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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"   
 
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Significance of Seeking Permission To File Patent Applications Outside India

Introduction 

A resident of India might be interested in filing a patent application outside India, driven by various reasons. In such a scenario, one may choose to: 

1. File a patent application outside India without filing a patent application in India; or

2. File a patent application in India, and subsequently file patent applications outside India.
In both scenarios, one should consider seeking permission from the Indian Patent Office to file patent application outside India. The permission to file the patent application outside India is commonly referred to as the Foreign Filing License (FFL). 
 
Governing statute 
Section 39 of the Indian Patents Act is particularly relevant to the topic of FFL. Section 39 is 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.  



 


(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.

Interpretation of governing statute

Even though not explicit from the above statute, our interpretation is that, the term “person” in the above section refers to “inventors” and not necessarily the “applicants” of the patent. Further, it shall be noted that, if at least one of the inventors who may be named in the patent application is a resident of India, then the above section is of relevance. Note that, a foreign citizen can be a resident of India, and likewise, an Indian citizen can be a resident of a foreign country. Hence, one will have to consider where the inventors are residing and not necessarily their citizenship, while applying the above section. 



Further, one will have to procure a FFL if one of the inventors is a resident of India, and the first patent application is being filed outside India. It shall be noted that a PCT application, with the Indian Patent Office as the receiving office, can still be considered as a patent application filed outside India. 


Another scenario in which FFL will have to be procured is when a patent application has been filed in India, and a subsequent patent application has to be filed within 6 weeks from the date of filing the Indian patent application. On the other hand, a FFL will not be required if 6 weeks have passed since the filing of the Indian patent application, and there has been no secrecy direction issued by the Indian Patent Office. 


Obtaining permission to file the patent application outside India 


A FFL can be obtained by disclosing to the Indian Patent Office the subject matter on which patent application is sought to be filed. The request is made in a particular form and a fee of INR 4000 (INR 1000 if applicant is a natural person) is applicable. The time within which the IPO grants permission is twenty one (21) days of filing the request. In cases the invention is related to defense or atomic energy, such permission may be denied by the IPO. 


Consequences contravening section 39 


Contravention of Section 39 can result in criminal liability under Section 118 and abandoning of Indian Patent Application or revocation of Indian Patent, if any, under Section 40. 


Under Section 118, contravention of Section 39 shall be punishable with imprisonmentfor a term, which may extend totwo years, or with fine, or both. However, those in the known can provide examples of contravention of Section 39, but enforcement of penalties under Section 118 is yet to be seen.  
On the other hand, enforcement of penalties under Section 40 is rather easy. For example, there might be a case where a resident of India, without obtaining FFL, first applies for a patent in countries other than India. Subsequently, files an application for the same in India. In such a scenario, Section 40 can be readily enforced by the Indian Patent Office. 
 
Conclusion 
If a scenario exists, which demands obtaining permission to file the patent application outside India, then it is highly recommended that such permission is sought. While the process of obtaining such permission is fairly straight forward and well defined, failure to do so has serious implications.
 
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