International Patent Application

As per Section 39 of the Indian Patent Act, any inventor of India seeking for International patent are required to file the patent application initially in India. Upon patent application filing in India, the inventor can request for an International patent application within twelve months of the date from the filing of the first patent application. In this article, we look at the International Patent Application in detail. Know about

international patent protection scheme for MSMEs.

International Patent License(IPL)

International or Foreign filing license is written permission obtained from the Indian Patent Office. By granting a Foreign Filing License, the Indian Patent Office requires the mandatory filing of a patent application in India, permitting Indian residents to file a patent application outside India for an invention directly for companies operating from India cater to foreign markets.

Need for International Patent License

The reason for filing the patent in a foreign country is as follows:

To protect national security, Indian Patent Office requires patent inventors to obtain a Foreign Filing License or a clearance before filing a patent application abroad.
The invention of the patent application may be considered as non-patentable in India.
The invention holds a low potential in the Indian market.
The chances for approving the patent application in India are less.
The inventor or application might desire to cater foreign market.
The inventor or applicant may be in coordination with different teams located globally.

Provisions for Obtaining IPL

Section 39

Section 39 state that the residents will not apply for patents outside India without prior permission. Any person who is a resident in India will not apply for the grant of the patent for an invention outside India from the concerned authority or controller until the following conditions are satisfied. They are

An application for a patent for the corresponding invention has been performed in India, which should not be less than six weeks for making the application outside India.
No direction is given under sub-section (1) of section 35 concerning the application in India, or all such directions have been revoked.

The controller can dispose of application in case if the invention is relevant for defence purpose or atomic energy, the grant of permission from the central government is not approved. Section 39 is not applicable to an invention for an application filed for outside India by a person who is not a resident of India.

Rule 71

The following are the permission for performing patent application outside India following section 39.

The application for permission for making patent request outside India should be made in Form-25.
The period for which the controller dispose the request made under sub-rule (1), only in case of inventions representing to defence and atomic energy applications should be filed in the course of twenty-one days from the date of requesting of such application.

Form-25

The request has to be made in Form 25. The IPO grants the permission within twenty-one days from the date of application submitted. Permission will also be rejected by the Indian Patent Officer in case the invention relevant to the defence purpose and atomic energy.

Documents Required

The prescribed documents are required at the time of filing Foreign Filing License.

A description of the invention that sufficiently describes the inventive concept known to the applicant at the time of requesting FFL. Invention title along with drawings (if any) has to be provided.
Form 25- Application for permission for performing patent license outside India.
Declaration of the invention, along with the foreign filing license(FFL) form.
Name and address of inventor’s who are resident in India.
Countries name in which the invention has to be filed and the reason for making such an application.
Name and addresses of the assignee, if applicable.
The name of the country or countries in which the patent application is excepted to be filed after obtaining the foreign filing license from the Indian patent office.
Power of Attorney from the inventor’s or the applicant who are resident in India, where a patent attorney is appointed to describe them before the Indian Patent Office.
Form 28- In the event of the applicant is a small entity.

Scheduled Fee for FFL

The prescribed fee for applying FFL are tabulated below:

Patent Application for permission for performing patent application outside India	E-filing	Physical filing
Normal person	Small entity	Other than a small entity	Normal person	Small entity	Other than a small entity
Rs.1600	Rs.4000	Rs.8000	Rs.1760	Rs.4400	Rs.8800

Note: Another scenario in which foreign filing license will have to be obtained is when a patent application filed in India, and a subsequent Patent application has to register within six weeks of the date of filing the Indian Patent application.

Procedure for Obtaining FFL

A foreign license can be obtained by the following the steps specified below: In case filing at Indian Patent Office, it is advisable that the application is accompanied by permission for foreign filing license under section 39. Such permission will be provided or may be deferred after verifying the details of the invention. A foreign patent application can be filed in IPO as a receiving office in Patent Cooperation Treaty request form using PCT-SAFE software. After the permit of such permission, the Patent Office India will transmit the application to the International Bureau. Applicant has to remit the prescribed transmittal fee in addition to the International Application fee and search fee.

Processing Time

In case of inventions not related to Atomic Energy

: Twenty-one days from the date of filing of such request. In case of inventions related to Atomic Energy: Twenty-one days from the date of receipt of consent from the Central Government. To know more about patent registration.

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Frequently Asked Questions

Common questions about International Patent Application Process for Indian Inventors.

An International Patent Application is a process that allows inventors in India to seek patent protection for their inventions in multiple countries or regions. It enables them to file a single patent application which can establish a filing date in a large number of countries, rather than filing separate applications in each country.

An International Patent License or Foreign Filing License is required by the Indian Patent Office to ensure that inventions with potential implications for national security or related to atomic energy or defense are reviewed and approved before being filed for patent protection in other countries.

The key conditions for obtaining an IPL are: (a) filing a patent application in India first, (b) waiting for at least six weeks after the Indian filing, and (c) obtaining approval from the Indian Patent Office, which may be denied for inventions related to defense or atomic energy.

The documents required for applying for an IPL include a description of the invention, drawings (if any), Form 25 (Application for permission for filing outside India), a declaration of the invention, names and addresses of inventors and assignees, the countries where the patent will be filed, and a Power of Attorney if a patent attorney is involved.

For inventions not related to atomic energy, the Indian Patent Office typically processes the IPL request within 21 days from the date of filing. For inventions related to atomic energy, the processing time is 21 days from the date of receiving consent from the Central Government.

No, an IPL is not required for non-residents of India. The provisions of Section 39 of the Indian Patent Act, which mandate obtaining an IPL, apply only to residents of India.

No, an IPL cannot be obtained before filing a patent application in India. Filing an Indian patent application first is a mandatory requirement before applying for an IPL.

The fees for obtaining an IPL vary based on whether the applicant is a small entity or not, and whether the application is filed electronically or physically. The fees range from Rs. 1,600 to Rs. 8,800.

If an invention is related to defense or atomic energy, the Indian Patent Office may deny permission for filing a patent application outside India, even after obtaining an IPL, based on considerations of national security.

Yes, one of the reasons for obtaining an IPL is when the invention holds a low potential in the Indian market, and the inventor or applicant desires to cater to foreign markets.