In order to file a patent application outside India, for Indian residents, it is required to seek permission from Indian Patent Office and this permission is called as Foreign Filing Permission or Foreign Filing License. According to Section 39 of the Indian Patent Act, 1970, if an applicant is a resident of India but is interested in filing a patent application in a foreign country, the applicant has the below-mentioned options:
Option 1: Filing an application at the Indian Patent Office under section 7 and wait for 6 weeks before filing in the foreign county of their choice including PCT. If there are any issues regarding the invention or its subject matter, the Controller is expected to provide necessary directions, including secrecy directions, within 6 weeks. In the absence of any such directions within this timeframe, the applicant is free to file applications outside India.
Option 2: Obtain permission from Indian Patent Office to file patent application directly in the foreign country without filing an application in India.
This permission is known as foreign filing permission and is required to be submitted by the applicant to the Indian patent office on Form 25, “On application for permission for applying patent outside India under section 39 and rule 71(1)”. The fee for submitting Form 25 is INR 1600 for natural persons, start-ups, small entities or educational institutions and INR 8000 for large entities. There is a 10% additional fee which is applicable for filing in physical mode. The details required for such a form include applicant details, inventor details, and the reason for which the applicant is seeking the foreign filing license. Along with the Form 25, the applicant is required to submit the details of the invention in the form of a complete specification and the drawings enabling the Controller to review the invention in light of subject matter relevant to defence purpose or atomic energy, if any, which the applicant is planning to file in the foreign country.
The Controller usually takes approximately 21 days of time to examine and provide his approval for the request. However, if the invention is relevant for defence purposes or related to atomic energy, the Controller will not grant permission to file patent in a foreign country without the prior consent of the Central Government of India. In case of inventions relating to defence or atomic energy, a period of 21 days shall be counted from the date of the receipt of clarification/consent from the central government.
It is interesting to note that if the invention is relevant for defence purpose or atomic energy, the Controller shall not grant permission to file patent in foreign country without the prior consent of the Central Government. 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.
Non-compliance with provision of Section 39
As per section 40 of The Patents Act, an application shall be deemed abandoned if contravention of section 39 is found.
Further, as per section 118, violation of directions given under section 35 or contravention of section 39 may result in imprisonment for 2 years or payment of a fine or both.
Conclusion
If the applicant is a resident of India and wishes to file an application in a foreign country, the applicant can either file the application in India and wait for 6 weeks to subsequently file in the required foreign country or the applicant can take a Foreign Filing permission from Indian Patent Office and file directly at the respective foreign country without filing in India.
Author: Dharini Dinesh
Please contact us at info@origiin.com to know more about our services (Patent, Trademark, Copyright, Contract, IP Licensing, M&A of companies)
Subscribe to YouTube Channel HERE
Join LinkedIn Group: Innovation & IPR
WhatsApp: +91 74838 06607
