Permission to File a Patent Application Outside India

Summary

This post outlines the mandatory legal requirements under Indian Patent law for residents who wish to file patent applications outside India. It explains that any Indian resident seeking to file directly in a foreign jurisdiction or as an international application under the PCT must first obtain permission from the Indian Patent Office, as per section 39 of the Indian Patents Act, 1970. The provision applies based on residential status, not nationality, and offers two procedural options for Indian residents. The article also details the consequences of non-compliance, including abandonment, revocation, and penal action. This ensures that inventions with national interest are appropriately monitored by Indian authorities.

This post was first published on 16th July, 2014.

This piece of writing tries to convey an important requirement under the Indian Patent law for an applicant residing in India who wishes to file patent applications outside India, directly.

Any inventor or applicant is free to seek protection anywhere in the world. At times priority is given to a foreign country over India when there is less or no market potential to the invention in India or when the invention falls within the non-patentable subject matter in India. In India this privilege is not absolute, because it is necessary for any resident of India who is seeking protection directly in any foreign country or as an international application under PCT, without first filing a patent application in India, to obtain a permit or license from the Indian Patent Office. This mandatory requirement allows India to monitor all inventions in the interest of the nation.

Section 39 of the Indian Patents Act, 1970 deals with ‘Foreign Filing Permit’. This provision was first introduced by the Amendment Act, 2002 and was later amended in the year 2005. According to this provision, residential status alone is relevant and nationality of the person is not relevant.

For an Indian resident there are two ways to file outside India:

1. He may first file in India and wait for 6 weeks before applying in a foreign country.
2. He may directly seek permission from the Indian Patent office to file in any other country under section 39.

In case a resident contravenes to the provision of section 39, he is liable under section 40 and section 118 of Indian Patents Act, 1970. According to these provisions any subsequent applications by the applicant will be deemed abandoned and any patent granted to the applicant will be revoked under section 64. He shall also be punishable with imprisonment and fine.