Foreign Filling License is an optional provision under Patent Cooperation Treaty. Some PCT Contracting States can adopt national legislation which restricts the filing of international applications with other Offices for reasons of national security where:
- applications are filed by nationals of the relevant State;
- applications are filed by residents of the relevant State; and/or
- the invention was made in the relevant State.
States can choose more than one such parameter for applying FFL. For example, Turkey requires applications made by its residents to get an FFL. Whereas, in Sweden requires that Inventions made in the country, Applications by residents and Inventions owned by Swedish companies get an FFL before applying to FFL. An FFL application is made when an inventor falling under the aforesaid parameter does not file a patent application in their home country but wants to file a patent application under PCT or to another country. A patent office will adjudge whether the application hampers its security interests, if it does not then an FFL can be granted. If it does hamper its security interests, then security guidelines will be issued which the innovator must comply with for a successful patent application in another country.
FFL issued by the Indian Patent Office for a patent applicant to file the patent application in a country foreign to India. This license is issued as per Section 39 of the Indian Patents Act, 1970.
Sec 39 of the Patents Act states:
"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has been given under sub-section (1) of section 35 in relation to the application in India, or all such directions have been revoked.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."
In a scenario where either the Applicant(s) and/or inventor(s) are residents of India, it is preferable to obtain an FFL from the Indian Patent Office to avoid any challenges in the future. In this regard, one may refer to the wording of Section 39(1) which reads "make or cause to be made", whereby in a case an Applicant of the foreign patent is not an Indian resident, but the inventors are, the clause may be interpreted to mean that the inventors have caused the foreign application to be made. Furthermore, in a scenario where multiple Applicants or Inventors are present, as per the present patent practice in India, an FFL should be obtained in case even one of the multiple Applicants or multiple Inventors are Indian residents. It may be noted that in view of lack of any judicial precedent on many such scenarios, and the process of obtaining of FFL being streamlined and time-bound in India, it should be preferred to obtain a FFL before making any application in a foreign country.
One of the main issues pertaining to FFL requirement is that how the Indian residency is determined. While the Indian Patent Act or Rules are silent about this issue, but there are other Acts, e.g., Income Tax Act and Foreign Exchange Management Act that define Indian residency in terms of the number of days spent by a person in India amongst other criteria. However, the applicability of these other Acts remains questionable because firstly, there are no judicial precedents to support their applicability in the context of patent filing and secondly, fundamentals are altogether different. Suppose a person comes to India for a week and invents
something sensitive during this short period, while that person is not considered as an Indian resident for the purposes of Income Tax or Foreign Exchange calculations, should that person be allowed to leak the sensitive invention invented in India to outside world bypassing FFL requirement. The logical answer is a clear no because this cannot be the legislative intent behind putting the FFL requirement. Therefore, if somebody invents something while residing in India, the person should mandatorily obtain FFL before filing a direct foreign application or a foreign filing before the expiry of 6 weeks from Indian filing.
Moreover, under Section 118 of the Indian Patents Act, if an Applicant or Inventor is not compliant to Section 39 they are liable to be punished with an imprisonment term of 2 years or a fine or both. Furthermore, Non-compliance to Section 39 might also lead to any relevant Indian patent application filed in the name of the Applicant or the Inventor to be abandoned or if the patent is granted, revoked. Hence, in cases of uncertainty, it is advisable generally to apply for an FFL should one believe that they may be determined as residents of India to avoid any penalties and other difficult situations.
One significant drawback of the FFL system for an innovator is the consideration that it is always beneficial to file the first application in India even by way of provisional specification without claims because such filing creates priority date which can be beneficially used to effect foreign filings claiming the filing date in India. This the first application in India on hand serves as a foreign filing license after six weeks and at the same time safeguards against loss of right due to publication or disclosure in some other form. In case foreign filing license is to be sought within a short time and the whole disclosure is not ready one may submit the broad outline of the invention as in provisional specification.
Applicants may choose to file for a patent outside India first for several reasons. However, before moving ahead with the process, it is imperative to first understand whether they qualify as a resident of India, and whether it is necessary to obtain an FFL. In case of confusion, it is best to obtain FFL from the Indian Patent Office as a precautionary measure. Obtaining an FFL is relatively inexpensive and less complicated (except for nuclear and defence industries), therefore, innovators should not skip on getting an FFL as it may lead to their patent application being rejected or revoked, and worse yet face prison time and fines.
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.