Precautions to be taken before filing a foreign patent application by Indian residents

Many companies operating from India cater to foreign markets, especially US. Hence, such companies are keen on filing patent applications outside India. Such companies generally contemplate adopting two options:

1.      File patent applications in foreign countries without filing a patent application in India

2.      File a patent application in India, and soon after, file patent applications in foreign countries  

1. File patent applications in foreign countries without filing a patent application in India

When the first option is adopted, patent applicants have to complete a formality with the Indian Patent Office (IPO) before proceeding with patent application filing outside India. This formality has to be completed if one or more inventors in the patent application are residents (we are not referring to citizenship) of India. The formality requires the patent applicant to request the IPO to grant permission to apply for patent outside India. 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 defence purposes and atomic energy.

Section 39 of the Indian Patent Act and Rule 71(2) of The Patent Rules shall be considered in the above scenario. Relevant portions of Section 39 and Rule 71(2) are reproduced below: 

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 …  

 

(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. 

 

71. Permission for making patent application outside India under section 39

(2) The time within which the Controller disposes of the request made under subrule (1), except in case of inventions relating to defence and atomic energy applications, shall ordinarily be within a period of twenty-one days from the date of filing of such request. 

Once the IPO grants permission to apply for patent outside India, patent applications can be filed in one or more countries outside India.  


2. File a patent application in India, and soon after, file patent applications in foreign countries 
When the second option is adopted, patent applicants should not, immediately after filing the Indian patent application, apply for patent outside India. If the patent applicant wishes to file patent applications as soon as possible, then permission shall be sought from the IPO, as discussed under the previous option. On the other hand, patent applicants can wait for six weeks from the date of filing the Indian patent application, and thereafter proceed with foreign patent applications filing, if a notification has not been issued by the IPO in those 6 weeks to the contrary. This formality has to be completed, if one or more inventors in the patent application are residents (we are not referring to citizenship here) of India.
In this option, Section 39 and 40 of the Indian Patent Act shall be considered. Relevant portions of Section 39 and 40 are reproduced below:  

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. 

40. Liability for contravention of section 35 or section 39 

Without prejudice to the provisions contained in Chapter XX, if in respect of an application for a patent any person contravenes any direction as to secrecy given by the Controller under section 35, or makes or causes to be made an application for grant of a patent outside India in contravention of section 39 the application for patent under this Act shall be deemed to have been abandoned and the patent granted, if any, shall be liable to be revoked under section 64. 
Once the IPO grants permission or 6 weeks have passed since the filing of the Indian patent application, patent applications can be filed in one or more countries outside India. 
We hope you found this article useful. You may be interested in reading our article "Significance of Seeking Permission To File Patent Applications Outside India"   
 
Feel free to write to us at contact@invntree.com if you have any comments, queries or want to avail our services.
Please feel free check our patent services page to find out if we can cater to your patent requirements. You can also contact us to explore the option of working together. 
Best regards – Team InvnTree    
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