Foreign filing license of Patents in India

Foreign Filing License comes into action if the inventor is an Indian citizen and chooses to directly apply for a patent in a foreign country without initial filing in India. The provisions regulating the Foreign Filing License are explained under sec. 39 of the Indian Patents Act, 1970.

What is a Foreign Filing License?

Foreign Filing License comes into action if the inventor is an Indian citizen and chooses to directly apply for a patent in a foreign country without initial filing in India. The provisions regulating the Foreign Filing License are explained in sec. 39 under the Indian Patents Act, 1970. 

What is the procedure to file a Foreign Filing License?

A person can acquire a Foreign filing license by applying to the Indian Patent Office, the patent application's invention.

The application is filed through Form 25. The Indian Patent Office grants protection within 21 days upon making the application. If the subject matter of the application is relevant to defence purposes and atomic energy, it shall not be submitted to the Indian Patent office.

Documents one must submit at the time of making the application:

• Form 25 duly filled and signed
• Declaration of the invention
• Name and address of the resident inventor(s)
• Name of the countries where the invention would be filed and the reason for making such an application.
• Name and address of the assignee.
• Name of the country where the patent application is expected to be filed after obtaining the Foreign Filing License (FFL).
• Power of Attorney from the inventor or person making the patent application.

Sec. 39 lays down the following conditions for filing:

• No resident of India shall, without the written permission sought from the Controller, cannot make any application outside India for the grant of a patent for an invention except if the application for a patent for the same invention has been made in India, at least six weeks before the application outside India.
• The Controller shall control all applications within such a period in the prescribed manner.
• This provision under this section does not apply to an invention that was first filed in a country outside India by a non-resident of India.

What are the reasons for a Foreign Filing License?

Patent applications securing sensitive technology that is prejudicial to the defence of India are denied a foreign filing license. Despite such a claim, the Indian resident applicants can file directly in a foreign country without authorization from the Indian Patent Office, considering the procedure is easier and trouble-free to file in foreign countries. 

The usual reasons for direct filing in a foreign country are:

• The invention assumes low or no market in India;
• The invention is not patentable in India.

The Foreign Filing License also safeguards national security. The Indian Patent Office requires the application to be filed by the resident inventors to obtain a foreign license.