Foreign Filing License Requirement

At various instances, an applicant or an inventor may require to file a patent application directly in a foreign country other than country of residence. There could be diverse reasons pertaining first filing in a foreign country, such as, non-patentable subject matter in country of residence, low market potential in country of residence, etc.

In such instances, many countries impose requirement of obtaining a Foreign Filing License (FFL) from an appropriate authority. FFL is a permission obtained from appropriate authority of country of residence of an applicant to file patent application directly in a foreign country without filing in country of residence. The objective of FFL is to monitor all inventions exported to a foreign country specially inventions pertaining to defence and atomic energy. Thus, such a license aids in protecting national security of a country. Failing to obtain an FFL from the country of residence of an applicant may lead to harsh penalties faced by the applicant.

FFL in India

According to Section 39 of the Patent Act, 1970:

Residents not to apply for patents outside India without prior permission.—No person resident in India shall, except under the authority of a written permit sought in the manner prescribed and granted by or on behalf of the Controller, make or cause to be made any application outside India for the grant of a patent for an invention unless—

(a) an application for a patent for the same invention has been made in India, not less than six weeks before the application outside India; and

(b) either no direction has been given under sub-section (1) of section 35 in relation to the application in India, or all such directions have been revoked.

(2) The Controller shall dispose of every such application within such period as may be prescribed:

Provided that if the invention is relevant for defence purpose or atomic energy, the Controller shall not grant permit without the prior consent of the Central Government.

(3) This section shall not apply in relation to an invention for which an application for protection has first been filed in a country outside India by a person resident outside India.”

Thus, if a person is a resident in India and requires first filing of an application in a foreign country, he shall obtain a written permission in a prescribed manner by or on behalf of the Controller. Also, if first filing is done in India, the applicant would require to obtain the license, if he/she requires to file said application within 6 weeks of date of filing in India. Also, no directions should have been made under section 35(1) pertaining to secrecy provision or such directions should have been revoked. Further, it becomes duty of the Controller to dispose of every such application within 21 days of making such request (Rule 71 of the Patent Rules, 2003). If the invention is pertaining to defence purpose or atomic energy, the Controller shall require prior consent of the Central Government.

According to Section 40, if any person makes or causes to be made an application for grant of a patent outside India in contravention of Section 39 the application shall be deemed to have been abandoned and the patent granted, if any, shall be liable to be revoked under section 64.

Further, section 118 imposes a penalty for contravention of section 39. According to section 118, if any person makes or causes to be made an application for the grant of a patent in contravention of section 39 he shall be punishable with imprisonment for a term which may extend to two years, or with fine, or with both.

 

Following table represents FFL requirement in different countries:

 

S.No. Country FFL Requirement Clause Remarks
1. United States (U.S.) Yes 35 U.S.C. § 184-188 A license is required to be obtained from the Commissioner of Patents, when a person requires to file in any foreign country to six months after filing in the United States an application for patent or for the registration of a utility model, industrial design, or model in respect of an invention made in United States.
A license shall not be granted with respect to an invention subject to an order issued by the Commissioner of Patents pursuant to secrecy provisions (35 U.S.C. §181) without the concurrence of the head of the departments and the chief officers of the agencies who caused the order to be issued.
The license may be granted retroactively where an application has been filed abroad through error and the application does not disclose an invention within the scope of section 181.
2. China Yes Article 20 of Patent Law of the People’s Republic of China A foreign filing license is mandated for an invention or a utility model developed in China even if filing has been made in China.
Any unit or individual that intends to apply for patent in a foreign country for an invention or utility model accomplished in China shall submit the matter to the patent administration department under the State Council for confidentiality examination.
With regard to an invention or utility model for which an application is filed for a patent in a foreign country in violation of the provisions of this requirement, if an application is also filed for the patent in China, patent right shall not be granted.
3. Japan Not Applicable
4. Korea Yes (limited) Article 41 of the Korean Patent Act, Act No. 950 filling in a foreign country is not prohibited.
If the invention pertains to defense, permission from the Government is required.
5. Australia Not Applicable
6. Mexico Not Applicable
7. United Kingdom (U.K.) Yes Section 23 of the Patents Act, 1977 No person resident in the United Kingdom shall, without written authority granted by the comptroller, file or cause to be filed outside the United Kingdom an application for a patent for an invention unless an application for a patent for the same invention has been filed in the Patent Office (whether before, on or after the appointed day) not less than six weeks before the application outside the United Kingdom and either no directions have been given under section 22 in relation to the application in the United Kingdom or all such directions have been revoked.
8. Germany Yes (limited) Section 52 A patent application containing a state secret (Section 93 of the Criminal Code) may only be filed, outside the territory to which this Act applies, with the written consent of the competent highest federal authority. Consent may be given subject to conditions.
9. France Yes Article L 614-18 of Intellectual Property Code International applications for the protection of an invention submitted by natural or legal persons having their place of residence or business in France must be filed with the National Institute of Industrial Property where no claim is made to priority under an earlier filing in France. In such cases, the National Institute of Industrial Property shall act as receiving office.

About the Author: Ms. Prigya Arora, Patent Associate at Khurana & Khurana, Advocates and IP Attorneys. Can be reached at prigya@iiprd.com

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