Foreign Filing Permission (FFP)
India is one of those countries where local inventors are supposed to obtain permission from its national Patent Office to either file or cause to file a patent application outside India, e.g., a direct patent filing in a foreign country or even a direct Patent Corporation Treaty (PCT) application. Another scenario which requires obtaining the FFP when a patent application has been filed in India and a subsequent foreign application needs to be filed within 6 weeks from the date of filing of the Indian patent application.
As per the latest rules, a FFP is obtainable within 3 weeks from the date of applying for the FFP, but it cannot be obtained retrospectively. In practice, FFP may be issued within 10-12 days or earlier also by informing the Indian Patent Office (IPO) about urgency if any. The documents required for obtaining the FFP include a duly filled Form 25, a brief description of the invention, a power of attorney for agents, and an assignment document if obtaining permission in the name of assignee rather than inventors. Form 25 captures information such as the title of the invention; application no. and filing date of already filed Indian application if any; a list of countries where patent applications will be filed; the name and address of Indian resident inventors and co-inventors; and the name and address of assignee if any.
There is no specific format of the brief description of the invention for the purposes of FFP. However, it should ideally be sufficient for the IPO to assess whether invention relates to atomic energy or defence technology so that they can issue secrecy directions when required to stop the leakage of sensitive inventions to foreign countries for the sake of national interest. Since the purpose of the brief description of invention is to help the IPO determine the field of invention, in practice, an applicant need not wait to furnish a complete patent application drafted by a patent attorney which is a time-consuming process, rather the invention disclosure form or a write-up that is provided to patent attorneys for drafting patent application or in-house attorneys can be reused as the brief description of invention for obtaining the FFP. In this way, by the time the patent application is drafted, the FFP will be already obtained and hence any delay in priority claiming due to 3-week long FFP obtaining process can be eliminated or at least minimized.
Alternative - First Filing in India
Alternatively, patent applicants can first file a patent application at the IPO and wait for the expiry of 6 weeks from the filing date of Indian application for filing corresponding applications in foreign countries. During this 6 weeks period, the IPO checks whether the filed patent application relates to atomic energy or defence technology and issues secrecy directions when required. While there is no significant cost benefit with this alternative approach, one upside is that there is no delay in priority claim as the applicant does not have to waste 3 weeks to obtain the FFP. One downside of the alternative approach is that in case of inventors are from different jurisdictions, FFL requirements arising from other jurisdictions may have to be dealt with. Another downside of the alternative approach is that Applicant needs to obtain a certified copy of Indian application at extra costs to claim priority in foreign jurisdictions. So if Indian application is of no interest eventually, it does not make sense to first file in India and obtain a certified copy of Indian application. However, when such an application has been filed, the patent applicant can very well abandon the Indian application to save at least the prosecution cost. On the other hand, Applicants interested in obtaining patent rights in India or short of time due to any upcoming public disclosure of invention may consider first filing an Indian patent application and wait for the expiry of six week period for filing any corresponding foreign application to avoid any delay in priority claiming due to 3-week long FFP obtaining process.
One of the main issues pertaining to FFP requirement is that how the Indian residency is determined. While the Indian Patent Act or Rules are silent about this issue, but there are other Acts, e.g., Income Tax Act and Foreign Exchange Management Act that define Indian residency in terms of the number of days spent by a person in India amongst other criteria. However, the applicability of these other Acts remains questionable because firstly, there are no judicial precedents to support their applicability in the context of patent filing and secondly, fundamentals are altogether different. Suppose a person comes to India for a week and invents something sensitive during this short period, while that person is not considered as an Indian resident for the purposes of Income Tax or Foreign Exchange calculations, should that person be allowed to leak the sensitive invention invented in India to outside world bypassing FFP requirement. The logical answer is a clear no because this cannot be the legislative intent behind putting the FFP requirement. So if somebody invents something while residing in India, the person should mandatorily obtain FFP before filing a direct foreign application or a foreign filing before the expiry of 6 weeks from Indian filing.
The only way the IPO gets to know that an Indian resident inventor has filed or caused to file the first application outside India only when an Indian address of the inventor is used in the first and/or subsequent applications. If the inventor has used its non-Indian address that could be his residential address outside India, then the IPO would treat the said inventor as non-resident and would not open the issue of FFP. In practice, which address is used by the Indian inventor in the first filed application and/or subsequent applications is the thumb rule for the IPO to determine whether an inventor is an Indian resident or not. This is similar to the local address of Indian resident inventor governing which patent office from amongst the four patent offices in India is the right office for obtaining the FFP. Therefore, if a patent application is filed in India through PCT or Paris convention route and PCT application or the priority application has an Indian address for any inventor, the IPO is expected to open the issue of non-compliance with the FFP requirement. In case a patent application is not filed in India or inventor address is manipulated because no address proof as such is required for filing Indian patent application, it is unclear how the IPO is going to check the violation of the FFP requirement.
Non-Compliance and Consequences
When the IPO or a third party finds out the violation of the FFP requirement, there can be some serious consequences for inventors as well as applicants. Firstly, there can be an imprisonment for a term up to two years, or fine, or both. Secondly, Indian patent application becomes abandoned and the patent granted if any can be revoked. It is therefore essential for patent applicants and owners to know the law of land and comply with it beforehand to avoid any loss of right and also unwanted criminal/ financial liability onto inventors.