The provision of foreign filing licence was for the first time introduced by Section 39 of Patents (Amendment) Act, 2002. 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 Patent Controller, make or cause to be made any application outside India for the grant of a patent. The application for a patent for the same invention has been made in India, not less than six weeks before the application outside India;
Section 39 was later amended by the PATENTS (AMENDMENT) ACT, 2005. The legislature increased the ambit of the section 39 in the 2005 amendment to include “any invention” and not just restrict the scope only to inventions related to atomic energy and defense. The amended Section 39 reads as under:
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has been given under sub-section (1) of section 35 in relation to the application in India, or all such directions have been revoked.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 an application for protection has first been filed in a country outside India by a person resident outside India."
The section 39 has to be read in light of the other provisions of the chapter, namely sec 35 (Secrecy directions relating to inventions relevant for defence purposes), section 37 (Consequences of secrecy directions) and section 38 (Revocation of secrecy directions and extension of time). The indication of the legislature in invoking these provisions (sections 35, 37, and 38 in the parent act) is to keep certain class of inventions, especially inventions for defense purposes or atomic energy, as secret because of primarily national security considerations. Therefore, the said purpose should be reasonably applied to section 39. The legislature wanted to screen the inventions exported from India to ensure that no invention for defense purposes or related to atomic energy leaves India. The provision is similar to patent law of United States, and specifically 35 USC 184, in the US Patent Act.
It is a mechanism, wherein inventions are thoroughly scrutinized before being exported. That’s why the law requires the applicant to obtain a written permission from the Patent authority, or first file the patent application in India. This mechanism clearly provides a process by which the government can clearly check what technologies are being exported out of India.
The law also requires the patent office not to grant the FFL, without the prior consent of the Central Government, if the invention is relevant for defense purpose or atomic energy. In case the applicant has filed a patent application, and the controller or central government finds that the invention is one of a class notified to him by the Central Government as relevant for defense purposes, then obviously, the patent office can take action against such impugned application by either denying the FFL, and if the impugned application has already been filed, by preventing its publication. In hindsight, the essence of the chapter is to make sure that NO TECHNOLOGY CONCEIVED AND DEVELOPED IN INDIA SHOULD LEAVE ITS SHORES WITHOUT PROPER THE SCRUTINY, whether that scrutiny is through screening of the application, or through the process of granting a FFL.
Based on the foregoing, the onus while determining the question of FFL should essentially be based on answering whether the technology was conceived and developed in India? And, this question should be answered irrespective of the fact that whether the applicant is an Indian citizen, foreigner, or a company, or a natural person. The term “resident” in the section is actually inserted to exclude any restrictions that can be imposed on the applicability of the provision, and to widen the ambit. The term “resident” in law is supposedly construed to be broader than term “citizen”. For example, our tax laws define a foreign national (even residing abroad) to be a resident of India if he satisfies certain conditions for the purpose of taxation.
In absence of any specific definition of term “resident” in the act, the interpretation should be restricted to the dictionary meaning of the term. However, reading the meaning of the term resident independently, without considering the operative part of the section 39 (which allows for scrutiny of inventions to be exported from India) will be contrary to the principle of having the section in the first place. Therefore, the true test while determining FFL should be to check where the invention was conceived. If the invention is conceived in India, the applicant irrespective of character (organization or individual) or nationality (Indian or alien) HAS TO OBTAIN AN FFL for first filing abroad.
Section 39 of the Indian Patents Act as amended requires an applicant to obtain a Foreign Filing License (FFL) before applying for a patent for a technology in a foreign country, without applying for a corresponding patent in India. The implications of the violation of the section are very harsh, and may even include criminal liabilities on the defaulting applicants.