Innovate Articles

Foreign Filing Licenses (FFLs) and their Alternatives for Patenting Inventions with India Resident Inventors

Dr. Mohan Dewan

Inventors residing in India have made substantial contributions to global progress. Many of these individuals pursue education and careers abroad, collaborating with prestigious organizations and universities, where they develop inventions that are patentable and hold significant commercial value. Complex residency determinations must be considered to determine if a Foreign Filing License or alternatively a Provisional Specification (PS) must first be requested or filed prior to filing outside of India.

Inventions involving inventors qualified as residing in India

There is a significant amount of caution that needs to be exercised by applicants during filing of patent applications for inventions involving Indian nationals and other inventors deemed as residing in India as the sole or as a joint inventor. Though the inventor involved in the invention and associated with the applicant may be living in a country outside India but he/she may be still deemed to be a person resident in India as per the Indian patent law, which mandates - ‘no person resident in India shall make or cause to be made any application outside India for the grant of a patent for an invention unless such a person is authorised by a written permit (Foreign Filing License/ FFL) granted by the controller.’

A person resident in India

The term ‘resident’ is not defined in the Patents Act and therefore compels reliance on interpretations derived from other statutes, such as the Income Tax Act 1961, in which the term ‘resident’ is qualified. There are several conditions under which an Indian national residing, working, or studying abroad will be deemed to be a ‘person resident in India’. These conditions also apply to Indian students or individuals with temporary residency, green cards, or work permits in other countries. According to the Indian law, individuals are considered resident/ordinarily resident in India, if the individual:

• resides in India, irrespective of his/her nationality,
• stays in India for 182 days or more in the previous fiscal year,
• spends 365+ days in India over the preceding four fiscal years,
• resides in India for at least nine of the last ten years,
• spends 730+ days in India in the previous seven years,
• manages and controls his/her financial affairs partially or entirely in India, specifically during the previous fiscal year.

Based on the above conditions, an Indian national living abroad is not exempt from the FFL requirement solely due to extended physical absence from India. It is crucial to understand that unlike other countries, an FFL is required for Indian inventors based on residency and not nationality. An FFL will not be required for every Indian national (even a foreign national) but will be required for every individual who is deemed to be a ‘person resident in India.’

Consequences of Non-Compliance

This nuanced interpretation of a ‘person resident in India’ has significant implications considering inventors who are deemed to be Indian residents under the Indian Patents Act. Filing of patent applications including applications under Patent Cooperation Treaty, for inventions involving ‘Indian residents’ as inventors, without first securing an FFL constitutes a violation under the Indian Patent Law. Such a non-compliance incriminates the inventor, he/she is liable to a cognizable criminal offense, punishable by up to two years of imprisonment. Further, if a patent application is subsequently filed in India for such an invention, the patent application will be deemed to have been abandoned and even a patent granted to such an invention is liable to be revoked. Non-adherence to the FFL requirement may lead to criminal liability for an Indian inventor associated with the invention and potential forfeiture of patent rights for the invention in India if a patent application is filed subsequently.

Given the complexity of determining the residency of an Indian inventor and the potential consequences of non-adherence, it may be safer to obtain an FFL from the Indian Patent Office when an Indian national is a sole or joint inventor.

Responsibility to acquire an FFL

The intricacies of residency laws may often lead to unintended violations and legal liability. Interestingly, the primary responsibility for obtaining a Foreign Filing License (FFL) rests with the inventor, though it is the applicant entity which files for the ownership and patent rights of the invention. An inventor who qualifies as a ‘person resident in India’ is under statutory obligation to secure a written permit i.e a Foreign Filing License from the Indian Patent Office before the filing of patent application for his/her invention outside India. This underscores the individual accountability of inventors under Indian law, even if the applicant is a company or an academic institution. This regulatory requirement is designed to safeguard national interest by ensuring that sensitive inventions undergo thorough review before being disclosed to a foreign patent office.
Irrespective of the fact that the legal obligation is solely on the inventor, acquiring an FFL must be given due consideration and effort by the applicants considering potential loss of patent rights in India. The inventors, especially those who are students or employees are focused on technical and commercial aspects and often lack awareness of the legal frameworks and obligations associated with patent filing. Such an oversight extends beyond legal consequences, as a criminal record can damage professional reputation, hinder career prospects, and overshadow achievements.

Therefore, it also becomes a moral duty of universities, research institutions, and employers to educate and assist Indian inventors in complying with the FFL requirements.

The procedure to obtain an FFL commences with the submission of an application along with a disclosure of the invention to the Indian Patent Office, generally accompanied by a POA authorizing a patent agent/attorney to represent the inventor. Obtaining a POA can be challenging, as in India it must be on stamped paper with stamp duty paid before execution of the POA. Upon submission, the Indian Patent Office evaluates the application and reserves the authority to subject the invention to further scrutiny, if deemed necessary, before permitting disclosure outside India. The FFL is typically issued within 10–15 working days of submitting an FFL application.

Filing a Provisional Specification: A Practical Alternative

Considering the various provisions of the Indian patent law, filing a patent application in India serves as an effective alternative to obtaining an FFL. Section 39 of the Patents Act provides an exemption to the requirement of obtaining an FFL if, ‘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.’ This patent application can be accompanied by a Provisional Specification (PS) and can be made by the applicant— typically a company, university, or organization. Such a PS does not need claims. A brief outline of the invention will do. The invention has proposed to be claimed in the complete specification needs to be clearly described. There is also no need of an abstract. The provisional specification does not need to be a formal document but is required to be assemblance of a patent specification. Typically, with paragraphs such as field, background, objects, drawings and detailed description. The provisional specification is a document on record cannot be amended and is not published, if a final (complete) specification is not filed. In contrast, certain jurisdictions, such as the United States, often impose longer waiting periods of 6 to 9 months after filing a domestic application before allowing international filing, unless an FFL is obtained.

Advantages of filing an application in India

Filing an application accompanied by a PS in India presents considerable advantages for the applicants over obtaining an FFL. Firstly, a PS undergoes significantly less scrutiny compared to the detailed evaluation of an FFL application. Secondly, a PS is filed in the name of the applicant unlike an FFL, which is applied for in the name of the Indian inventor. Filing an application accompanied by a PS also does not necessitate additional documentation. Additionally, filing a PS allows applicants to secure an early priority date for their invention, an advantage not available when relying solely on an FFL.  Once the 6-week period has elapsed, applicants have the freedom to file their applications in any patent office globally. Filing a patent application instead of obtaining an FFL is especially advisable when a particular invention has a group of inventors with a few of them being Indian nationals.

Potential Challenges with FFL applications

From a cost perspective, filing a PS in India is comparable to obtaining an FFL; however, the PS route is often more streamlined and predictable. While FFL applications are typically processed within a fortnight, delays can occur due to technical issues or administrative uncertainties. A significant challenge arises if the Indian Patent Office imposes secrecy directions during the FFL application review. These directions prohibit the disclosure of the invention both domestically and internationally, effectively halting the filing process until the restrictions are lifted. Such measures can result in substantial delays and complications for applicants potentially undermining the timely protection and commercialization of the invention.

Conclusion

When filing patent applications involving Indian nationals as sole or joint inventors, it is crucial to carefully navigate first filing requirements. Limited awareness of legal obligations and the intricacies of residency criteria can inadvertently lead to violations, risking forfeiture of patent rights in India and potential criminal liability for inventors. The stringent review of Foreign Filing License (FFL) applications and the need for comprehensive documentation add further layers of complexity. To avert these challenges, filing a Provisional Specification (PS) in India is widely regarded as the more prudent and reliable strategy for securing global intellectual property rights when an Indian resident is among the inventors.