Foreign Filing Permission: Indian Patent System Perspective

Different countries having regard to National Security Considerations and with the intent of having a check on the defence and atomic energy related inventions, have different restrictions in place. While some countries make it mandatory to file Patent Applications in their country before applying in any other country, some countries require only prior permission before applying in other countries. Here is the link for a quick overview of the requirements of different countries.

While filing Patent application outside India for the invention conceived by Indian resident, it is not compulsory to first file Patent Application in India. However, it’s important to note that if Patent Application is not to be first filed in India, written permission is to be sought in form 25 from the Indian Patent Office. It’s also important that mandate of seeking permission for foreign filing remains there even after filing Indian application for six weeks.

Attention of the readers is also sought to the language of the governing section (reproduced below) of the Patent Act, 1970 which uses the word ‘resident’ and not the citizen. Therefore if the invention has been conceived by citizen/national of any country while he was residing in India, section 39 has to be complied with before applying for foreign Patent Applications.

Official fee for form 25 is as follows:

Natural person(s) and/ or Startup:

E-filing- 1600

Physical filing: 1750

Small entity, alone or with natural person(s) and/ or Startup:

E-filing- 4000

Physical filing: 4400

Others, alone or with natural person(s) and/ or Startup and/ or small entity

E-filing- 8000

Physical filing: 8800

Regarding timeline, Indian Patent Office has to dispose of such request within 21 days of receipt of such request. However, this timeline changes for the inventions related to defence or atomic energy, where the period of twenty-one days starts from the date of receipt of consent from the Central Government.

Related sections and rules have been reproduced below. Sections dealing punishments in case of failure to comply with relevant sections have also been reproduced.

Section 39. Residents not to apply for patents outside India without prior permission.—
(1) 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.

Rule 71: Permission for making patent application outside India under section 39.—

(1) The request for permission for making patent application outside India shall be made in Form 25.

(2) The Controller shall dispose of the request made under sub-rule (1) within a period of twenty-one days from the date of filing of such request:
Provided that in 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.

Below given sections deals with the penalties for not complying with section 39:

Section 40:

Liability for contravention of section 35 or section 39.—Without prejudice to the provisions contained in Chapter XX, if in respect of an application for a patent any person contravenes any direction as to secrecy given by the Controller under section 35 or makes or causes to be made an application for grant of a patent outside India in contravention of section 39 the application for patent under this Act shall be deemed to have been abandoned and the patent granted, if any, shall be liable to be revoked under section 64.

Section 118: Contravention of secrecy provisions relating to certain inventions.—If any person fails to comply with any direction given under section 35 or 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.

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