International Patent Application

International Patent Application

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direction is given under sub-section (1) of section 35 concerning the application in India, or all such directions have been revoked.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 IndiaE-filingPhysical filing
Normal personSmall entityOther than a small entityNormal personSmall entityOther than a small entity
Rs.1600Rs.4000Rs.8000Rs.1760Rs.4400Rs.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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