Residents not to apply for Patents outside India without prior permission.
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has been given under sub-section (1) of section 35 in relation to the application in India, or all such directions have been revoked.
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.
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.
Section 39 or provision of foreign filing license was initiated for the first time by the Patents (Amendment) Act, 2002 which later on was amended by the PATENTS (AMENDMENT) ACT, 2005 which improved the scope of the section 39 which includes "any invention" and not just confined to the inventions related to atomic energy and defense.
Section 39 of the Indian Patents Act as amended necessitates an Applicant to obtain a Foreign Filing License (FFL) for any invention before applying for a Patent for a technology in a foreign country, without applying for a corresponding Patent in India. The requirement to apply for a FFL depends on the origin and inception of the invention and is independent on the Individuals citizenship. If the invention is created or conceived in India then the Applicant must have to obtain foreign filing license before filing it abroad.
The consequences of contravention of Section 39 of Indian Patents act is being given in Section 40 of the Indian Patents Act which says about the liability for contravention of section 35 or section 39 where if any person makes or causes to be made an application for grant of a Patent outside India in contravention of section 39 then the application for Patent under this act shall be deemed to have been abandoned and the Patent granted, If any, shall be liable to be revoked under section 64. Moreover as mentioned in section 118 of the Indian Patents Act which says about the contravention of secrecy provisions relating to certain inventions where if any person fails to comply with any direction given under section 35 or causes to be made an application for grant of a Patent in contravention of section 39 shall be punishable with imprisonment for a term which may extended to two years, or with fine, or with both.
Therefore, knowing the provision is of highest importance, especially in today's scenarios where provisions such as technology transfer is on Pace.
Disclaimer: The sole purpose of this article is for information only; and not to be construed for any legal advice. The article was drafted, based on the information considered upto 19th December, 2012.