Section 39 of the Indian Patents Act, prohibits the Indian inventor(s) to file first application for their invention outside India without obtaining necessary permission from the Indian Patent Office. The prohibitions of Section 39 are applicable both on direct filing in foreign country as well as on PCT International application as a first application.
Section 39: 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has been given under sub-section (1) of section 35 in relation to the application in India, or all such directions have been revoked.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.
Hence, there are two options to sought the permission from the Indian Patent Office :
(a) Either file a first (priority) application in India and after the expiry of six weeks, foreign applications claiming priority from said application can be filed: or
(b) File a formal request at the Indian Patent Office to issue the Foreign Filing Permit.
Who is considered as ‘Residents’
The Indian Patent Act does not clearly define the term “resident”, therefore, there is an ambiguity in the definition of the “resident”. To interpret the term ‘resident’, the definition given under the Income Tax Act is cited.
According to the Section 6(1) of the Income Tax Act, an individual is termed as a ‘Resident of India’ if he stays in India for the prescribed period during a fiscal year i.e. 1st April to 31st March, either for:
- 182 days or more; or
- Has been in India in the aggregate for 365 days or more in the previous 4 years.
Due to ambiguity in the definition of the term ‘resident’ provided in the Act, it is always advisable to obtain the permission for the Indian inventors working abroad, whenever there is any doubt about their nationality.
Procedure to obtain the Foreign Filing Permit
The request for Foreign Filing Permit is made on prescribed Form 25 and the Controller shall issue the permission within 21 days. However, it is required that all the necessary documents such as power of authority (originally executed), description to be filed in foreign country and necessary information required in the form 25 are submitted at the Indian Patent Office.
Rule 71: Permission for making patent application outside India under section 39.—
(1) The request for permission for making patent application outside India shall be made in Form 25.
(2) The Controller shall dispose of the request made under sub-rule (1) within a period of twenty-one days from the date of filing of such request:
Provided that in case of inventions relating to defence or atomic energy, the period of twenty-one days shall be counted from the date of receipt of consent from the Central Government.
Implication of contravention of Section 39
As per Section 40, if any person contravenes the directions given under Section 39, the patent application filed, if any, shall be deemed abandoned or any patent granted shall be revoked by the Controller.
Also Section 118 of the Patents Act has the provision of punishment with imprisonment for a’ term which may extend to two years, or with fine, or with both.
