Foreign Filing Permissions In India

21 November 2012

Ideas have long crossed national borders. It is not unusual to have minds from different lands come together to contribute to a new idea. Institutions stress on a diversity of cultures in solving a perplexing riddle at workplaces. There are numerous instances of parts or modules of a great inventions being made in different jurisdictions. This mixture of minds builds a great mind machine. This machine works wonders but often comes across the “national security” hurdle!

Many countries have in their intellectual property laws specified explicit need to reveal any invention made by a person resident in that country. While the laws of different countries differ with respect to the definition of “resident” for the purpose of evaluating the land which gave rise to the idea the basis for all remains almost the same: to avoid revelation of any invention which, if revealed to the world, would cause a national threat.

India has increasingly felt the need to protect such IP through its increased setup of innovation centers of world technology leaders in India. In the amendment to the Patents Act 1970 brought about in 2002, a section was added dealing with the prohibition on applying for a patent outside India with respect to specific inventions. Though the section then stressed revelation or taking permission only on invention related to defense purpose, the further amendment brought about in 2005 changed this further to engulf any invention, thereby letting Indian authorities decide on whether an invention was related to defense.

This would also contribute to an increase in revenue to the Patent Office, since all the inventions having contributions of inventors in India would require a filing in India or a foreign filing permission. Further, this would help in keeping some information with the intellectual property offices on use of minds in India by the companies or entities abroad.

The laws in the United States relating to foreign filing licenses are listed in 35 USC 184, applying restrictions on “invention made in this country” as against laws in UK or India which decide this on basis of “residency” of the applicant or the inventor.

In India the section governing this provision is stated in the Patents Act, 1970 in section 39, which reads:

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 a person has first filed an application for protection in a country outside India resident outside India.

Prima facie, the section may seem to imply that a foreign entity being an applicant using an inventor in India may not come under the purview of the section. However, lawmakers rightly specified the term “make or cause to be made,” thereby extending the provision to include any such export of ideas from resident country.

There are various scenarios which patent managers of organisations involving minds in different countries could come across:

• applicant being a foreign company, one of the inventors being Indian resident.

• applicant being an Indian company, one of the inventors being a foreign resident.

Both such scenarios would require an application being filed in India or a permission to apply in a country outside being taken from the Patent Office.

There is, however, no definition of the term “residency” provided under the Indian Patents Act. The Income Tax Act may therefore be needed to be referred to to decide on the residency status of a person.

Obtaining “Permission”

The request for permission for making a patent application outside India including a PCT international application should be made in Form 25 with the prescribed fee of Rs1,000 (US$20) for a natural person and Rs4,000 for entities other than natural person(s) either alone or jointly with natural person(s). The Controller shall dispose the said request ordinarily within a period of 21 days from the date of filing of such request. A brief description of the invention is accompanied with such request.

Penalty

Section 118 dictates penal provisions relating to contravention of secrecy provisions. The penalty is imprisonment up to 2 years or a fine or both. The amount of the fine is not specified.

Krishna & Saurastri

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Mumbai 400 001, India

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