How to file a patent outside India – International Patent applications

How to file a patent outside India – International Patent applications

Patents are territorial. That means the right of the patent is limited to the country in which you received the patent protection for your invention.

Now, you may be looking to get a patent for your invention in multiple countries of your interest, or You may be thinking why not get an entire world patent for my invention?

Although your thinking is right, There is nothing called a world patent; However, there are ways you can protect your invention in multiple countries. Some ways are inefficient and expensive while other ways are efficient and inexpensive and saving a lot of rework.

Direct or Paris Convention route: You can directly file separate patent applications at the same time in all of the countries in which you would like to protect your invention (for some countries, regional patents may be available) or, having filed in a Paris Convention country (one of the Member States of the Paris Convention for the Protection of Industrial Property), then file separate patent applications in other Paris Convention countries within 12 months from the filing date of that first patent application, giving you the benefit in all those countries of claiming the filing date of the first application.

PCT route: You can file an application under the PCT, directly or within the 12-month period provided for by the Paris Convention from the filing date of a first application, which is valid in all Contracting States of the PCT and, therefore,

PCT filing is much simpler, easier, and more cost-effective than both, direct or Paris route filings.

The Patent Cooperation Treaty (PCT)

The PCT is an international treaty with more than 153 Contracting States. The PCT makes it possible to seek patent protection for an invention simultaneously in a large number of countries by filing a single “international” patent application instead of filing several separate national or regional patent applications. The granting of patents remains under the control of the national or regional patent Offices in what is called the “national phase”.

It is a multilateral treaty that entered into force in 1978. Through PCT, an inventor of a member country (Contracting state of PCT can simultaneously obtain priority for his / her Invention in all/ any of the member countries, without having to file a separate application in the countries of interest, by designating them in the PCT application. India joined the PCT on December 7, 1998.

PCT is an international treaty, which provides the facility to the applicant to file a single patent application and designate the countries in which he/she wants to protect his IP rights. Thus a single patent application is filed for the purpose of an international search report.

A single international patent application has the same effect as national applications filed in each designated Contracting State of the PCT. However, under the PCT system, in order to obtain patent protection in the designated States, a patent shall be granted by each designated State to the claimed invention contained in the international application.

Filing:

You file an international application with a national or regional patent Office or WIPO, complying with the PCT formality requirements, in one language, and you pay one set of fees. International

Search:

An “International Searching Authority” (ISA identifies the published patent documents and technical literature (“prior art”) which may have an influence on whether your invention is patentable, and establishes a written opinion on your invention’s potential patentability.

International Publication:

As soon as possible after the expiration of 18 months from the earliest filing date, the content of your international application is disclosed to the world.

To know more about Patent Cooperation Treaty PCT application and its advantages over the convention application, you may read our section on PCT and International patent application.

You may also check our article on PCT National phase application in India.

How to file a patent outside India – Foreign patent application

In many cases, your invention may be valuable not only in India but also in other foreign countries (in some cases maybe it is valuable worldwide). In such cases, you may decide to file foreign patent applications by means of either convention route or Patent Cooperation Treaty route.

However, when you decide to file a patent application outside India (foreign countries), there are two ways to do it:

  1. Filing patent applications outside India without filing a patent application in India.
  2. First, filing a patent application in India and then file a patent application in foreign countries.

In any case, it is mandatory to inform the Indian patent office before filing a patent application outside India.

In the 1st case, the patent applicant should take permission from the Indian patent office for filing patent applications outside India. Generally, the patent office replies within 21 days.

Foreign Filing License (FFL), is a permission granted by the Indian Patent Office (IPO), on a request by the applicant, to protect the inventions internationally.

This foreign filing license is required in 2 situations as explained below:

Situation 1: If you are filing patent applications outside India (foreign countries) without filing a patent application in India, then you need to take FFL.

Situation 2: When you have filed the patent application in India but wish to file foreign patent applications before the expiry of 6 months from the filing date of the Indian patent application.

The India patent office generally disposes FFL within 2 weeks’ time when you need to apply for FFL with a request and disclosure of your invention.

Why Foreign Filing License is Needed

The fundamental reason behind this provision is all the patent applications that are going out of India (may it be any situation explained above) the invention disclosure is once verified for Not containing any sensitive information for our country (India). Such sensitive information may be related to defense purposes and other such technologies.

If you fail to obtain FFL and filed a patent application directly into foreign countries (without informing the Indian patent office) then it is considered a serious offense and you may be facing penalties or punishment.

How to Apply for Foreign Filing License FFL

  • Disclosure of Invention: this would be a brief description covering the main invention and its overall concept.
  • Details about the inventor’s name, addresses, and nationality.
  • Details of the applicant.
  • Details about countries in which the patent application is to be filed.
  • Details about the reason for foreign filing.

As explained in section 39 of the Indian Patent Act: 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 defense purposes 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.

You can reach patent professionals and attorneys here for further guidance on filing patents in foreign countries.

Prasad Karhad
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