Filing of Patent Outside India

The world has already been riding in the next wave of globalization. International trade and commerce have been exceeding exponentially and business enterprises have a presence in multiple jurisdictions. The countries have legal impositions related to trade practices and for exporting and sharing technical inventions outside its territory. India has also put in place statutory compliances which restrict the filing of patent applications to other jurisdictions.

Foreign Filing License (FFL), is a permission granted by the Indian Patent Office (IPO), on a request by the applicant, to protect the inventions internationally.

The Government of India, through Section 39 of the Indian Patents Act, 1970, mandates person residing in India while developing a particular invention, to obtain FFL from IPO, under the following situations:

• when a patent application has to be first filed in jurisdictions other than India; and

• when a patent application has to be filed in other jurisdictions, before the expiry of 6 months from the Indian application filing date.

Such requests are generally disposed of within two weeks by the Patent Offices, if statutory requirements have been met with, by the applicant. The applicant has to provide invention disclosure along with the FFL request.

The main purpose of FFL is to scrutinize the invention, to determine in the case invention is related to strategically sensitive technologies, such as defense or/and atomic energy, which are of national interest. Accordingly, the IPO approves or disapproves of FFL requests. Ignoring the FFL requirements, in certain situations, may cause serious damage, which may involve penalty and punishment.

Like India, several other major jurisdictions, such as USA, China, Singapore, France, Italy, United Kingdom, Belgium, Czech Republic, Denmark, Finland, Germany, Israel, Korea, Luxembourg, Netherlands, Slovak Republic and Sweden, also have filing restrictions and it is required to seek FFL. The World Intellectual Property Organization has abridged the FFL requirements for PCT contracting states.

Bhawna Sharma has been practicing patents and designs over 10 years and has particular expertise in drafting, securing, protecting and enforcing patent and design rights across multiple jurisdictions. She strongly focuses on the business needs of clients and recognized by her clients for providing legal solutions with due emphasis on practical and commercial aspects. Her clients include Fortune 500 companies and world’s most esteemed corporations, Indian R&D sector and inventors, Medium and Small Scale Enterprises. Prior to entering into IPR, Bhawna worked as lecturer.

Copyright Singhania & Partners LLP

Disclaimer: Every effort has been made to ensure the accuracy of this publication at the time it was written. It is not intended to provide legal advice or suggest a guaranteed outcome as individual situations will differ and the law may have changed since publication. Readers considering legal action should consult with an experienced lawyer to understand current laws they may affect a case. For specific technical or legal advice on the information provided and related topics, please contact the author.

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