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Foreign Filing License Advisory to IP Stakeholders during COVID-19

April 17, 2020

By Sukku and Dhruv Mathur

In view of the ORDER No. 40-3/2020-DM-I (A) dated 24th March, 2020 of Ministry of Home Affairs, Govt. of India and Guidelines annexed therewith, all the Offices under administrative control of O/o Controller General of Patents, Designs and Trade Marks (CGPDTM) will remain close for a period of 21 days with effect from 25th March, 2020 and further extended to up to 3rd May 2020. In view of the above notification, the Indian Patent office (IPO) has not been functioning other than accepting e-applications/requests during the period of lockdown. Several businesses have been badly affected by this pandemic. Likewise, the legal procedures formulated for governing these businesses are facing major issues in their implementation.

Businesses all around the world have founded their technologies on patents. IP Stakeholders tend to protect their inventions in India as well as abroad. For this purpose, there is a well-established feature of the Indian Patents Law, known as the Foreign Filing License, specially enacted for the Indian residents who wish to file their first patent application abroad, without filing in India.

Foreign Filing License is a written permission obtained from the IPO. The IPO, by granting the foreign filing license, waives the mandatory requirement of first filing a patent application in India, thus, allowing Indian residents to directly file a patent application outside India for an invention.

The Government and Learned Controller General are aware that in patents, filing dates/ priority dates are critical. Further, the inventions where the inventor(s) are residents of India require prior permissions from the IPO under Section 39 of the Indian Patents Act, 1970 before filing application(s) outside India. Under normal circumstances, the usual practice commits that the Indian resident, in order to file their first patent application outside India, have the following options:

  • File a Foreign Filing Permission with the IPO and wait for its grant in order to file the application abroad, or,
  • File a Provisional Patent Application with the IPO and wait for six weeks, after which the applicant (Indian Resident) can proceed to file the patent application abroad.

However, in view of the current lockdown situation and COVID-19 outbreak, all the offices under the CGPDTM are closed and no processing of any application is being done, even if they are filed online.

In the current situation, one of the best ways out and a possible suggestion to all the patent applicants who wish to have foreign filing license is to first file the Provisional Patent Application in India and secure the priority date, and then wait for six weeks to file the same abroad, as per the provisions of the law.

On the other hand, due to lockdown, the request for obtaining a foreign filing permission filed with the IPO may not be timely scrutinized by the Patent examiner. This would not only keep the patentable subject matter pending with the IPO, but also would cause a delay in filing the patent application abroad.

Filing a Provisional Patent Application in India would automatically grant a permit to the applicant (Indian resident) after a period of six weeks (from the date of filing the said Provisional Patent Application). After said period, the applicant (Indian resident) can simply file the patent application abroad.

One of the issues that an applicant may come across is where the applicant has already filed the Foreign Filing Permission with the IPO, just before the lockdown in India; their Foreign Filing Permissions would be pending until the date when the IPO reopens. Therefore, if the applicant needs to file the patent application outside India on an urgent basis (and if the applicant cannot wait for the IPO to reopen), said applicant should consider to immediately file a provisional patent application in India and wait for six weeks to file that patent application abroad. Though in this case, the applicant would have to bear the additional cost for both the Foreign Filing Permission and the Provisional Patent Application. However, keeping in view the high market potential such an option could benefit the applicant in this critical situation.

Keeping into consideration that the lockdown due to COVID-19 has been extended until May 03, 2020, it is still uncertain when the IPO will be able to scrutinize the patent applications. Due to this situation, the applicants have no option but to file the provisional application in India and file the application abroad after six weeks from the Indian filing date. However, this may result in some applications related to National Security and Secrecy to be taken abroad by the applicants, without the inspection done by the IPO. Therefore, it is advisable that any such application, which aids in protecting national security of a country, should be avoided that may lead to harsh penalties faced by the applicant.

Given the circumstances which are akin to a national emergency because of the COVID-19 pandemic, we appeal that all requests filed before the lockdown period and during the period of lockdown for which prior permissions have not been issued and are pending prior permissions, may be issued upon the re-opening of the Indian Patent Office with retrospective effect from the date of filing of the request for seeking prior permissions under Section 39 of the Indian Patents Act.

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