Section 39 of the Patents Act, 1970 requires any person resident in India to obtain prior written permission from the Indian Patent Office before filing a patent application outside India. This permission is the Foreign Filing Licence. Non-compliance can result in deemed abandonment of the Indian application and revocation of any granted patent.
What Is a Foreign Filing Licence?
Section 39 of the Indian Patents Act, 1970, mandates that any person resident in India to obtain prior written permission from the Indian Patent Office before filing a patent application outside India. This permission is commonly referred to as a Foreign Filing Licence (FFL).
The primary objective of this requirement is to protect India’s national security and strategic interests by ensuring that inventions are not disclosed abroad without government oversight.
Section 39 is not a procedural formality. It is a substantive control mechanism that sits at the intersection of patent law and national security policy. The consequences of non-compliance are severe and irreversible.
Who Must Comply with Section 39?
The statutory language of Section 39(1) uses the phrase “make or cause to be made”. This specifically covers:
- the inventor: The person who creates the invention. If resident in India at the time of conception and development, the inventor must ensure an FFL is in place before any foreign filing.
- the applicant: The person or entity in whose name the application is filed, whether or not they are also the inventor.
- the assignee:A party to whom rights in the invention have been assigned. Even where the assignee is a foreign company, if the inventor or applicant responsible for facilitating the foreign filing is a resident of India, Section 39 applies.
In practice, this means that any of these parties who initiates, authorizes, or facilitates the foreign filing is responsible for compliance.
How Is ‘Resident’ Understood for Section 39?
The Patents Act does not define the term resident. While the Income Tax Act, 1961, provides a definition based on days of physical presence in India, that test cannot be imported mechanically into Section 39.
For the purposes of foreign filing control, Section 39 is aimed to cover persons who are effectively “residents of India” at the time the invention was conceived or developed. The focus is on the connection of the person responsible for the foreign filing to India, rather than the nationality or location of the invention.
- the connection of the person to India, and
- their presence and status when the invention is made and the filing decision is taken,
rather than purely on nationality or the physical location of the invention at every stage.
In short, if the person responsible for making or causing the foreign filing has a sufficient residential connection to India, Section 39 is likely to apply.
Applicability to Patent of Addition: The Selfdot Technologies Case
The scope of Section 39, if not confined to only the main (parent) application. The Madras High Court, in Selfdot Technologies (OPC) Pvt. Ltd. v. Controller General of Patents(2023/MHC/5258), clarified that Section 39 also extends to patents of addition.
In this case, the appellant, Selfdot Technologies (OPC) Pvt. Ltd , had filed a parent patent in India and subsequently filed the PCT National Phase abroad. The applicant submitted a continuation in part application in USPTO and subsequently in India as patent of addition.
The Court held that patents of addition involve improvements or modifications that require additional disclosure beyond the parent specification. Filing abroad without prior authorization under Section 39 constituted non-compliance. As a result, the Indian patent of addition was treated as abandoned under Section 40, which provides that contravention of Section 39 can lead to deemed abandonment of the Indian application.
How Section 39 Plays Out in Practice: Illustrative Scenarios
The following scenarios illustrate how Section 39 applies across common commercial and research structures.
Scenario 1: Indian Inventor with Foreign Assignee
An Indian scientist develops an invention in India for the U.S. based company. Because the inventor is a resident of India at the time of conception, the foreign filing cannot proceed without a Foreign Filing License or first filing in India. Section 39 applies even though the assignee is foreign.
Scenario 2: Foreign Inventor Developing Invention in India
A foreign researcher works in India and develops an invention while in the country. Although not an Indian citizen, if the person responsible for the application is present in India at the time of creation, Section 39 applies due to the law’s intent to oversee inventions connected to India.
Scenario 3: Indian Company Headquartered Abroad
An Indian-incorporated subsidiary conducts R&D in India, while management decisions are made abroad. Section 39 applies if the inventors are residents of India, and a Foreign Filing License is required before filing abroad.
Scenario 4: Collaboration Between Resident and Non-Resident Inventors
If an invention is developed jointly by an Indian resident and a non-resident, Section 39 applies because the resident inventor is involved in making or causing the application to be made.
Section 39 safeguards India’s national security by regulating foreign filings by inventors, applicants, and assignees who are residents at the time of invention. The operative phrase “make or cause to be made” ensures accountability for all parties directly responsible for initiating or facilitating the foreign filing. Even patents of addition are covered, as clarified in the Selfdot Technologies case.
Consequences of Non-Compliance: Section 40
Section 39 is a substantive control mechanism designed to ensure that inventions with a nexus to India are subject to security vetting before they are disclosed in foreign patent systems.
Section 40: Abandonment and Revocation Contravention of Section 39 can result in two distinct consequences. First, the Indian patent application is deemed to have been abandoned. Second, any patent that may have been granted on that application is vulnerable to revocation. These are not discretionary outcomes. They follow from the act of violation, regardless of whether the violation was deliberate or inadvertent. The law’s emphasis is on national interest and controlled foreign disclosure, not on procedural leniency.
The decision to treat an application as abandoned in such circumstances stems from the law’s emphasis on national interest and controlled foreign disclosure, rather than on procedural leniency.
Practical Checklist for R&D Teams and Patent Practitioners
Section 39 should be built into patent filing strategy at the earliest stage. The following steps reflect the minimum compliance framework for any Indian resident or entity with international filing ambitions.
- Check Section 39 at the outset of every patent project involving a resident inventor or applicant. Do not leave this to the point when foreign filing is actually under consideration.
- Obtain an FFL before filing first abroad. If a corresponding application has already been filed in India and no secrecy directions are in force, the Controller may issue the FFL. Do not proceed with foreign filing before the FFL is in hand.
- Apply the six-week rule with caution. If an application is filed in India and no secrecy directions are issued within six weeks, an Indian resident may generally file abroad without a separate FFL application. However, where the invention relates to defence or atomic energy, this pathway does not apply. Central Government consent remains mandatory.
- Treat patents of addition separately. An FFL obtained in relation to a parent application does not automatically cover a patent of addition. Each application requires its own compliance assessment.
- Apply the same analysis to PCT applications, continuation-in-part applications, and divisional applications where the same invention or a modified version of it is being filed abroad.
- Document the FFL in your IP register alongside the corresponding application numbers, dates, and jurisdiction details. Clean documentation reduces risk in due diligence and enforcement proceedings.
Conclusion
Section 39 of the Indian Patents Act acts as a gatekeeper for foreign patent filings where there is a meaningful connection to India.
By using the phrase “make or cause to be made”, the provision captures all those who directly initiate or facilitate foreign filings, inventors, applicants, assignees, and in some cases, corporate groups. The concept of “resident” is interpreted in a purposive manner, focusing on the person’s connection to India at the time of invention and filing.
The decision in Selfdot Technologies confirms that even patents of addition fall within this framework, and that non-compliance can lead to deemed abandonment under Section 40.
For practitioners and R&D teams, the practical takeaway is clear:
- Check Section 39 early in the filing strategy.
- Obtain an FFL where required, particularly before filing first abroad.
- Treat Section 39 as a substantive compliance requirement, not an afterthought.
Doing so not only avoids the serious consequences of non-compliance, but also aligns with the broader policy objective of protecting India’s national security and strategic interests in the patent system.
Governing Law
Patents Act, 1970: Section 39 and Section 40 | Patents Rules, 2003 (as amended 2024) | Selfdot Technologies (OPC) Pvt. Ltd. v. Controller General of Patents, 2023/MHC/5258 (Madras High Court)
