With the increase in the patent application filing in foreign countries from India, it becomes important to understand the procedure associated with foreign filing, United States has always been a major destination for investors and it is no doubt that Indian invests hugely in the US. The procedure for the foreign filing is simple and effective and it must be understood by the applicant who is going for the filing in foreign countries.

What law says?

The Indian Patent Act is not silent on this aspect. The act speaks about the filing of patent applications internationally. Section 39 of the patent act says

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has been given under sub-section (1) of section 35 concerning the application in India, or all such directions have been revoked.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

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Foreign Filing License

Foreign Filing License (FFL) is the permission being granted by the Indian Patent Office (IPO) to the resident of India for applying outside. The general requirement of the abovementioned section is only with regards to the person who makes the patent application or causes another to make the application as a resident of India. The act does not define the term ‘resident’ but the same can be found from other legislation preferably the Indian Income-tax Act, 1961. Therefore, the primary crux is on the residential status and not with the nationality per se.   

The reasons for filing a patent in a foreign country can be many. The IPO seeking the prior approval of the patent applicant before going for foreign filing can be attributed to the reason for the protection of national security. The invention perhaps might not be patentable, in India, due to which the applicant might feel the need to file the same in a foreign jurisdiction. Low potential in the Indian market, due to which the patent might lack in the industrial applicability condition, can also be a reason for the filing in the foreign country. Another probable reason is due to the global coordination which has helped to develop the invention.

As per the provision of section 39, the IPO can provide approval to the applicant if it fulfills all the requirements mentioned. As stated, the controller can dispose of all the applications but will not dispose of the application concerning the atomic energy or defense purpose if the central government has not provided prior approval. Please note that the applicability of the section will only be there if the applicant is a resident of India, otherwise not. For the sake of more clarity, it is pertinent to discuss Rule 71 here.

Rule 71 states

(1) The request for permission for making a patent application outside India shall be made in Form 25.

(2) The Controller shall dispose of the request made under sub-rule (1) within a period of twenty-one days from the date of filing of such request: Provided that in case of inventions relating to defense or atomic energy, the period of twenty-one days shall be counted from the date of receipt of consent from the Central Government.

Form 25 will be used for the request. It requires a few things:

• A description of the invention that sufficiently describes the inventive concept known to the applicant at the time of requesting FFL. Invention title along with drawings (if any) has to be provided.
• Form 25- Application for permission for performing patent license outside India.
• Declaration of the invention, along with the foreign filing license (FFL) form.
• Name and address of inventors who are residents in India.
• Name and addresses of the assignee, if applicable.
• The name of the country or countries in which the patent application is expected to be filed after obtaining the foreign filing license from the Indian patent office.
• Power of Attorney from the inventor or the applicant who is resident in India, where a patent attorney is appointed to describe them before the Indian Patent Office.
• Form 28- In the event of the applicant is a small entity.

Author: Saransh Chaturvedi an associate at Global Patent Filing,  in case of any queries please contact/write back us at support@globalpatentfiling.com.