Once the patent application is filed, it gives regional right pertaining to India and not global right to make use of the invention everywhere. If an inventor or applicant desires to make use of the invention outside that India, then patent application needs to be filed in those specific countries.
Why file patent application in foreign countries?
If the inventor or applicant wants to cater the invention in foreign market and make use of invention in other countries, then it is necessary to file patent application in foreign countries and filing patent application in multiple countries also aids in enhancing the patent portfolio.
Ways of filing patent application in foreign countries
Consider a scenario where the inventor or applicant of an invention wants to file a patent application in a foreign country. There are two ways of doing it:
- The inventor or applicant should file the patent application for his/her invention in India first. Then, the inventor or applicant can file patent application outside India after Six Weeks from the date of filing in India.
- The inventor or applicant of the invention must obtain permission from Controller of Indian Patent Office to file patent application directly in other country before filing in India.
To file the patent application in foreign countries before filing in India, the inventor or applicant needs to seek permission from Controller of Indian Patent Office by filing Foreign Filing License or Foreign Filing Permit.
What is Foreign Filing License (FFL)?
As mentioned already, if an Indian resident desires to file in any other country before filing in India then it is necessary to obtain permission from Indian Patent Office by filing Foreign Filing License. Once the Foreign Filing License is granted, the Indian Patent Office waives off the mandatory requirement of filing patent application first in India and allows the Indian residents to directly file patent application for invention in other countries.
Objective of FFL in India
The main objective of filing Foreign Filing License to check all the inventions, especially inventions related to defence or atomic energy from being exported to other jurisdiction without state of origin of invention first choice to use it.
Reasons for obtaining FFL
- The subject matter of the patent application may be considered as non-patentable in India.
- The subject matter of the invention has a low potential in Indian market.
- In case chances of getting grant for patent application in India are less.
- The inventor or application might desire to cater foreign market.
- The inventor or applicant may be in coordination with different teams located globally.
Documents required for FFL
- A brief description of the invention, which describes the inventive concept known to the applicant at the time of submitting request for Foreign Filing License.
- Name, address and nationality of inventor(s) who is resident in India.
- Power of Attorney (POA) from the inventor or applicant resident in India, where patent agent is assigned to represent the inventor or applicant.
- Name and address of assignee, if any.
- The name of country/countries in which the inventor/applicant is expected to file patent application after obtaining Foreign Filing License from Indian Patent Office.
- Name of country in which the patent application would be filed and reason filing such application.
What are the consequences of not obtaining FFL?
In case the inventor/applicant fails to seek permission from Indian Patent Office for filing patent application in foreign country before filing in India, then the inventor may be imposed with the fine and also abandonment of the patent application or cancellation of the patent even if it is already granted.
It is advisable to take professional help to avoid hassle. At Ediplis Counsels, we offer a full range of patent-related services, which you can use to protect your invention.