Foreign Filing License for Patents in India

Introduction

A Foreign Filing License (FFL) is a statutory requirement under the Indian Patent Act, 1970, aimed at protecting national interests by preventing unauthorized disclosures of inventions abroad. This regulation ensures that inventions with potential strategic, security, or public interest implications are thoroughly evaluated before international exposure.

This article explores the concept, legal framework, practical implications, and key case studies of the FFL, offering a comprehensive understanding of its significance in the Indian Patent system.

What is a Foreign Filing License

An FFL is a formal approval required under Section 39 of the Indian Patent Act, 1970 (hereinafter, “Act”). It mandates prior permission from the Indian Patent Office (IPO) for filing patent applications in foreign jurisdictions, if the applicant is a resident of India.

Several countries USA, UK, Germany, France, China by way of their national laws restrict patent filings outside such countries, on inventions made therein, in order to safeguard national security.

An international application filed under the Patent Cooperation Treaty (PCT) is considered a foreign application for the purpose of obtaining a foreign filing license (FFL), even when filed with the Indian Patent Office (IPO) as the Receiving Office. This interpretation was affirmed by the Delhi High Court in the case of Puneet Kaushik & Anr. v. Union of India & Ors.[1]1, where it was observed: “In my view, the provisions of Section 39 of the Patents Act apply to such applications, making it mandatory to obtain a written permit from the Controller as per Section 39. The IPO cannot process these applications without this permit…”

The court emphasized that the purpose of Section 39 is to ensure that technologies developed in India are scrutinized before being sent abroad, particularly with regard to defense and atomic energy concerns. However, the Section does not restrict its application to specific types of inventions. As such, obtaining a written permit under Section 39 is a mandatory prerequisite, and an international application cannot be assigned a filing date earlier than the date on which the required permit is issued, regardless of its completeness.

Definition of “Resident”

Section 39 of the Patents Act states that every resident of India must apply for an FFL if filing a foreign patent application. However, the Act does not define the term “resident.” The only legislation addressing residential status is the Indian Income-tax Act, 1961.

According to Section 6(1) of the Income Tax Act, an individual is considered a resident of India if:

  1. They have stayed in India for 182 days or more during the relevant year; or
  2. They have stayed in India for 60 days or more in the relevant year and 365 days or more in the four preceding years.

The determination is based solely on residential status, with nationality being irrelevant.

Section 39 of the Indian Patent Act

Section 39 of the Act specifies the conditions under which an FFL is required:

  • An inventor who is a resident in India at the time of conception and development of the invention, must obtain a permission from the Indian Patent Office to file a patent application for the said invention outside India.
  • If a patent application for the invention is filed in India first, a foreign patent application for the same invention can be filed without obtaining a Foreign Filing License, provided at least six weeks have passed since the Indian filing date, unless the invention pertains to defense purposes or atomic energy.
  • Inventions related to defense or atomic energy require prior clearance from the Central Government before filing abroad.

Exceptions

  • If the first patent application is filed abroad by a non-resident, Section 39 does not apply.
  • An application may be filed abroad without an FFL if six weeks have elapsed since the Indian filing and no objections have been raised.

Steps to Obtain the Foreign Filing License

  1. Submit Form 25 to the IPO along-with brief description of the invention.
  2. The IPO evaluates the invention for its relevance to public interest and security considerations.
  3. The Controller will respond to the FFL request within 21 days from the date of filing the request.

The Indian Patent Office may, however, grant a foreign filing license prior to 21 days or may require an additional 7–10 days because of pending matters before the relevant Controller responsible for issuing foreign filing licenses.

Consequence of Non-Compliance

Section 118 of the Indian Patents Act of 1970 states that if the patent applicant (Indian resident) fails to comply with the clauses of Section 39, “he shall be punishable with imprisonment for a term which may extend to two years, or with fine, or with both”. Additionally, as stated in Section 40, failure to obtain prior authorization or a written permit for a foreign filing from the IPO may lead to “the application for patent be deemed to have been abandoned and the patent granted, if any, shall be deemed to be revoked under Section 64 (1)(n)”.

A cursory examination of the sections makes it abundantly evident that adherence to section 39’s requirements is mandatory and absolute. Accordingly, there is no defense that the Indian entity in the present situation would be held accountable for breaking the aforementioned clause. However, there are no judicial precedents in India that deal with the aspect of penalties being imposed on a party under Section 118.

Frequently Asked Questions about Foreign Filing Licenses

FFL for Patent of Addition

Patents of Addition, also known as improvement patents, are filed to incorporate enhancements or modifications to an earlier patent application by the same applicant. These patents are comparable to Continuation-in-Part (CIP) applications in the United States, as both aim to refine or expand upon existing patent applications.

In Selfdot Technologies (OPC) Pvt. Ltd v. Controller of Patents [2]2, the Madras High Court clarified that Patents of Addition involve additional disclosures beyond the patent for the main invention, thus requiring separate permissions for FFLs. Such patents are, according to the court, different from Divisional Applications which pertain to matters already fully disclosed in the main patent.

Invented/Conceived in India, but Developed Abroad

As per Section 39 of the Indian Patents Act, if an invention is created or developed in India, obtaining a Foreign Filing License (FFL) from the Indian Patent Office is essential before filing a patent application overseas. This requirement remains applicable even if the inventor or the invention later relocates abroad.

Additionally, if there are several inventors from various FFL countries, they must meet the requirements of each FFL country in accordance with their respective laws if they want to obtain a foreign filing license for their patents.

FFL for Design in India

There is no provision in the Indian Design Act of 2000, for obtaining the Foreign Filing License before filing the design application abroad.

Conclusion

The Foreign Filing License plays a pivotal role in balancing inventors’ interests with India’s strategic priorities. By enforcing Section 39, the IPO ensures that inventions originating in India undergo necessary scrutiny before being disclosed on the international stage. By striking a balance between procedural efficiency and legal safeguards, the FFL system continues to be a cornerstone of India’s innovation ecosystem.

References

  1. [1] W.P. (C) 1631/2013 ↩︎
  2. [2] (T)CMA(PT)/61/2023 ↩︎

[3] https://www.lakshmisri.com/newsroom/archives/foreign-filing-license-a-must-know-requirement/

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