Under Section 39 of the Indian Patents Act, 1970, an Indian resident is required to file his invention first in India, and only after a period of six weeks from the date of filing, a filing could be done for the same invention outside India. Alternatively, the Indian resident could file Form-25 with prescribed fee, requesting the Controller for a Foreign Filing License (FFL), and can go ahead with such filling after obtaining the license . If the invention is proved to be relevant for defence purpose or atomic energy, either from the ordinary application or from the details of the specification attached with Form-25, the Controller may not permit it to be filed abroad. Non-compliance of Section 39 is a punishable offence under section 118.
An interesting fact about Section 39 is that it was omitted from the Act under the Patents (Amendment) Act, 1999 thereby enabling the Indian residents to file the applications in and outside India simultaneously. Later this Section was reintroduced into the Act, by way of the Patents (Amendment) Act, 2002, thereby prohibiting the Indian residents to apply abroad without prior permission or first filing in India. In the Patents (Amendment) Act, 2005, slight modifications were made to the text.
Foreign Filling License is always essential in the case of ordinary applications first filed in India. However, the real question arises whether FFL is an essential for filing a PCT Application. Yes, in case it is being filed at WIPO. But is it not required in case the application is being filed in India? The answer to the question is, yes, it is required in the second instance too.
Always keep in mind that filing of a PCT application in India is never a filing done for India. India just acts as a transmitting office, where it receives the application, allots it a filing date and then transmits the copies to its concerned office. As a PCT application gives the same priority to all its designated states, it should not be considered as an Indian filing unless it enters its National phase after 31 months of filing. So, while filing a PCT Application, be aware of the fact that either an ordinary application has to be filed prior to it and then wait for six weeks, or file form-25 with the prescribed fee, and wait till the requested FFL is granted.
So ensure that you meet all these requirements before making your PCT filing in India. Otherwise, you may lose your International filing date.
Reference: This blog is in reference to the case filed in the High Court of Delhi against Union of India (Respondent) by Mr. Puneeth Kaushik and ANR (Petitioner). Mr. Puneeth had filed a PCT Application at IPO New Delhi through e-filing on 14th September 2012 along with the necessary documents including form-25, but could not get that as the filing date.The PCT application being an International filing, the IPO considered Form-25 first and only after the grant of the FFL was the filing date allotted.
This post has been authored by Sadhana Gannavarapu.