A Comprehensive Guide on Foreign Filing Licenses with Case Law Insights

Among various provisions of the Indian Patents Act, 1970, Section 39 stands out as a significant regulation for residents seeking to file patents outside India. This article delves into the intricacies of Section 39, its implications, and relevant case law, providing insights for legal professionals and innovators alike.

Section 39 explicitly states that no resident of India shall apply for a patent outside the country without obtaining prior permission from the Controller of Patents. The conditions for such applications are as follows:

1. Prior Application Requirement: An application must first be filed in India at least six weeks before seeking to file abroad.
2. No Secrecy Directions: The Controller must not have issued any secrecy directions regarding the Indian application under Section 35, or all such directions must have been revoked.

This provision is crucial for maintaining national security and ensuring that sensitive inventions, particularly those related to defense or atomic energy, are not disclosed without appropriate oversight.

Permit Application Process

To apply for a foreign filing license (FFL), residents must submit a request using Form 25 along with necessary documentation, including:

• A brief description of the invention.
• Authority from all inventors residing in India.
• Details of any non-resident inventors involved.

The Controller is mandated to process this request within 21 days, although this may vary for inventions related to defense or atomic energy, which require additional approvals from the Central Government.

Consequences of Non-Compliance

Failing to comply with Section 39 can lead to severe repercussions:

• The application filed abroad may be deemed abandoned.
• Any granted patent could be revoked under Section 64.
• Violators may face penalties under Section 118.

Relevant Judgements

1. Puneet Kaushik & Anr. v. Union of India

In this pivotal case decided on December 19, 2014, the Delhi High Court ruled that an international application filed under the Patent Cooperation Treaty (PCT) is considered a foreign application. Therefore, it cannot be filed until a foreign filing license is obtained under Section 39. The court emphasized that compliance with this requirement is mandatory and reiterated that an application made without prior permission would not be valid.

2. Selfdot Technologies (OPC) Pvt. Ltd. v. Controller General of Patents

On November 28, 2023, the Delhi High Court ruled that a technical breach of Section 39 does not constitute a contravention that would lead to abandonment of a patent application. The court highlighted that the appellant had acted in good faith when filing a continuation-in-part (CIP) application abroad without first obtaining the necessary foreign filing license.

3. Shiju Jacob v. Union of India

In this ruling, the Delhi High Court reaffirmed that residents must seek permission for foreign filings and cannot retroactively request a foreign filing license after submitting an application abroad. The court emphasized that failure to comply with Section 39 could lead to severe penalties, including abandonment of applications and potential revocation of patents.

Practical Implications for Innovators

For inventors and MNCs operating in India, understanding Section 39 is vital for several reasons:

• Strategic Planning: Organizations must plan their patent strategies carefully, ensuring compliance with domestic regulations before seeking international protection.
• Risk Management: Legal teams should establish robust processes to avoid inadvertent violations that could jeopardize patent rights.

Conclusion

Section 39 of the Indian Patents Act plays a pivotal role in regulating how Indian residents approach international patent applications. By requiring prior permission from the Controller and ensuring compliance with national security protocols, this provision safeguards India's interests while promoting innovation. As legal professionals and businesses navigate this complex landscape, staying informed about recent judgments and procedural requirements will be essential for effective patent management.