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: 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: 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:
- 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.
- 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.