Foreign Filing License in India

This article discusses the concept of a Foreign Filing License (FFL) as given in Section 39 of the Indian Patent Act, 1970[1]. Section 39 mandates that Indian residents must obtain an FFL before applying for a patent application abroad, except when a patent application for the same invention was filed in India at least six weeks before the foreign filing. The article evaluates the legal provisions, procedural requirements, and penalties for non-compliance, which may include fines or imprisonment. It also analyses significant case law, particularly Selfdot Technologies v. Controller General of Patents, indeed clarified that Section 39 applies to “patent of addition” filings. With the help of this case, we will also discuss the scope of section 30 of the Patent Act, of 1970.

INTRODUCTION

A Foreign Filing License (FFL) is a critical requirement under the Indian Patent Act, of 1970, for inventors seeking to file a patent application outside India. Section 39 of the Act mandates that Indian residents must obtain written permission from the relevant authority before filing a patent abroad unless the patent application has already been submitted in India at least six weeks prior. This provision aims to safeguard national interests, particularly in sensitive fields like defense and atomic energy. Non-compliance with Section 39 can lead to severe penalties, including imprisonment or fines, underscoring the importance of adhering to FFL regulations for international patent filings. Noncompliance with the said provision of section 39 can lead to revocation of a patent under section 40 of the Indian Patent[2] Act and also can lead to imprisonment which may extend to two years or with a fine or both.

STATUTORY PROVISION

Section 39 of the Indian Patent Act, 1970 stipulates the concept of a foreign filing license.  It is written permission sought by an inventor who wants to apply patent outside India. Section 39, states that without prior permission, the resident of India cannot apply for the patent outside India. But in case, the applicant has applied for a patent for the same invention six weeks before the application outside India, the permission is not necessary.

Section 39(2) states that the controller shall dispose of every application within 21 days (Given in rule 71 of the Patent Rules, 2003). Further, it states that the controller shall not grant permission without the prior consent of the central government if the invention is relevant for defense or atomic energy.

Section 39(3) of the said provision states that this provision shall not applied to the person who resides outside India.

Any person who contravenes the provision of section 39 of the said act, shall be punishable with imprisonment for the term of 2 years which can be extended to 2 years or a fine or both.

PATENT RULES, 2003

Rule 71[3] of the said rules talk about the procedure for the application foreign filing license. It states that the application shall be made in Form 25, and the controller shall dispose of every application within 21 days. But in the case of the invention related to defense and atomic energy, the period of 21 days shall be counted from the date of permission receipt from the central government.

The following documents are needed along with Form 25:

  • Disclosure of the Invention
  • Name and address of the Inventor
  • Name of the country in which the Invention would be filled and reason for foreign filing
  • Form 28 in case of small entity.
Foreign Filing License in India
[Image Sources: Shutterstock]

CASE LAW

SCOPE OF SECTION 39 OF THE PATENT ACT, 1970

The case of Selfdot Technologies v. Controller General of Patents did discuss the scope of Section 39 of the Indian Patent Act, 1970, focusing on the requirement of obtaining a Foreign Filing License (FFL) before filing patents abroad for Indian residents. The appellant argued that since the initial patent application was filed in India, subsequent filings for the same invention or related patents (such as a patent of addition) did not require an FFL. However, the court rejected this argument, affirming that Section 39 applies to all patent applications filed abroad, including patents of addition, as these could result in independent patents.

The court also discussed the applicability of Section 40, which deals with the consequences of non-compliance with Section 39. Section 40 allows for the revocation of a patent or abandonment of the application if the inventor fails to comply with the FFL requirement before filing a foreign patent application.

FACTUAL BACKGROUND OF THE CASE

The appellant filed a patent application in India in 2014. Thereafter, the patent was granted in the USA. In 2018, the appellant filed a continuation in part application in the US without applying the same application for continuation in India. The controller rejected the same patent of addition application on the grounds of contravention of section 39 of the patent act. The said refusal was challenged before the Madras High Court. The appellant contended that section 39 does not apply patent of addition application because the application was first filed in India.

OBSERVATION OF COURT

The High Court of Madras considered section 54 to section 56 related to “patent of addition.”  The court stated that the subject matter related to the patent of addition is the subject of an independent patent. The court further stated that a patent of addition requires additional disclosure. So, the court held that it was in contravention of section 39 of the patent act, and section 39 also includes “patent in addition.”

If an inventor modifies or adds to their invention and intends to seek a patent outside India, they must still obtain a Foreign Filing License (FFL). Failure to do so would result in a violation of Section 39 of the Indian Patents Act. This non-compliance can lead to penalties, as outlined in Sections 40 and 118 of the Act. Under these provisions, filing a patent abroad without securing the necessary Foreign Filing License can result in punitive measures, including fines or imprisonment, depending on the severity of the breach. Thus, adhering to Foreign Filing License requirements is crucial for international patent applications.

CONCLUSION

The Foreign Filing License (FFL) is a key regulatory provision under the Indian Patent Act, of 1970, aimed at safeguarding national security by ensuring critical inventions are reviewed before being disclosed internationally. Section 39 highlights the necessity for Indian residents to obtain permission before filing patents abroad. This requirement balances the need for innovation with national security, especially in sensitive areas such as defense and atomic energy. Failure to comply can lead to severe penalties, emphasizing the importance of adhering to FFL rules. Ultimately, the FFL ensures that international patent filings align with national interests.

Author: Devyani Pranav, in case of any queries please contact/write back to us via email to chhavi@khuranaandkhurana.com or at  Khurana & Khurana, Advocates and IP Attorney.

[1] The Patent Act, 1970, s. 39.

[2] Id., s. 40.

[3] The Patent Rules, 2003, Rule 71.

Leave a Reply

Categories

Archives

  • October 2024
  • September 2024
  • August 2024
  • July 2024
  • June 2024
  • May 2024
  • April 2024
  • March 2024
  • February 2024
  • January 2024
  • December 2023
  • November 2023
  • October 2023
  • September 2023
  • August 2023
  • July 2023
  • June 2023
  • May 2023
  • April 2023
  • March 2023
  • February 2023
  • January 2023
  • December 2022
  • November 2022
  • October 2022
  • September 2022
  • August 2022
  • July 2022
  • June 2022
  • May 2022
  • April 2022
  • March 2022
  • February 2022
  • January 2022
  • December 2021
  • November 2021
  • October 2021
  • September 2021
  • August 2021
  • July 2021
  • June 2021
  • May 2021
  • April 2021
  • March 2021
  • February 2021
  • January 2021
  • December 2020
  • November 2020
  • October 2020
  • September 2020
  • August 2020
  • July 2020
  • June 2020
  • May 2020
  • April 2020
  • March 2020
  • February 2020
  • January 2020
  • December 2019
  • November 2019
  • October 2019
  • September 2019
  • August 2019
  • July 2019
  • June 2019
  • May 2019
  • April 2019
  • March 2019
  • February 2019
  • January 2019
  • December 2018
  • November 2018
  • October 2018
  • September 2018
  • August 2018
  • July 2018
  • June 2018
  • May 2018
  • April 2018
  • March 2018
  • February 2018
  • January 2018
  • December 2017
  • November 2017
  • September 2017
  • August 2017
  • July 2017
  • June 2017
  • May 2017
  • April 2017
  • March 2017
  • February 2017
  • January 2017
  • December 2016
  • November 2016
  • October 2016
  • September 2016
  • August 2016
  • July 2016
  • June 2016
  • May 2016
  • April 2016
  • March 2016
  • February 2016
  • January 2016
  • December 2015
  • November 2015
  • October 2015
  • September 2015
  • August 2015
  • July 2015
  • June 2015
  • May 2015
  • April 2015
  • March 2015
  • February 2015
  • January 2015
  • December 2014
  • November 2014
  • October 2014
  • September 2014
  • August 2014
  • July 2014
  • May 2014
  • April 2014
  • March 2014
  • February 2014
  • January 2014
  • December 2013
  • November 2013
  • October 2013
  • September 2013
  • August 2013
  • July 2013
  • June 2013
  • May 2013
  • April 2013
  • March 2013
  • February 2013
  • January 2013
  • December 2012
  • November 2012
  • September 2012
  • August 2012
  • July 2012
  • June 2012
  • May 2012
  • April 2012
  • March 2012
  • February 2012
  • January 2012
  • December 2011
  • November 2011
  • October 2011
  • September 2011
  • August 2011
  • July 2011
  • June 2011
  • May 2011
  • April 2011
  • February 2011
  • January 2011
  • December 2010
  • September 2010
  • July 2010
  • June 2010
  • May 2010
  • April 2010