FFL requirement for newly added subject matter

By Piyush Sharma, LexOrbis
0
40

One of the peculiar provisions of Indian patent law is that an invention involving a resident inventor shall not be revealed outside India without seeking permission from the Indian Patent Office (IPO). Particularly, section 39 of the Indian Patents Act, 1970 (act), deals with this provision of the Indian patent law. Where the application is first filed in India, the applicant is required to wait six weeks for the IPO to assess the technical nature of the invention. The IPO will determine whether the invention relates to sensitive technologies, such as defence applications or atomic energy, which could adversely affect national interests if revealed abroad. The IPO may accordingly issue secrecy directions to control the export of such inventions outside India. If the IPO does not raise any objection, the applicant is then free to file corresponding patent applications in foreign jurisdictions.

application
Piyush Sharma
Managing Associate
LexOrbis

If the applicant wishes to first file the patent application outside India, they must file a request at the IPO for obtaining a foreign filing licence (FFL). This requirement arises even in cases where the application has been first filed in India, but the applicant wishes to file the application in a foreign jurisdiction within this duration of six weeks. The IPO usually grants such requests within two to three weeks, if the invention does not pertain to sensitive technologies. If the invention seems to be relating to such technologies, the IPO may refer the application to the Ministry of Defence for approval.

Now, in cases where the applicant wishes to first file a direct complete application outside India, it is clear that the applicant is required to obtain the FFL before filing the application outside India. There is, however, uncertainty with regard to the requirement of FFL in cases where the applicant first files a provisional application outside India and then files a subsequent Complete After Provisional (CAP) application outside India. While it is clear that the applicant is required to file a request to obtain an FFL before filing the provisional application, it is problematic to ascertain whether the applicant needs to obtain a second FFL before filing the CAP application.

It is quite common for applicants to introduce additional content in the specification, such as detailed disclosure of embodiments, drawings and claims, at the time of filing the CAP application. Particularly, in cases where such additional content is included in the CAP application, the requirement of FFL becomes confusing for the applicants.

It is pertinent to note that the act does not require the applicant to make full disclosure of the invention in the request for the FFL. In fact, brief details of the invention, such as a summary of the invention and the title are usually sufficient for the IPO to determine whether the invention relates to sensitive technologies.

This is a clear indication that the applicant does not have to make full disclosure of the invention when the IPO reviews it before issuing the FFL. Thus, the applicant is not required to obtain a second FFL for the additional content before filing the CAP application. This assumes that the additional content does not relate to sensitive technologies, and that the overall content of the CAP application is within the scope of the provisional application, for which the IPO has already issued the FFL.

Only where the newly added content of the CAP application is outside the scope of the provisional application or directly hints towards the invention being usable in sensitive sectors, should the applicant consider filing the second FFL request. This would equally hold true with regard to the requirement of obtaining FFL for the patent of addition.

For clarity purposes, an example can be considered where the disclosure submitted along with the request for obtaining the FFL related to a vehicle tracking system and the IPO had issued the FFL. While filing the CAP application, the applicant realizes that the invention can also be deployed in military vehicles to track tank movements during battle and thus includes this embodiment in the description of the CAP application. Since this embodiment relates to a defence-related application, such additional content is required to be examined by the IPO. In such cases, the applicant should file a request for a second FFL before filing the CAP application.

Therefore, where the CAP specification falls within the scope of the provisional specification and the additional content does not include any embodiment of the invention in a field of sensitive technology, the applicant is not required to obtain the second FFL. This strategy would reduce the overall cost of filing the CAP application. At the same time, it will also eliminate the delay caused in the filing of the CAP application due to a filing of the second FFL.

Piyush Sharma is a managing associate at LexOrbis.

application
LexOrbis
709/710 Tolstoy House
15-17 Tolstoy Marg
New Delhi – 110 001
India
Mumbai | Bengaluru
Contact details
Tel: +91 11 2371 6565
Fax: +91 11 2371 6556
Email: [email protected]lexorbis.com
Website: www.lexorbis.com