India: Foreign Filing License – Some Issues

Last Updated: 19 October 2018
Article by Ankur Garg and Dipan Banerjee

Any person (inventor or applicant) who is an Indian resident, may wish to file a patent application (an application) in foreign countries due to various reasons, such as market potential, licensing opportunities, or other business policies. In such cases, the person may choose to either first file the application in India or obtain a foreign filing permission from the Indian Patent Office. If the person chooses to first file the application in India, the person has to wait for six weeks, and if no secrecy directions are imposed under Section 35, (s)he can proceed to file the application in any foreign country. Alternatively, the person may obtain a written permission, from the Controller as per Section 39(1) of the Patents Act, 1970 ('the Act'), and once such a permission is granted, (s)he can file the application in a foreign country. Such a written permission is often referred to as a Foreign Filing Licence (FFL).

A request for FFL shall be made in Form 25 and shall be accompanied by a brief description of the invention. The brief description shall include the underlying inventive concept of the invention. The Controller shall ordinarily dispose of such request within twenty-one days from the filing of the request.
While most of the FFL requests filed with the Indian Patent Office (IPO) are granted by the Controller upon review of brief description of the invention. However, if the Controller is of the opinion that the invention is relevant for defence purposes, or relates to atomic energy, the Controller generally does not grant the FFL without prior consent of the Central Government (CG). In such cases, the Controller forwards the request for FFL to the CG, seeking confirmation from the CG as to whether the invention is relevant for defence purposes or atomic energy. If the CG is also of the opinion that the invention is relevant for defence purposes or atomic energy, the Controller rejects the FFL. However, if the CG is of the opinion that the invention is not relevant for defence purposes or atomic energy, the Controller may grant the FFL. If the Controller rejects the FFL, the person is prohibited from filing the application outside India.

More often than not, while rejecting the FFL, the Controller imposes a secrecy direction on the invention under Section 35(1). Section 35(1) of the Patents Act, 1970 reads as -
"Where, in respect of an application made before or after the commencement of this Act for a patent, it appears to the Controller that the invention is one of a class notified to him by the Central Government as relevant for defence purposes, or, where otherwise the invention appears to him to be so relevant, he may give directions for prohibiting or restricting the publication of information with respect to the invention or the communication of such information."

Section 35(1) clearly mentions that a Controller can impose secrecy directions in respect of a patent application. Further, as per the Act, a patent application shall be made in Form 1 and shall be accompanied by a provisional or a complete specification. In contrast, a request for FFL is not necessarily accompanied by a provisional or complete specification. As mentioned earlier, the request for FFL filed under Section 39 read with Rule 71(1), is filed in Form 25 along with a brief description of the invention. Thus, from the reading of the Section 35(1), it appears that Section 35(1) is only applicable for patent applications and cannot be applied in respect of a request for FFL. Therefore, it is noteworthy that for the purposes of Section 35(1), the Controller's opinion regarding whether an invention disclosed in a patent application is relevant for defence purposes or not shall be based on a consideration of the provisional or complete specification filed along with the patent application, and not on consideration of the brief description of the invention filed with a request for FFL.

Further, the Controller, after imposing secrecy directions on the invention while rejecting the FFL request, also forwards the request for FFL along with the brief description of the invention to the CG for consideration as to whether the invention is relevant for defence purposes or not, under Section 35(2). If the CG is of the opinion that the invention is prejudicial to the defence of India, it notifies the Controller and the secrecy directions continue to remain in force until revoked by the CG.

The opening lines of Section 35(2) reads as " Where the Controller gives any such directions as referred to in sub-section (1) he shall give notice of the application and of the directions to the Central Government [...]". Thus, Section 35(2) is applicable when the Controller imposes secrecy directions on a patent application under Section 35(1). Since Section 35(1), arguably, does not apply to a request for FFL, it follows that Section 35(2) is also not applicable in respect of a request for FFL. Further, as per Section 35(2), the Controller shall give notice of the patent application to the CG. Since no patent application is necessarily filed along with the request for FFL, the same should not be notified to the CG for consideration under Section 35(2). Thus, the brief description filed along with the request for FFL may not be an appropriate basis to seek the CG's opinion under Section 35(2). However, such issues are yet to be examined by a court of law and there exists no legal precedence on this. Thus, the question remains as to whether the Controller can impose secrecy directions while issuing an order rejecting an FFL based on the brief description of the invention filed with the FFL request.

Remedies against rejection of FFL

FFL rejected and no secrecy direction is imposed:
Considering that the FFL is rejected and no secrecy direction is imposed, a request for review of such an order of the Controller rejecting an FFL can be made under Section 77 of the Act. Further, no appeal lies against the order of the Controller rejecting an FFL. The remedy available to challenge an order of the Controller rejecting an FFL is to file a writ petition before the High Court under whose jurisdiction the office of the Controller who rejected the FFL is situated.
Further, the Applicant also has the option to file a patent application in India accompanied by a complete or provisional specification. According to Section 39(1)(a) and (b), if a secrecy direction is not imposed on the application after six weeks of filing the application, the Applicant can file the application in foreign countries. Thus, upon filing the patent application in India, the complete or provisional specification will be considered and if it is found that the invention disclosed in the patent application is not relevant for defense purposes, the Controller may not impose secrecy direction under Section 35(1) and the Applicant can file the Application in a foreign country, outside India.

FFL rejected and secrecy direction is imposed:
In case the Controller has rejected the request for FFL and has also imposed secrecy directions on the invention, the invention can neither be filed outside India, nor be published. In such a situation, the available alternate for the Applicant is to file an Indian Patent Application (either Provisional or Complete Specification) with the IPO to at least secure a priority date.

Also, a secrecy direction issued by the Controller can be reviewed. The CG shall review the secrecy direction in force after every six months. Further, the Applicant on his own motion can file a request to the Controller for review of the secrecy direction, and if the Controller finds such a request reasonable, the secrecy direction may be reviewed. The Applicant can make such review request any time after the issuance of secrecy directions and there is no defined time period within which such review request is to be made.

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.

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