Section 39 of the Indian Patents Act, 1970 lays down provision about obtaining of Foreign Filing License or FFL of Patent in India. The statutory provision states that in cases where the inventor is an Indian resident and decides to directly file a patent application in a foreign country without first filing in India, it is obligatory for the inventor to obtain a Foreign Filing License (FFL) from the Indian Patent Office (IPO). Foreign Filing License is a written permission obtained from the Indian Patent Office.
There are various benefits for FFL and the same are delineated as under:
By way of granting FFL, the IPO waives off the mandatory requirement of first filing a patent application in India, allowing Indian residents to directly file a patent application outside India for an invention. Many companies operating from India cater to foreign markets, especially US. The reasons for direct filing in a foreign country may be:
- The invention holds low or no scope/market in India;
- The invention might be under non-patentable subject in India.
Alternatively, any person who is a resident of India may file or cause to be filed a patent application for his/her own invention first in India; and only after a period of six weeks after the date of filing of the patent application, a filing could be done in a country outside India. FFL is not required if six weeks have passed since the filing of the Indian patent application, and there has been no secrecy direction issued by the IPO.
FFL also protects the protect national security, IPO requires patent inventors/applicants who are Indian residents to obtain an FFL or a clearance prior to filing a patent application abroad. There are several technologies that defense agencies of the government of India have deemed important for military purposes and/or potentially detrimental to the safety of the country if exported; examples of such technologies are explosives and biological warfare agents. The grant of a foreign filing license provides a governmental go-ahead that the technology described in the patent application does not belong to sensitive matter like defense or atomic energy.
Patent applications that are directed to such sensitive technologies which would be prejudicial to the defense of India are denied a foreign filing license. In spite of such a requirement, a number of applicants who are Indian residents directly file in a foreign country without obtaining a clearance from the IPO, believing that it is easier and trouble-free to file in foreign countries. What most applicants are negligent of the fact that as per the Indian Patents Act, it is mandatory for Indian residents to obtain the permission to file patent application outside India and failure to comply with such requirement can lead to harsh penalties.
The various statutory provisions for obtaining FFL under the Indian Patent Act and Rules are as under:
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- (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.
- 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."
Rule 71 -
Permission for making patent application outside India under section 39
- The request for permission for making patent application outside India shall be made in Form 25.
- The time within which the Controller dispose of the request made under sub-rule (1), except in case of inventions relating to defense and atomic energy applications, shall ordinarily be within a period of twenty one days from the date of filing of such request.
Procedure to obtain FFL
A Foreign filing license can be obtained by disclosing to the Indian Patent Office the subject matter on which patent application is sought to be filed.
The request is made in Form 25. The IPO grants the permission within 21 days from the date of making the aforementioned request. Permission may be rejected by the IPO if the subject matter is relevant for defense purposes and atomic energy.
The various documents required to file FFL are as under:
- Form 25- Application for permission for making Patent Application outside India.
- Disclosure of the invention, along with the Foreign Filing License (FFL) form
- Name and addresses of inventor(s) who are resident in India.
- Name of the countries in which the invention would be filed and reason for making such an application.
- 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 the Indian Patent Office.
- Power of Attorney from the inventor(s) or the patent applicant who are resident in India, where a patent agent is appointed to represent them before the Indian Patent Office.
- Form 28- In case the applicant is a Small Entity.
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