An Overview on the Patent Foreign filing license

Patent Foreign filing license is a license that the patentee gets when the applicant or any company decides to file an application for patent in a foreign country or the applicant has decided to obtain a license by applying an international application under Patent Cooperation Treaty, without filing the patent application in India.

In India, the patent law does not permit the patent applicant to file the patent applications outside the territory of India unless the same patent application is first filed in India. The authority to give Foreign Filing License is the Indian Patent Office and it is obtained through a written permission. Scroll down to check more information reagrading Patent Foreign Filing License.

Statutory Law concerning the Foreign Filing License

Under section 39 of the Indian Patents Act, 1970^[1] it mentions about obtaining of Foreign Filing License or FFL for Patent in India. The legal condition says that it is mandatory for the inventor of the patent to obtain a Patent Foreign Filing License (FFL) from the Indian Patent Office (IPO) where the inventor who is resident in India but has decided to file a patent application in the foreign country.

• The Indian resident cannot without the written authority prescribe on the behalf of Controller make any application for grant of patent for his inventive work.
• He can file the application directly only if he has made the same application for the similar invention in India and the application was made in not less than 6 weeks just before applying outside India.
• While he was making an application in India, either no direction was given to him on the same or the direction given have been revoked.
• The controller shall within the prescribed time period dispose off the application or if the application for grant of patent is with regard to invention concerned to atomic energy or defense purpose then it is compulsory for the Controller to take the prior approval of Central Government.

Rule 71 – The permission for making foreign filing license application outside India under section 39

• The request for seeking permission for obtaining the patent foreign filing license application outside India is required to be made in the Form 25.
• The time period during which the Controller can fulfill the request made under sub-rule (1), in general shall be within a period of twenty one days from the date when such request is filed but the same time period shall not apply while the case is on inventions relating to atomic energy and defense applications.

What are the Viable Reasons to Apply for Foreign Filing License?

The reasons behind applying for patent foreign filing license

Requirements in Obtaining Patent Foreign Filing License

It is a necessary requirement to give a brief description of the invention before filing a request for patent foreign filing license that should be given by the applicant in his application. It is significant for the applicant to mention the complete details because the patent applications that contain the sensitive technologies that could be prejudicial and important to the defence of India are forbidden for patent foreign filing license.

The application must contain the brief description on the invention and the essential basic concept behind the invention that the applicant is aware about during the time of applying for the request for obtaining the patent foreign filing license. Generally, the applicant must have these important documents before filing a request for the foreign filing license as has been mentioned below:

• The request for the application is made in the Form 25 in which the IPO grants permission within twenty-one days from the date of making the above-mentioned request.
• Name, address, contact details and the nationality of the inventor or any other inventor who are Indian resident. 
• Power of Attorney (POA)- Where an patent agent is appointed to represent then the Power of Attorney (POA) from the inventor must be given or from the applicant who are the Indian resident.
• The title of the invention with the description and disclosure which shall include the drawings if any.
• Names of the co-inventors who are NRI.
• In case where the rights have been assigned to an applicant then provide with the Name, address and contact details of that Applicant,
• The name of country should be mentioned for which the patent foreign filing license is obtained where the rights has been given to an applicant. 
• The application ought to mention all the reasons for making such application.
• Form 28 where the application is from a Small Entity.

Remedies against Rejection of Foreign Filing License

There are certain remedies against the rejection of the Foreign filing License, which are as given as follows:-

FFL Rejected and No Secrecy Direction Is Imposed

• The only remedy is to file a writ petition before the High Court to challenge the rejection order. A review request of the order of the Controller rejecting foreign filing license can be made under Section 77 of the Act.
• The applicant has a choice to file the patent application in India together with a provisional or complete specification.
• As per Section 39(1) (a) and (b) where no secrecy direction is imposed after 6 weeks of filing the application then the Applicant can file the application in the foreign countries.

FFL Rejected and Secrecy Direction is Imposed

• When the Controller rejects the patent foreign filing license request and has imposed secrecy directions on the invention, then the invention shall not be filed outside India nor shall be permitted to publish.
• The alternative option for the applicant is to file an Indian Patent Application with the IPO to secure a priority date.
• After every six months, The Central Government shall review the Controller’s secrecy direction.

Conclusion

There are various reasons for which the applicant feels the need to apply for Foreign Filing License and the need to apply for patent license outside India. But it is important that the filing should comply with the Indian laws and must not be derogatory to the nation’s interest.

Considering this, the India Patent office is earnestly meeting the twenty-one day deadline to check that the application has satisfied all the provisions of the Indian statute and thus, only then permits such foreign filing license to the inventor.

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