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Foreign filing license in India: Section 39 of Indian Patent Act

Foreign filing license requirements in India

If you are preparing for patent agent examination or are an applicant who wants to file a patent application outside India, foreign filing license (FFL) may be a critical concept to understand.

FFL is a written permission that needs to be obtained from the Indian patent office for foreign filing in certain conditions (not always).

Let’s read on to find out the scenarios in which FFL needs to be obtained and the pitfalls if FFL is not obtained.

When do you need a foreign filing license?

Section 39 (1) of the Indian Patent Act states reads as follows:

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been given under sub-section (1) of section 35 in relation to the application in India, or all such directions have been revoked.” 

The primary requirement of this section is that it is applicable to only Indian resident inventors who intend to file a patent application outside India.

Additionally, unless both conditions specified above are met, i.e., a) regarding Indian filing and b) regarding secrecy directions, the Indian resident inventors need to obtain the FFL from the Indian Patent Office. The literal meaning of the first and second conditions specified in section 39(1) is that unless a) 6 months have elapsed since the Indian filing of the patent application and b) there is no secrecy direction currently imposed, the applicant needs to obtain the FFL to proceed with the foreign filing of the patent application.

Conversely, an FFL is required to be obtained if:

  1. 6 months are yet to elapse since the Indian filing of the patent application,
  2. There is no Indian filing done before the upcoming foreign filing i.e., the applicants want to file outside India without first filing in India (e.g. the first filing is in US or Europe etc.), and
  3. A secrecy direction is imposed on the Indian application (e.g. in case of defence related applications; a permission is logically required in such cases to avoid defence secrets to be filed outside India).

How much time does it take to obtain the foreign filing license?

Section 39(2) of the Indian Patent Act reads as follows:

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.

Further, Rule 71(2) of the Indian Patent Act reads as follows:

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 defence or atomic energy, the period of twenty-one days shall be counted from the date of receipt of consent from the Central Government.”

In the normal course, the Indian Patent Office grants the FFL within 21 days i.e., 3 weeks from the date on which it is requested i.e, when FFL request is filed. However, this period may range from 3-6 weeks on a case-to-case basis. If the invention under consideration relates to a defence or atomic energy, the Controller needs to seek consent of the Central Government. Accordingly, in such cases, this period starts from the date on which (and if) the Controller receives the consent from the Central Government.

What is the form which the FFL request needs to be filed?

FFL request needs to be filed in Form 25 as per Rule 71(1)

What is the fee required to file the FFL request?

If the applicant is a natural person (individual inventor), a startup or a small entity, the fee is Rs. 1600. If the applicant is other than these entities (e.g. a large entity), the fee is Rs. 8000. In addition, a professional fee of your Patent Attorney/Patent Agent may also be applicable based on your agreement with them.

What is the penalty for not obtaining an FFL?

As per section 118 of the Indian Patent Act, a penalty including imprisonment for a term which may extend to two years, or a fine, or both may be imposed for failure to obtain FFL.

The rule of precaution is that if your application has an Indian resident inventor and you want to pursue a filing outside India, always check for FFL requirements, discuss with your patent attorney or patent agent, and obtain an FFL, as applicable.

Do share your thoughts and queries below and share this article if it was helpful in making the FFL concept easier to understand!