Foreign Filing Permission

1Section 39 of the Patents Act restricts persons residing in India from making any application outside India for the grant of a patent for an invention. A resident may make an application outside India under the authority of a written permit sought for in Form 25 and granted by the Controller if two conditions are satisfied, ie, (1) 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 (2) either no direction has been given under sub-s (1) of s 35 in relation to the application in India, or all such directions have been revoked. (Patents Rules 2003, r 71(1).)

2The Controller shall dispose of every such application within 21 days, except in the case of inventions relating to defence and atomic energy applications. (Patents Act 1970, s 39(2); Patents Rules 2003, r 71(2).) In case the invention is relevant for defence purpose or atomic energy, the Controller shall not grant permit without the prior consent of the Central Government. Section 39 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.

3In the case of an application for a patent, any person who contravenes a direction as to secrecy given by the Controller under s 35 or makes an application for grant of a patent outside India in contravention of s 39, the application for patent under the Patents Act shall be deemed to have been abandoned and if the patent is granted it shall be liable for revocation under s 64(1)(n). (Ibid, s 40.)

4In Selfdot Technologies (OPC) v Controller General of Patents, Designs & Trade Marks (2023) the Madras High Court held of the amendment of s 39 in 2005 that “By virtue of the amendment, the provision has been made applicable to inventions in all fields, provided the applicant for the grant of patent is a resident of India.” The Court held that “On closely examining Section 39, the provision does not expressly refer to either patents of addition or to divisional applications.” (para 6) It held that “there is ambiguity in Section 39 of the Patents Act, and that interpretation thereof is necessary to determine whether it applies to patents of addition and divisional applications pursuant to the first filing of the application for the parent invention in India.” (para 9) Of a patent of addition, it held that “The nature of a patent of addition, i.e. involving an improvement in or modification of the parent or main invention, would invariably require additional disclosures to those contained in the complete specification of the main invention.” The Court further held that “the reasoning of the respondent in the impugned order in support of the conclusion that a patent of addition stands on a different footing from a divisional application is sound and cannot be faulted.” (para 12)

5In Selfdot the Court held that “the words ‘contravention of Section 39’ in Section 40 are intended to apply to situations where there was a clear breach of the written permit requirement in respect of inventions in all fields” (para 13) and that “A legal fiction, such as the fiction incorporated in Section 40, is intended to serve a particular purpose. In this case, the purpose is to prescribe the consequences of a clear breach of Section 39, as opposed to procedural irregularities, and the scope thereof should not be extended beyond such purpose.” (para 14) It held that “the breach committed by the appellant would, at worst, qualify as a technical breach but would not trigger the deemed abandonment under Section 40 of the Patents Act.” (para 14)

6The directions given and orders passed under ch VII are not appealable. All orders of the Controller giving directions as to secrecy as well as all orders of the Central Government shall be final and shall not be called in question in any court on any ground. (Ibid, s 41.) Nothing in the Patents Act shall prevent the Controller from making disclosures to the Central Government for the purposes of ch VII. (Ibid, s 42.)