Foreign filing license (FFL) is mandatory for person(s), who are resident of India, to apply for patents outside India without first applying in India. The guidelines for same are presented in Section 39 in The Patents Act, 1970. The provision states that a person (Applicant or Inventor) who is a resident of India has to request for an FFL in India if he/she wishes to file a patent outside India without first applying in India. Typically, the Applicants resort to applying for patents directly outside India when the invention does not have a commercial value in the Indian market, or the invention is being considered as a non-patentable subject matter in India. In such cases, a written permission has to be sought from the Indian Patent Office (IPO) for applying for patents outside India.

Section 39 of the Patents Act, 1970 reads:

“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has been given under sub-section (1) of section 35 in relation to the application in India, or all such directions have been revoked.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 defense 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.”

Above mentioned Section 39 applies to the residents of India. It shall be noted that the residential status of the applicant(s)/inventor(s) is considered and not the nationality of the person(s). However, since the term ‘resident’ is not defined in the Patents Act, 1970, we rely upon Section 6 of the Income-tax Act 1961-2017 for defining ‘resident’.

According to Section 6 of the Income-tax Act 1961-2017, an individual is said to be a resident of India:

• Is in India in that year for a period amounting in all to one hundred and eighty-two days or more; or
• Is in India for a period of at least 60 days during the relevant year and at least 365 days during the four years preceding that previous year.

The primary motive behind the foreign filing license requirement is to strengthen the national security. Many defense organizations of the government of India have deemed a few technologies important for military purposes and/or potentially detrimental to the national security if exported. Examples of such technologies may include biological warfare agents, explosives so on and so forth. By receiving a FFL from the IPO, the person(s) ensures that the patent application does not belong to any sensitive matter related to defense or atomic energy.

If the IPO deems the subject matter of the patent application to be sensitive and may endanger the national security of India, the FFL may be denied by the IPO. Many a times, to avoid complications of filing a request or the waiting period, people directly file in the foreign country. What the person(s) needs to understand is that as per the Indian Patents Act, it is mandatory for Indian residents to obtain the FFL to file the patent application outside India and when failed to meet such requirements, as per Sections 40 and 118 of the Patents Act, the person(s) may be punishable with imprisonment for a term which may extend to two years, or with fine, or with both. Also, the person(s) may face a risk of rejection of subsequent Indian applications.

However, if the person(s) who is a resident of India has filed a patent application in India, then after six weeks from the date of filling of the patent application, the person(s) is allowed to file the same patent application outside India without requiring a written permission from the IPO. The person(s) also need to ensure no secrecy direction has been issued by the IPO for the submitted patent application.

To file for a FFL, Form 25 (Application for permission for filling the patent application outside India) along with complete disclosure of the invention with the reason for submitting such application has to submitted to the India Patent Office.

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