The Nuts and Bolts of Foreign Filing Licence (FFL) In India

Like any other IP right, a patent is also a jurisdictional right confined to the jurisdiction where the application is filed, and the rights granted. A patent is also considered a negative right, which enables the patentee to prohibit others from manufacturing, using, selling, and distributing the patented goods and services. If the invention is not protected in a specific jurisdiction, it can be used by any third party without restrictions. Hence, the applicants must choose jurisdictions carefully to safeguard their inventions in those countries.

Given that a patent is a valuable asset that can aid international business expansion, businesses must develop a foreign filing strategy. The strategy could be based on specific parameters like potential markets, manufacturing centres, competitors, emerging markets, and licencing opportunities to decide where to seek protection for their invention.

Apart from the specific parameters outlined above, the applicant must be aware of particular provisions of the Patents Act, 1970, which forbid Indian residents from filing patent applications outside India without first filing in India.

It is pertinent to note that, as an exception, a patent application can be directly filed outside India by an individual (Indian Resident) by seeking prior approval from the Indian Patent Office. This is referred to as a Foreign Filing Licence (FFL), as envisaged under Section 39 of the Indian Patent Act, 1970.

 

What is the objective of providing the option of a Foreign Filing Licence?

The primary objective of FFL is to analyse patent applications for sensitive technological information or subject matter to prevent the unauthorised export of valuable knowledge to foreign countries. The FFL assists the Indian Patent Office/government in determining the patent application’s sensitive subject matter (pertaining to defence or atomic energy). Once it is ascertained that there are no issues with disclosing the details of the invention to a foreign country, the Indian Patent Office usually grants the Foreign Filing Licence within 21 days of receiving the request.

When the applicant is not required to seek a Foreign Filing Licence
  • When the applicant is not a resident of India, and the invention was created outside of the country.
  • If the applicant is a resident of India who filed a patent application in India six weeks before filing a patent application in another jurisdiction.
When the applicant is required to seek a Foreign Filing Licence
  • When the applicant or inventor is a resident of India.
  • When the applicant does not wish to file a patent application in India before filing a patent application outside of India.
  • When the applicant is a resident of India, a patent application has been filed in India, but the six-week term has not yet expired.

It is important to note that if the invention is related to nuclear energy or defence, the Indian Patent Office may not issue the FFL without the prior consent of the Central Government.

 

Statutory provisions governing Foreign Filing Licence in India

Rule 71 of the Patent Rules, 2003 describes the procedure and mandates seeking permission to file a patent application outside India.  

Rule 71: Permission for filing patent applications outside India under section 39.

“(1) The request for permission to submit a patent application outside India shall be made on Form 25.

(2) The Controller must respond to a request made under sub-rule (1) within twenty-one days of the request being filed.

Provided that in the 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.”

 

Requirements for Seeking a Foreign Filing Licence

Since the main objective of FFL is to examine the nature of inventions and technologies in the nation’s best interest, an applicant must sufficiently disclose the invention’s details, including the title, description, and drawings (if any). In addition to the above information, the applicant must submit the following forms with all required data.

Form-25[1]: to request permission to make a patent application outside India. Form 25 must include:

  • Title of the invention
  • Name, address, and nationality of inventors who are “resident in India,”
  • Name and address of the applicant if rights have been assigned to the applicant.
  • Names of foreign countries where the application will be submitted once the Foreign Filing Licence is issued.
  • Reason for making such an application.

Form-26[2]: Power of Attorney (POA) from the inventor(s) or applicant residing in India and appointing a patent agent to represent them.

 

Can a Foreign National Apply for a Patent in India?

As outlined above, an Indian Foreign Filing Licence is not applicable for foreign nationals filing a patent application in India. A foreign national may apply for a patent in India by following one of the two routes mentioned below:

  1. Paris Convention Route: Under the Paris Convention for the Protection of Intellectual Property, a foreign national of a convention country can use the convention route to file a patent application in India. Any invention filed in their home country may also be filed for patent protection in India within 12 months by claiming priority from the earliest filed application in their home country.
  1. Patent Cooperation Treaty (PCT) Route: A foreign national may also file a patent application in India under the PCT route.

However, if they intend to file a patent application directly in India, they must follow their country’s patent law to confirm if there is a similar requirement in their jurisdiction.

Even though FFL enables Indian residents to file patent applications directly in a foreign country without filing the first application in India, inventors and the applicants (who are Indian residents) must strictly comply with the requirements of the FFL discussed above to avoid serious consequences, including imprisonment for a term of up to two years, or a fine, or both.

Even though Foreign Filing Licence (FFL) enables Indian residents to file patent applications directly in a foreign country without filing the first application in India, inventors and the applicants (who are Indian residents) must strictly comply with the requirements of the FFL discussed above to avoid serious consequences, including imprisonment for a term of up to two years, or a fine, or both.

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Draft Delhi High Court IPR Division Rules, 2021: Observations and Concerns

On 10th October, 2021 the Delhi High Court had issued a Public Notice proposing the Draft “Delhi High Court Intellectual Property Rights Division Rules, ­ 2021”. The Court vide the said notice had invited comments from the members of the Bar by 24th October, 2021. In a much-anticipated development, following the incorporation of the inputs from the Bar, on 10th December 2021 the Hon’ble High Court released the finalised draft of the proposed Rules and has sought suggestions by the relevant stakeholders by December 17, 2021.

 

In July 2021, the Hon’ble Chief Justice of the Delhi High Court announced the constitution of IPD (Intellectual Property Division) following the abolition of IPAD. The Draft Rules seek to regulate the matters listed before the IPD with respect to practice and procedure for the exercise of its original and appellate jurisdiction, and for other miscellaneous petitions arising out of specific statutes[1].

 

The Structure

The Draft Intellectual Property Rights Division Rules, ­ 2021 has a framework of 41 Rules addressing and dealing with various procedures and definitions to be applied while adjudicating cases before the IPD. The General Clause under Rule 29 clarifies that “procedures not specifically provided for in these Rules shall, in general, be governed by The Civil Procedure Code, 1908 as amended by The Commercial Courts Act, 2015 and the Delhi High Court (Original Side) Rules, 2018.”

It is pertinent to note that, following the inputs by the Bar, the term “Acts” under Rule 2a is also now inclusive of the Information Technology Act, 2000. Consequently, under Rule 2d “Appeal” shall also include “an appeal filed before, or transferred to, the IPD” with the nomenclature [C.A. (Comm. IPD-IT)] Under Section 62 of the Information Technology Act, 2000.

The Draft Rules under rule 2i the “intellectual property subject matter” for the purpose of these rules concern the following:

  1. Matters pertaining to Patents, Copyrights, Trademarks, Geographical Indications, Plant Varieties, Designs, Semiconductor Integrated Circuit Layout-Designs, Traditional Knowledge, and all rights under common law, if any related to these.
  2. Matters relating to passing off, unfair competition, disparagement, comparative advertising, and other similar issues.
  3. Matters concerning the protection of trade secrets, confidential information, and other related subjects.
  4. Matters relating to tortious actions related to privacy and publicity rights involving intellectual property issues.
  5. Matters pertaining to data exclusivity, domain names, and other matters relating to data protection involving intellectual property issues, as well as those arising under the Acts.
  6. Matters involving internet violations relating to any of the subject matters under clauses (i) through (v).

Notably, the rights related to data protection, data inclusivity and other such related matters are also covered under the scope of the said “subject-matter’. The Explanation attached with the provision states that cases pertaining to the Information Technology Act, 2000 which deal with the rights and liabilities of the intermediaries, online market places and e-commerce platforms

And those “issues relating to any of the aforementioned rights, shall be deemed to be within the purview of intellectual property rights.” 

The final Draft Rules present a precise scope of jurisdiction of the Draft Rules under Rule 4, as compared to the earlier version. The Rule now states that “Every IPR subject matter or case or proceeding or dispute filed before or transferred to, the IPD, as defined in Rules 2(i), 2(j) and 2(l), shall be heard and adjudicated by a Single Judge of the IPD except those that are to be decided by a Division Bench as per Section 13 of the Commercial Courts Act, 2015.”

Rule 6 elaborates the procedure for filing an appeal before the IPD. As per Rule 6 (xii)

“Procedures applicable to Civil Appeals filed before the Single Judge: The Delhi High Court Rules and Orders as also the Practice directions issued from time to time, to the extent there is no inconsistency with these Rules, shall be applicable to appeals filed before the IPD.”

Procedures for filing original civil petitions, civil writ petitions and civil miscellaneous petitions are discussed under Rules 7, 8 and 9 respectively. Further, Rules 10 to 14 enumerate additional requisite procedures to be followed while addressing a suit to the IPD.

Subsequent to the comments by the members of the Bar, the final Draft Rules have incorporated additional provisions pertaining to the recording of the evidence, hot-tubbing or other such modes of recording evidence, discovery and disclosure, preservation of evidence by the parties, Confidentiality clubs and redaction of confidential information and, damages and accounts of profits; from Rules 15-20.

Under Rule 15, recording of evidence can be undertaken through video conferencing ( as per the High Court of Delhi Rules for Video Conferencing for Courts 2021). The use of videography and transcription technology or any other form of recording evidence can also be applied. Further, evidence can also be recorded at any venue outside the court or by a Local Commissioner. However, it is imperative to note that, the discussed methods shall only be applicable if the court is of the opinion that the same is expedient in the interest of justice.

Interestingly, Rule 18 puts an onus on the parties to the proceedings to “preserve all documentary, tangible and electronic material relating to the subject matter of the proceedings which is capable of being relied upon as evidence” upon the initiation of or receiving notice about the institution of the proceedings before the IPD. Prior to the initiation of the proceedings, a party may issue a Litigation Hold Notice that shall set in motion the evidence preservation liability of the party.

Rule 19 addresses the establishment of a ‘confidentiality club’ by the court at any stage of the proceedings for the preservation and exchange of confidential information filed before the Court including documents, as per the Delhi High Court (Original Side) Rules, 2018. Further, the rules state that upon a request by application the court may direct the redaction of such information. However, the rules fail to mention the party, legal practitioner, expert etc that shall have the Locus Standi to approach the court with such application.

Rule 20 elaborates upon the factors that the courts shall have to take into consideration while determining the quantum of damage for a party seeking to settle accounts of profits/damages. Notably, the rule provides that the courts may engage expert assistance (provided for in Rule 31) in the computation of such damages.

The final Draft Rules, 2021 also lay down provision for summary adjudication under Rule 27 on principles akin to those enumerated in Order XIIIA, Code of Civil Procedure, 1908 and as applicable to commercial suits under the Commercial Courts Act, 2015. It is interesting to note that, unlike the previous version the current rules do not have any provision for summary adjudication in Patent Cases.

With an objective to curb unnecessary delays in the disposal of suits, it is apparent that the High Court has ensured provisions relating to strict guidelines for a written and water-tight timeline for oral submissions are included under Rule 33 of the 2021 Division Rules.

 

Conclusion

The establishment of an independent Intellectual Property Division is an indication of acknowledgement of the importance of Intellectual Property in the country. The corresponding 2021 Division Rules is a concrete step forward, however, the following aspects demand a more sincere deliberation:

  1. Clarity with respect to the Locus Standi of parties, legal practitioners, agents, experts etc. to the case for extending an application to the ‘Confidentiality Club’ needs to be determined.
  2. Under Rule 31 constitution of a Panel of Experts is provided to extend advisory assistance to the court relating to the subject matter of the dispute, as and when necessary. While the provision is definitely in resonance with maintaining the quality adjudicatory function, it fails to elaborate upon the criteria of appointment of the experts. Additionally, the rule mentions ‘reviewing’ the expert panel from time to time, however, the nature and period of such review has not been discussed.

The establishment of an independent Intellectual Property Division is an indication of acknowledgement of the importance of Intellectual Property in the country. The corresponding 2021 Division Rules is a concrete step forward, however, some aspects demand a more sincere deliberation

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