Foreign filing license of patent is when an applicant or a company may come to a decision to file a patent application in a foreign country or decides to obtain a license on an international application under Patent Cooperation Treaty, without filing a patent application in India due to different reasons.
Indian patent law does not allow the applicant to file patent applications outside the Indian Territory unless the same patent application is filed first in India. The Indian Patent Office is the authority to give Foreign Filing License which is obtained through a written permission.
Statutory Law with Respect To Foreign Filing License
Under section 39 of the Indian Patents Act, 1970 it provides about obtaining of Foreign Filing License or FFL for Patent in India. The legal provision says that it is obligatory for the inventor to obtain a Foreign Filing License (FFL) from the Indian Patent Office (IPO) when the inventor resident in India decides to file a patent application in the foreign country.
- No Indian resident can without the written authority prescribed on behalf of the Controller make an application for grant of patent for his invention.
- He can file directly only if he has made an application for the same invention in India and the application was made not less than 6 weeks before applying outside India.
- Either on his application in India no direction was given to him or the direction have been revoked.
- The controller shall dispose of the application within the prescribed time period or if the application for grant of patent is for invention relevant to defence purpose or atomic energy then it is mandatory for the Controller to take Central Government’s prior approval.
Rule 71 – The permission for making patent application outside India under section 39
- The request for seeking permission for obtaining foreign filing patent license application outside India shall be made in Form 25.
- The time duration within which the Controller can dispose of the request made under sub-rule (1), shall normally be within a period of twenty one days from the date of filing of such request but the same shall not apply in case of inventions relating to defence and atomic energy applications.
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What are the Possible Reasons to Apply for Foreign Filing License Patent?
Requirements to Obtain Foreign Filing License
It is a necessary requirement before filing a request for foreign filing license that a brief description of the invention is given by the applicant in his application. It is important to mention the details because the patent applications that concerns sensitive technologies that could be prejudicial to the defence of India are prohibited for foreign filing license.
The brief description in the application must adequately cover the invention and the fundamental basic inventive concept that the applicant is aware about while at the time of applying for the request to obtain foreign filing license. In general, the applicant must have these requisite documents to file a request for the foreign filing license as has been given below:
- The request is made in Form 25 in which within 21 days the IPO grants permission from the date of making the aforesaid request.
- Name, address and the nationality of the inventor or the inventors who are India resident.
- Where an agent of patent is appointed to represent then Power of Attorney (POA) from the inventor or the applicant who are the Indian resident.
- The title of the invention with description and disclosure which shall include drawings if any.
- Names of the co-inventors who are non resident of India (NRI).
- In case where the rights have been assigned to an applicant then provide with the Name and address of that Applicant,
- The name of the country for which the foreign filing license is obtained in case the rights have been assigned to an applicant.
- The application should mention the reasons for making such application.
- Form 28 where the applicant is a Small Entity.
What are the Consequences of contravention of Section 39?
In case, an India resident who does not obtain the foreign filing license before filing application in the foreign country then as per Sections 40 and 118 of the Indian Patents Act, 1970 any Indian application that the applicant may file later shall be rejected in addition to that he shall be liable for penalty.
Thus, Section 39 of the Act is very imperative since MNCs have already established many R&D centres in India and there are numerous inventions arising from those R&D centres which shall first be filed in a foreign country.
Remedies against Rejection of Foreign Filing License
There are few remedies against the rejection of the Foreign filing License, which are as follows:-
FFL Rejected and No Secrecy Direction Is Imposed
- A review request of such an order of the Controller rejecting foreign filing license can be made under Section 77 of the Act. Then there is no right for further appeal against the rejection of FFL order by the Controller.
- The only available remedy is to file a writ petition before the High Court to challenge the Controller’s order rejecting an FFL. The High Court shall be in the jurisdiction where the office of the Controller is situated.
- In addition to this the applicant has the choice to file a patent application in India along with a complete or provisional specification.
- If no secrecy direction is imposed on the application after six weeks of filing the application as according to Section 39(1) (a) and (b) then the Applicant can file the application in foreign countries.
- Therefore, the complete or provisional specification will be considered on filing the patent application in India, and if it is established that the invention in the application is not related with the defence purpose, then the Controller may not enforce secrecy direction under Section 35(1). By that the Applicant will be able to apply for foreign filing license application in the foreign country.
FFL Rejected and Secrecy Direction is Imposed
- In this case when the Controller rejects the foreign filing license request and has as well imposed secrecy directions on the invention, the invention cannot be filed outside India nor shall be allowed to publish.
- In such a condition the existing alternative option for the applicant is to file an Indian Patent Application which can be either Provisional or Complete Specification with the IPO to secure a priority date.
- The Central Government shall review the secrecy direction issued by the Controller after every six months.
- Even the Applicant can anytime make such review request after the issuance of secrecy directions and the Controller shall if deems fit can review the same.
Foreign Filing License is a license obtained due to various required reasons by which the applicant feels the need to apply for patent license outside India. But it is equally important that such filing should conform to the Indian laws and should not be derogatory to the interest of nation.
Considering this, the India Patent office is diligently meeting the twenty-one day deadline to check that the application has fulfilled all the provisions of the Indian statute and thus, only then permits such foreign filing license to the inventor.
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