If an Indian resident wants to apply for a patent outside India, then a prior permission is required from the Indian Patent office. While filing patent application outside India for the invention conceived by an Indian resident, it is important to know that it is not mandatory to first file an application in India. If the Indian resident files first in India and six weeks have passed, then such a person can apply for patent outside India without prior permission.
The reasons for filing outside depends on various factors such as less or no market for an invention in India, non-patentable subject matter, invention is produced by people of more than one country.
The request to seek permission for foreign filing comes under section 39 and rule 71 of the Indian Patent Act.
PROVISIONS OF SECTION 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(1) of section 35 in relation to the application in India, or all such directions have been revoked.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-off 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.
Rule 71: Permission for making patent application outside India under section 39 –
(1) The request for permission for making patent application outside India shall be made in Form 25.
(2) The Controller shall dispose-off the request made under sub-rule (1) within a period of twentyone 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.
The Controller grants permission for filing abroad ordinarily within 21 days from filing of such request before the Indian Patent Office. However, this timeline may differ for the inventions related to defence or atomic energy, where the period of twenty-one days starts from the date of receipt of consent from the Central Government.
For filing outside India, request is made on Form 25. Along with Form 25, following documents and information are required for obtaining the foreign filing license:
- A brief write-up of the invention;
- Power of Authority from the inventor(s) residing in India or the patent applicant who are resident in India;
- The name(s), address(es), and nationality(ies) of the inventor(s)/ applicant(s) considered to be resident of India;
- Name(s) and address(es) of inventor(s) who are not residing in India but are also part of the invention;
- The name of the countries in which the inventor(s)/assignee intends to file the application and the reason for making such request.
If someone files patent application outside India without obtaining permission, then that person is liable for penalty under Section 118 which states that if any person fails to comply with any direction given under section 35 or 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. In addition, under section 40, failure to obtain prior permission may lead to the application deemed to have been abandoned and the patent granted, if any, shall be liable to be revoked under section 64.
In US, if a proper license is not timely obtained, a petition may be filed with the USPTO seeking a retroactive foreign filing license, provided that the failure to obtain the license was in error and without deceptive intent. Unlike US, there is no provision for retroactive filing of a FFL request in India.
The importance of foreign filing license is to check all the inventions, especially inventions related to defence or atomic energy, from being exported to other jurisdictions. There are several technologies that are related to the defense agencies of the government of India and are important and sensitive for military purposes. By granting foreign filing license, government gives a go ahead that the technology used in the application is not sensitive to matters like defense or atomic energy. Through FFL, Indian patent office allows Indian residents to directly file a patent application outside India for an invention.
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.