With globalization and rapid advancement of technology, cross-border trade of goods, services, technology, information, investment flow etc. have increased. With the above, Research and Development (R&D) of products are increasingly becoming multidisciplinary and more across geographical borders. These collaborations lead to amazing inventions which may become useful in one or more jurisdictions. As known, inventors/applicants have to file patent applications in each jurisdiction to protect their inventions in respective country. However, at times, an inventor/applicant may not feel the need to protect his/her invention in their origin country for a variety of reasons but wish to file patent application in other countries.

The reasons may include less or no market potential for invention in India, invention falling under a non-patentable subject matter in India and presence of R&D in more than one country. Such inventors/applicants must take permission from their origin country patent office to file patent application in other countries. To give an example, consider an Indian inventor (resident) who conceived an invention/idea and wishes to file a patent application in one or more foreign countries but does not wish to file the patent application in India. In such a scenario, the Indian inventor/resident must take foreign filing licence from Indian Patent Office (IPO) and file the patent application in one or more foreign countries.

What is Foreign Filing Licence?

When an inventor or a company, who is ordinarily residing in India, wishes to file a patent application in a country other than India, it is necessary to obtain a FFL from the IPO. The policy reasons for requiring a FFL are typically aimed at monitoring and preventing exportation of inventions pertaining to defence and atomic energy.
As per the rules, the controller shall dispose the FFL request within 3 weeks or 21 days from the date of applying for the FFL.

Why is foreign filing licence required?

A foreign filing licence represents permission from a particular country’s patent office for an applicant to seek patent protection in a country outside of the inventor’s or invention’s country. According to the World Intellectual Property Organization (WIPO), there are currently 29 contracting countries, India being one among them have such filing requirement.
In India, resident inventors are required to obtain permission from IPO to either file or cause to file a patent application outside India. The applicant may file a direct patent filing in a foreign country or even file a direct Patent Corporation Treaty (PCT) application.
Further, if an applicant has filed a patent application in India, and wishes to file a patent application in other countries within 6 weeks from filing of the Indian patent application, then also Indian applicant/resident shall apply for FFL. However, if the applicant wishes to file the foreign application after six weeks from filing Indian patent application, then there is no need to file a request for FFL .

What does the Law say?

Section 39 of Indian Patents Act reads:
(1) No person resident in India shall, except under the authority of a written permit sought in the manner prescribed and granted by or on behalf of the Controller, make or cause to be made any application outside India for the grant of a patent for an invention unless—
(a) an application for a patent for the same invention has been made in India, not less than six weeks before the application outside India; and
(b) Either no direction has been given under sub-section (1) of section 35 in relation to the application in India, or all such directions have been revoked.
(2) The Controller shall dispose of every such application within such period as may be prescribed: Provided that if the invention is relevant for defence purpose or atomic energy, the Controller shall not grant permit without the prior consent of the Central Government.
(3) 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.”

Who is an Indian Resident?

As per Section 39, a foreign filing licence is required only if the person who makes a patent application or causes another to make a patent application is a resident in India at the time of filing the application. Residential status alone is significant and nationality of the person is not significant. The term “resident” is however not defined within the Act. The only statute that refers to residential status is the Indian Income-tax Act, 1961.
According to Section 6 of the Income-tax Act, an individual is said to be resident in India if:
I. He is in that year (referred to as previous year, which commences from 1st April of a year and ends on 31st March of the next year) been in India for a period or periods amounting in all to 182 days or more; or
II. He has within the preceding four years (April-March years) been in India for a period or periods in all amounting to 365 days or more and for 60 days or more in that year.
Every Indian company (registered under Companies Act, 1956) and every other company the control and management of whose affairs was situated wholly within India in that previous year is a resident of India.

What are the foreign filing licence requirements?

For filing a request for FFL, a brief description of the invention is required. The brief description should sufficiently disclose the invention underlying the concept known to the applicant at the time of making the request. The brief description of the invention is required by the IPO to sufficiently assess whether the invention relates to atomic energy or defence technology.

What are the documents to file a request for foreign filing licence?

• Name(s), address(es) and nationality of the inventor(s) who are ‘resident in India’.
• Title of the invention with disclosure including drawings, if any
• Names of the co-inventors who are not resident in India.
• Name and address of the Applicant, in case rights have been assigned to an applicant.
• The name of the country/countries in which the application is expected to be filed.
• Reason for making such an application.
• Power of Attorney (POA) from the inventor(s) or the applicant who is/are resident in India, where a patent agent is appointed to represent them.
• What are the Implications of contravention of foreign filing licence?
• When the IPO or a third party finds out the violation of the FFL requirement, there can be serious consequences for the inventors as well as applicants.
• Indian patent application may get abandoned and the patent granted if any may be revoked.
• There can be an imprisonment for a term up to two years, or fine, or both.
• Therefore, it is important for patent applicants to know the law of land and comply with it beforehand to avoid any loss of rights and also unwanted criminal and financial liability against inventors.

Authors: Ranjan and Chandrasekhar Raju