Under Section 39 of the Indian Patents Act, 1970, a resident of India is required to file an invention first in India. Only after a period of six weeks from the date of such filing may a corresponding application be filed outside India. Alternatively, the resident may submit Form-25 with the prescribed fee, requesting the Controller for a Foreign Filing Licence (FFL), and proceed with foreign filing upon grant of the licence. Where the invention is found to be relevant for defence purposes or atomic energy \u2014 whether from the ordinary application or from the specification accompanying Form-25 \u2014 the Controller may decline to permit overseas filing. Non-compliance is a punishable offence under section 118.<\/p>\n
Section 39 was omitted from the Act by the Patents (Amendment) Act, 1999, which permitted Indian residents to file applications in India and abroad simultaneously. The provision was reintroduced by the Patents (Amendment) Act, 2002, reinstating the prohibition on residents applying abroad without prior permission or first filing in India. Minor textual modifications were made by the Patents (Amendment) Act, 2005.<\/p>\n
A Foreign Filing Licence is always required for ordinary applications first filed in India. The question arises whether an FFL is equally necessary when a PCT application is filed through the Indian Patent Office as a receiving office. The answer is affirmative in both scenarios \u2014 whether the PCT application is filed at WIPO or routed through the Indian Patent Office.<\/p>\n
The Indian Patent Office, when acting as a receiving office, does not constitute a filing for India. It receives the application, allots a filing date, and transmits copies to the concerned international office. A PCT application confers the same priority on all designated states and is not treated as an Indian filing unless and until it enters the national phase after 31 months from the international filing date. Accordingly, prior to a PCT filing through the Indian Patent Office, either an ordinary application must have been filed in India with six weeks having elapsed, or Form-25 must be submitted and the FFL awaited.<\/p>\n
This issue arose in proceedings before the High Court of Delhi. The petitioner, Puneeth Kaushik, filed a PCT application at the Indian Patent Office in New Delhi through e-filing, accompanied by Form-25 and the necessary documents. However, the petitioner was unable to secure that date as the filing date. The Indian Patent Office treated Form-25 as requiring prior consideration and allotted the filing date only after the FFL was granted, since the PCT application constituted an international filing.<\/p>\n
This article is for general information and does not constitute legal advice. Readers should consult a qualified attorney before acting on any matter discussed here.<\/p>\n","protected":false},"excerpt":{"rendered":"
Filing a PCT application in India demands strict adherence to Section 39 of the Patents Act, including obtaining a Foreign Filing License. This post explains the procedural requirements and highlights the legal consequences of non-compliance in a structured, analytical manner.<\/p>\n","protected":false},"author":2,"featured_media":0,"comment_status":"closed","ping_status":"closed","sticky":false,"template":"","format":"standard","meta":{"iawp_total_views":63,"footnotes":""},"categories":[6,14],"tags":[12897,42,422,7219,753,840,7218,1121],"class_list":["post-25624","post","type-post","status-publish","format-standard","hentry","category-intellectual-property","category-patents","tag-foreign-filing-licence","tag-indian-patent-office","tag-indian-patents-act","tag-patent-filing-requirements","tag-patent-law-india","tag-pct-application","tag-section-39","tag-wipo"],"_links":{"self":[{"href":"https:\/\/www.bananaip.com\/intellepedia\/wp-json\/wp\/v2\/posts\/25624","targetHints":{"allow":["GET"]}}],"collection":[{"href":"https:\/\/www.bananaip.com\/intellepedia\/wp-json\/wp\/v2\/posts"}],"about":[{"href":"https:\/\/www.bananaip.com\/intellepedia\/wp-json\/wp\/v2\/types\/post"}],"author":[{"embeddable":true,"href":"https:\/\/www.bananaip.com\/intellepedia\/wp-json\/wp\/v2\/users\/2"}],"replies":[{"embeddable":true,"href":"https:\/\/www.bananaip.com\/intellepedia\/wp-json\/wp\/v2\/comments?post=25624"}],"version-history":[{"count":3,"href":"https:\/\/www.bananaip.com\/intellepedia\/wp-json\/wp\/v2\/posts\/25624\/revisions"}],"predecessor-version":[{"id":149814,"href":"https:\/\/www.bananaip.com\/intellepedia\/wp-json\/wp\/v2\/posts\/25624\/revisions\/149814"}],"wp:attachment":[{"href":"https:\/\/www.bananaip.com\/intellepedia\/wp-json\/wp\/v2\/media?parent=25624"}],"wp:term":[{"taxonomy":"category","embeddable":true,"href":"https:\/\/www.bananaip.com\/intellepedia\/wp-json\/wp\/v2\/categories?post=25624"},{"taxonomy":"post_tag","embeddable":true,"href":"https:\/\/www.bananaip.com\/intellepedia\/wp-json\/wp\/v2\/tags?post=25624"}],"curies":[{"name":"wp","href":"https:\/\/api.w.org\/{rel}","templated":true}]}}