002 and later amended in 2005. If the applicant has already filed a patent in India, he may file a Patent in a foreign country after six weeks from the date of filing of Patent application in India.
Objective behind FFL Requirement:
The main objective behind the FFL Requirement can be seen as a measure to keep a check on all inventions being exported to a different jurisdiction especially defense or atomic energy related inventions that would be of nation's interest.
Section 39 of the Indian Patents Act 1970, which is relevant to the FFL requirement, is reproduced as below;
"39. Residents not to apply for patents outside India without prior permission
- 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—
- 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
- 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has been given under sub-section (1) of section 35 in relation to the application in India, or all such directions have been revoked.
- 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.
- 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."1
Documents required for filing of FFL:
- A brief description of the invention that sufficiently describes the inventive concept known to the applicant at the time of making a request for FFL. Title of the invention along with drawings (if any) has to be provided.
- Name(s), address (es) and nationality of the inventor(s) who are 'resident in India'.
- Power of Attorney (POA) from the inventor(s) or the applicant who are resident in India, where a patent agent is appointed to represent them.
- Name and addresses of assignee, if any
- The name of the country/countries in which the patent application is expected to be filed after obtaining the Foreign Filing License (FFL) from Indian Patent Office
- Name of the countries in which the invention would be filed and reason for making such application.
Filing of PCT Application, Priority date and Section 39
Taking a PCT route for filing a patent application aids the applicant of that application with the same priority to enter any of the PCT member countries (148 countries) within the prescribed time period of 30 or 31 months from the date of priority. Therefore, filing of a PCT application amounts to filing of a patent application in any of the PCT designated countries only after that application is filed in the patent offices of those respective PCT countries.
From the aforesaid filing of a PCT application with receiving office as India do not tantamount to filing of an application in India. Filing of a patent application in India is duly considered after initial filing (international phase) of the PCT application along with the prescribed forms and fees. This is followed by entering India which is called as 'national phase' entry of the PCT application. Hence, if an application has been first filed in India directly as provisional/complete complete specification, the corresponding date of filing will be considered as priority date of that application and not as international filing date for that application.
If the applicant is not interested in filing patent application in India, he can proceed to file a PCT application at any of the RO in India. In such cases Section 39 of the Indian Patents Act is applicable. The Controller ordinarily disposes of an FFL request within 21 days from the date of filing the FFL request (Rule 71, The Patent Rules 20032).
Consequences of Contravention of Section 39
Failure to obtain FFL before filing the application in a foreign country by a resident of India results in the attraction of Section 40 and Section 118 of the Act. Accordingly as per Section 40 of Patents Act, 1970 if applicant makes or causes to be made an application for grant of Patent outside India incontravention of Section 39, the application for Patent under this Act shall be deemed to have been abandoned and the Patent Granted, if any, shall be liable to be revoked under Section 64 of Patents Act, 1970
Further as Per Section 118 of Patents Act, 1970 if any person makes or causes to be made an application for the grant of a Patent in contravention of Section 39, he shall be punishable with imprisonment for a term which may extend to two years, or with fine, or with both.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.