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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    

What are the different patent filing options?

In simple words, “Patent filing” can be defined as a process of submitting an application in a patent office requesting grant of patent to your invention. If you wish to protect your invention in different countries, then you will have to submit a patent application in each of those countries. There are various options or approaches you may use to protect your invention in one or more countries. By understanding the various patent filing options, you can construct a patent filing strategy based on your business objectives and economic constraints. This articles attempts to provide an overview of the patent filing options you can use. (You may be also interested in reading the article “How much does it cost to get a patent in India”)

Please note that, the most important factor in filing a patent application is preparing a patent specification. Drafting a patent specification is a highly skilled job, which can be only preformed by persons who have both techinical as well as patent law expertise. If a person or company is serious about protecting their intellectual property, it is highly recommeded to use the services of professional patent practitioners. To know more about this, you can read our article on this here.

I will attempt to explian the options in a less complex way without trying to be “politically correct”. The options can be broadly divided into 4 classifications:
  1. Filing a provisional patent application

  2. Filing a complete patent application in your country

  3. Filing a patent application in a foreign country

  4. Filing a Patent Cooperation Treaty (PCT) application

patent filing options flowchart InvnTree(2)

1. Filing a provisional patent application

A provisional patent application is filed to secure a priority date for your invention. A priority date is the date on which the first patent application for your invention is filed. This date is important because, knowledge available in public domain before the priority date is referred to as “prior art”, and this prior art is considered by the patent office to decide if a patent has to be granted to your invention. If you delay filing of the patent application, then naturally, more knowledge in the public domain gets added to the prior art, hence decreasing the probability of patent grant to your invention.

Normally, inventors/companies file a provisional application in two scenario. The first scenario is when time is of concern, and drafting a well constructed complete patent specification might delay the patent filing process. This delay in filing, pushes the priority date further, thereby reducing the probability of patent grant to your invention. The second scenario is when money is of concern. Depending on the country in which the patent application is filed, there can be a substantial difference between the provisional and complete application fee that has to be paid  to the patent office. Further, depending on the patent consultant you choose to work with, there can be substantial difference in the fee charged by the patent consultant to draft a provisional and a complete specification. Hence, sometimes inventors/companies draft a provisional specification on their own and file the same.

 
The main difference between a provisional and a complete patent application is, a complete application will have a “claim” section, whereas the claim section will be absent in a provisional application. Claims define the scope of your invention and describes what you wish to protect in your invention.
 
It shall be noted that, a complete patent application has to be filed within 12 months from the date of filing the provisional application. Failure to do so will be considered as abandoning the provisional application. Once abandoned, the advantages of filing the provisional application cannot be availed.
 
A provisional application can be filed in  the patent office of your country or in a patent office of any convention countries (list of contracting countries – Paris conventional).
 
2.Filing a complete patent application in your country

A complete patent application has to be filed in the patent office of your country if you wish to protect your invention in your country. A complete patent application can be filed in the first place or if you have filed a provisional application provisously, then within 12 months from the provisional application filing date.

A complete patent application in your country can be filed by using any one of the following options:
  1. File a provisional application in any convention country (secure a priority date) and file a complete application in the patent office of your country within 12 months from the priorit date.

  2. File a complete application in any convention country (secure a priority date) and and file a complete application in the patent office of your country within 12 months from the priority date.

  3. Use the PCT route – Explained under option 4

3.Filing a patent application in a foreign country
 
If you wish to wish to protect your invention in a foreign country, you can choose from one of the options given below:
  1. File a provisional application in any convention country (secure a priority date) and file a complete application in each of the foreign countries in which you wish to protect your invention within 12 months from the priorit date.

  2. File a complete application in any convention country (secure a priority date) and file a complete application in each of the foreign countries in which you wish to protect your invention within 12 months from the priority date.

  3. Use the PCT route – Explained in detail below

4.Filing a Patent Cooperation Treaty (PCT) application
 
Filing a PCT application is a good strategy if you wish to protect your invention in more number of countries. By filing a PCT application, you get 30 months duration (sometimes even 31 months depending on the country) from the priority date to file patent applications in each country in which you wish to protect your invention. Note that if you had not filed a PCT application, then you would have only 12 months duration from the priority date to file patent applications in each country in which you wish to protect your invention. Another important point to be noted in case of PCT application is that, only comple patent applications are accepted as PCT applications. Further, a PCT application can be filed in the patent office of your country.
 
A PCT application can be under the following scenarious:
  1. File a provisional application in any PCT member country (secure a priority date) and file a PCT aspplication within 12 months from the priorit date. Subsequently, file patent applications, within 30/31 months from priority date, in each country (has to be a PCT member country, list of PCT contracting countries) you wish to protect your invention.

  2. File a complete application in any PCT member country (secure a priority date) and file a PCT application within 12 months from the priority date. Thereafter, file patent applications, within 30/31 months from priority date, in each country (PCT member country) you wish to protect your invention.

  3. File a PCT application in the first place and secure a priority date. Thereafter, file patent applications, within 30/31 months from priority date, in each country (PCT member country) you wish to protect your invention.

It should be noted the patent filing strategy may be constructed on a case to case basis. The filing strategy may depend on business objectives, market conditions and economic constriants, among other factors.

You may be interested in reading our other related articles listed below:

I hope you found this article helpful.
 
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