To file or not to file the patent application? This question sounds the national security alert in mind of every individual inventor who happens to be working on development of defence related inventions. This security alert is right as every sovereign nation require their nationals to protect the security of the nation. Any sensitive invention which is required to protect the sovereignty of a nation is always subjected to the national security law provisions. Thus national security is kept at highest pedestal when it is a matter of inventions relating to defence purpose. Another issue which nags the inventor of defence related invention is the fear of statutory 'march in right' of the Central Government to make, used, exercise or vend, for the applications /patents on these inventions. Such apprehensions loom large on these inventions to such an extent that most of the inventors prefer secret working and shy away for filing patent application.
Secrecy directions and negative effect on patent filing
Any inventor who venture into the business of inventing which is directly related defence implements and which is likely to be prejudicial to the interest of security of India must bear in mind that he may not receive a patent for such an invention which is open to publication like normal patents. In such cases inventor should be aware that Government may impose secrecy direction for perpetuity or till the secrecy direction given by the government is revoked. Such a situation at times discourage the inventor to spend his time and money to develop inventions in this category. Evidently, the individual inventor who is more likely to venture into the creative activity relating to defence purpose would rather shy away from filing patent application. Practically speaking, there is no restriction on granting of patents for defence purposes except the inventions relating to atomic energy falling within sub section (1) of section 20 of the Atomic Energy Act of 1962(33 of 1962). One must understand that imposition of secrecy direction does not result into loss of patent right.
Residents not to apply for patents outside India
In Indian patent law there are many checks and balances to protect the security of India. The primary duty is imposed on the Indian residents not to apply for patents outside India without prior permission under section 39. This restriction is applicable 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 under section 39 (3).
"39. Residents not to 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 defence 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."
Mandatory screening of all applications for patents
Every patent application is screened by special team in the patent office to segregate inventions which are relevant for defence purpose. If on preliminary scrutiny it appears that invention is one of the class notified by the Central government as relevant for defence purpose, secrecy direction would be imposed on the applicant and such applications would be referred to defence authorities for final determination. Closer look on section 35, 36 and 37 provisions would make it clear that section 35 merely lay down procedure to be followed by the Controller if on the prima facie determination the invention appears to fall under the category of the invention for defence purpose. The basic purpose to issue the secrecy direction is to keep the information on the invention secret. Such applications are exempted from statutory publication after eighteen months. One effect of the issue of the secrecy direction is that such applications will not be published under section 11. The public inspection to the content of these applications would not be permitted either. However, the process of examination will continue and in suitable cases application would proceed to the stage of grant of patent but the application and the specification will not be published, and no patent shall be granted in pursuance of that application. [Proviso to section 37]
Permission to file patent application Abroad
In case the application for patent is not filed or the applicant seeks to file application abroad within six weeks of the date of filing of the application, it is mandatory for the applicant take foreign filing license. Those applicants who want to file applications outside India are required to obtain a permission from the patent office. If a resident Indian seeks to file a patent application outside, he has two options. First option is that he can file an application for a patent for the same invention in India and wait for six weeks. If no secrecy direction is received within six weeks he is free to file, the application outside India. The second option available to him is to first file a PCT application in India and then seek Foreign Filing Permission from the Controller before such application is processed further under PCT. There is fast track procedure for obtaining Foreign Filing license [FFL] for the cases where no secrecy direction issues are involved. Only in few cases where secrecy directions are likely to be issued one can expect the delay in grant of FFL. In cases where secrecy directions are issued the applicant can make a request for reconsideration or wait for it being reviewed by Central government suo moto at intervals of six months. [section36].
'Security of India' : its meaning and coverage
In Indian patent law section 157A was introduced in the Patent Act,1970 by amending Act of 17 of 1999 w.e.f 1.1.1995 for protection of "security of India". The expression "Security of India" is wide enough to include any action necessary for the security of India which—
- relates to fissionable materials or the materials from which they are derived; or
- relates to the traffic in arms, ammunition and implements of war and to such traffic in other goods and materials as is carried on directly or indirectly for the purpose of supplying a military establishment; or
- is taken in time of war or other emergency in international relations.
Compensation for used by Government
Like other inventions, the Central Government is empowered to make, used, exercise or vend for the inventions/patents on the defence related inventions. In cases where the invention is used by the Central government the inventor is entitled to receive a suitable compensation under chapter XVII. The inventor is also entitled to receive payment by way of solatium for the hardships suffered by reason of the continuance in force of the secrecy directions in certain case. [Section 37(2)(b)].
Solatium and secrecy direction
The imposition of secrecy directions under section 35 does not mean that inventors would not gain financial profits from these inventions. In certain cases, Central Government may grant of solatium to the inventors where the applicant is believed to have suffered hardship by the reasons of the continuation of the secrecy directions. The applicant is also not required to pay the renewal fee in respect of any period during which the secrecy direction would be in force.
Need for Tackling Anomalous situation: multinational projects
Certain procedural issues relating to Indian resident inventors working in multinational organisation along with nationals of other countries have cropped up which of course are need to be tackled by the patent office. In joint inventive ventures involving 'multiple nationals' the imposition of condition of first filling in the country of origin at time has become problematic. It would be rather impossible to meet secrecy directions by every national If every patent jurisdiction makes such a demand. There is urgent need to address this issue of first filing requirement in such cases and resolve the anomalous situations. It must be kept in mind that all the inventors working in multinational projects would have shared the application details irrespective of their nationality in order to file application for patent. Such a situation could be avoided by including more exceptions under section 39(3) to address this issue effectively. Until such exceptions are included in the statute, the Indian resident inventors are duty bound to keep the inventions secret till the secrecy directions are in force. It may be noted that the Indian citizens and person of Indian origin who were on visit to India had an extended period of 182 days of stay in India before they could be regarded as a resident of India from an income tax perspective and for purpose of considering as Indian resident under section 39 of the Patent Act, 1970.This period has been reduced to 120 days now under the new IT ACT, 2020.
The Indian resident inventors may feel deprived to use their inventions by imposition of secrecy directions but it's essentially to protect the national knowledge from being stealthily appropriated at the same time cannot be undermined. It is high time for the inventors of the defence related inventions to rethink and actively involved in patent filling as the new defence procurement policy of 2013 was aimed at boosting domestic procurement and making it as a preferred choice to develop, design or manufacture defence equipment indigenously. The changed stand of the government in respect of the order of preference in procurement under the new Defence Procurement Policy would provide the kind of incentive the inventors of defence related invention need. Recent changes in definition of Indian residents stay status under the new IT Act, 2020 from 182 days to 120 days should also be marked to know the Indian resident status of a person. Expert advice in this matter would be helpful to the Non Resident Indian inventors who are seeking to file the patent application in India or seeking Foreign filing licence. In any case, the secrecy direction is not averse to the Indian resident inventor except that he is prevented from disclosing the invention relevant for security of India to any one and for filing patent application outside India. These type of security measures are used by every patent granting jurisdictions to protect the national interest.
To file or not to patents application for defence purpose by DPS Parmar
Article was 1st published in Lexology
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.