If an Indian resident wishes to apply for a patent outside India, the Indian Patent office must first grant permission. When filing a patent application outside India for an innovation imagined by an Indian resident, it is essential to understand that it is not necessary to first file an application in India. If the Indian resident files first in India and six weeks have passed, then he or she may apply for a patent outside of India without obtaining authorization first.
Various considerations, including as a small or nonexistent market for an innovation in India, non-patentable subject matter, or the invention’s production by persons from multiple countries, may necessitate filing outside of India.
The request for authorization to file abroad is governed by section 39 and rule 71 of the Indian Patent Act.
Section 39, or the provision of a foreign filing licence, was first introduced by the Patents (Amendment) Act of 2002, which was then revised by the PATENTS (Amendment) Act of 2005, expanding its scope to encompass “any innovation” and not just those relating to atomic energy and defence.
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(1) of section 35 in relation to the application in India, or all such directions have been revoked.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 purposes or atomic energy, the Controller shall not grant a 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.
Rule 71, Patent Rules
Rule 71: Permission for making patent application outside India under section 39 –
(1) The request for permission for making patent application outside India shall be made in Form 25.
(2) The Controller shall dispose-off the request made under sub-rule (1) within a period of twentyone days from the date of filing of such request; provided that in case of inventions relating to defence or atomic energy, the period of twenty-one days shall be counted from the date of receipt of consent from the Central Government.
The Controller grants permission for filing abroad ordinarily within 21 days from filing of such request before the Indian Patent Office. However, this timeline may differ for the inventions related to defence or atomic energy, where the period of twenty-one days starts from the date of receipt of consent from the Central Government.
Form 25 is used for filing requests outside India. In addition to Form 25, the following information and documents are required to get a foreign filing licence:
1.A concise description of the invention;
2.Power of Attorney from the Indian resident inventor(s) or the Indian resident patent applicant;
3.The name(s), address(es), and nationality(ies) of the inventor(s)/applicant(s) deemed to be an Indian resident;
4.Name(s) and address(es) of the non-Indian inventor(s) who also contributed to the innovation;
5. The names of the countries where the inventor(s)/assignee plans to file the application, as well as the grounds for making such a request.
Section 118 states that if a person fails to comply with a direction given under section 35 or makes or causes to be made an application for the grant of a patent in violation of section 39, he shall be punished with imprisonment for up to two years, a fine, or both. In addition, failing to acquire prior permission under section 40 may result in the application being deemed abandoned and the issued patent, if any, being subject to revocation under section 64.
Importance Of Foreign Filing Permission
The significance of foreign filing permission is to prevent the export of all inventions, particularly inventions relating to defence or atomic energy. There are numerous technologies associated to the Indian government’s defence departments that are vital and sensitive for military objectives. By obtaining a foreign filing licence, the government indicates that the application’s technology is not sensitive to areas such as defence or atomic energy. Through FFL, the Indian patent office permits Indian citizens to immediately file patent applications for inventions outside India.
Section 39 of the Indian Patents Act, as amended, requires an Applicant to get a Foreign Filing License (FFL) for any invention prior to applying for a Patent for a technology in a foreign nation, even if the Applicant has not applied for a matching Patent in India. The requirement to apply for an FFL is based on the origin and commencement of the innovation, regardless of the applicant’s nationality. If the innovation is made or conceived in India, the applicant must obtain a foreign filing permission prior to submitting the invention abroad.
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