Foreign Filing License in India

12th September, 2024 - 9:22 am Categories: Foreign filing license 0 Comments

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.

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.