Law and practice relating to foreign filing license in India

Several countries USA, UK, Germany, France, China by way of their national laws restrict patent filings outside such countries, on inventions made therein, in order to safeguard national security.

India is one such country and its laws (under Section 39 of the Patents Act) prohibit the filing of patent applications in a foreign country or region or even an international application where:

• applications are filed by Indian residents and/or
• the invention was made in India 

For the purpose of seeking a foreign filing licence, an international application filed with the PCT is regarded as a foreign application, even if the same is filed at the Indian Patent Office as the Receiving Office. This has been clarified in the case of Puneet Kaushik & Anr Vs Union of India And Ors: Delhi High Court: W.P.(C ) 1631/2013. Relevant portions from the said decision are as under:

Therefore, in my view, the provisions of Section 39 are necessarily attracted to such an application, thereby necessitating a written permit to be granted by the Controller, in terms of Section 39 of the Patents Act. No such application, in my view, can be processed by the Indian Patent Office, unless it is accompanied by such a permit………………….

The contention was that the legislative intent was to ensure that no technology conceived and developed in India should leave its shore without scrutiny from the point of view of defence and atomic energy-related purposes. However, the provisions of Section 39 contain no such qualification with respect to the applications made outside India and in view of the unambiguous expressions used in Section 39 the scope of the Section cannot be restricted only to the inventions of a particular nature.

Since written permit in terms of Section 39 was a mandatory requirement for such an application, the international application, even if complete in all other respects cannot be given a filing date earlier than the date on which the written permit in terms of Section 39 is issued.

Where an Indian patent application is made for such inventions in India and a period of six weeks have passed without any notice of any prohibition from the Indian Patent office it amounts to implied permission from the Indian Patent office to file corresponding applications in another country, region or the PCT. Accordingly, in case the application is first filed in India and 6 weeks have elapsed a resident in India can file a foreign application based on the same without seeking permission.

Alternatively, a foreign filing licence by way of request on Form 25 for permission for filing patent application outside India is to be made.  This is issued within 2 to 3 weeks after completion of documentation.

For the purpose of seeking such permission, the request is to be submitted with

• the full disclosure of the invention
• the names and addresses of the applicant/inventor
• In case an agent is engaged power of attorney from the applicant/inventor seeking the permission in favour of the attorney/agent the POA has to be filed in hard copy and the permission is granted by the Controller only after receiving the hard copy of the POA.

Since the whole idea for requesting permission from the Patent Office before filing an application outside India by an Indian resident is to scrutinize and make sure that no invention related to atomic energy or defence made in India leaves the country without knowledge of relevant authorities, any further applications for improvements like continuation, addition etc would attract a further permission from the Patent Office.

There could be various situations where one has to deal with the requirement for such permission for the inventors and /or applicants

In case, where for application of a patent outside India, the applicant is a foreign resident but any of the inventors are residents in India, said permission is to be requested in the names of such Indian inventors.

Alternatively, if the applicant is Indian resident and the inventors are not the permission is to be sought in the name of the applicant.

If all the inventors and the applicant are Indian residents it is economical to seek permission in the name of the inventors as the official fee for the individuals is less than that of legal entity.

In case the applicant is not an Indian resident and the inventors are also not resident of India though the inventor(s) is(are) Indian national(s)/ citizen(s), no permission is to be sought from the Indian Patent office.

On the other hand, if the inventor(s) is resident/domiciled in India for some time as well as in foreign country permission is to be sought from the Indian Patent Office in his name. This takes into consideration that the invention could have been made/conceived by the inventor during his residence in India for the particular period of time.

In case the inventors, who are domiciled in India even for a brief period of time, during which the invention is conceived/partly made, permission is to be sought.

In other words, the foreign filing license or the permission as it is generally called, is required even if the invention is partially made in India.

The permission is to be sought before filing the application outside India by an Indian resident and there is no provision of requesting the permission retroactively.

There have been situations where someone files an application outside India and later realises that one of the inventors is an Indian resident or was in India when the invention was conceived/ made fully or partly. A few such cases have been encountered by us. In such cases request for Foreign filing licence were requested accompanied by a petition explaining the entire background leading to the omission and seeking the indulgence of the Controller to rectify the irregularity. In one case the Patent office has regularised the matter while others are still pending. It can thus be said that such omission may be curable in certain cases.

On receiving the request for permission the Controller scrutinized the same before granting permission. In case the Controller finds that the invention for which patent application is to be filed abroad is relevant for defence purpose or atomic energy he would not grant permission without the consent of the Central Government. In case it is found relevant for defence/atomic energy by the Central government they would order accordingly and such an order is final and cannot be questioned in any Court of law.

The requirement for foreign filing permission is absolute and non- compliance of the requirement of requesting foreign filing permission attracts penalty. In case an application for patent has been filed outside India on contravention of the provision, the corresponding Indian application is deemed to have been abandoned and if a patent is granted on such an application it is liable to be revoked on revocation petition filed by any interested person or Central Government. Further, the person who makes or causes to be make such application outside India in contravention of this provision is punishable with imprisonment which may extend up to 2 years or fine or both.

From a point of view of strategy, it is always beneficial to file the first application in India even by way of provisional specification without claims because such filing creates priority date which can be beneficially used to effect foreign filings claiming the filing date in India. This the first application in India on hand serves as a foreign filing license after six weeks and at the same time safeguards against loss of right due to publication or disclosure in some other form.

In case foreign filing license is to be sought within a short time and the whole disclosure is not ready one may submit the broad outline of the invention as in provisional specification.

Additionally, when such request is filed throughan agent, it is advisable to submit the original executed Power of attorney along with the same, to hasten the issuance of the permission.

Dr. Sanchita Ganguli

Dr. Sanchita Ganguli – Principal - life sciences team at the Kolkata practice of S Majumdar & Co. She graduated from the University of Calcutta and after completing her masters from same University obtained a PhD from the University of Calcutta. Joined the practice in 2002 after a period of her engagement in Academics as a lecturer. Active in prosecution, oppositions, revocations and opinion work besides active contribution in contentious matters before the patent office and IPAB.

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