According to Section 39 of The Patent Act, 1970, if an Indian resident wish to file a patent application in a foreign country without filing it in India, then it is a mandatory requirement for a patent applicant to obtain a foreign filing licence from the Indian Patent Office.
A Foreign Filing Licence (FFL) is written permission obtained by the patent applicant from the Indian Patent Office to file a patent application in a foreign country without filing in India first.
The motive behind FFL can be understood as a measure to keep a check on all inventions being exported to a different jurisdiction especially related to defence or atomic energy inventions. These inventions can be of great importance and may be detrimental to country safety and security if exported.
Possible reason for direct foreign filing:
a) subject matter of invention falls under non-patentable inventions in India
b) the invented product and/or process has less scope or demand in Indian market
Section 39 of The Patent Act, 1970 is recited herein below:
Residents not to apply for patents outside India without prior permission—
(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has been given under sub-section (1) of section 35 in relation to the application in India, or all such directions have been revoked.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.
About the Author: Mr. Shashi Kant Verma, Patent Associate at Khurana & Khurana, Advocates and IP Attorneys and can be reached at: email@example.com.