Navigating global patent strategy can be complex, especially when national laws impose pre-filing requirements. One such legal obligation under Indian patent law is obtaining a Foreign Filing License (FFL) before filing a patent application outside India.

What Is a Foreign Filing License (FFL)?

Under Section 39 of the Indian Patents Act, 1970, any person who is resident in India must either:
• First file the patent application in India, and wait six weeks for any secrecy directions from the Indian Patent Office (IPO), or
• Obtain prior written permission (FFL) from the IPO before filing the first application abroad.

This rule is intended to ensure that inventions originating from India, especially those with potential defence or security applications, are reviewed domestically before being disclosed internationally.

Who Needs an FFL?

The requirement is based on residency, not citizenship. Although the Patents Act doesn’t define “resident,” the term is typically interpreted in line with the Income Tax Act. A person is considered a resident in India if they are physically present in the country for more than 182 days in a financial year.

So, contrary to common assumption:
• An Indian citizen living and working in the USA (or any other country) is not considered a resident in India and does not require an FFL, unless they maintain a tax residency in India.
• Indian citizens residing in India must obtain FFL before any foreign first filing.

Does FFL Apply to All Inventions or Just Security-Sensitive Ones?

The FFL requirement under Section 39 applies broadly to all inventions, regardless of their subject matter.

However, a separate provision under Section 35 empowers the Controller to impose secrecy directions on inventions relating to defence or atomic energy. This is distinct from the FFL requirement, which applies more generally based on the applicant’s residency.

What Happens If You Don’t Obtain an FFL?

Failure to obtain a Foreign Filing License when required can lead to serious consequences, including:
• Rejection of the Indian patent application for the same invention under Section 40;
• Criminal penalties under Section 118, including imprisonment up to 2 years and/or fines;
• Questions around enforceability of rights in India if the invention was disclosed without authorization.

Importantly, while failure to secure an FFL does not invalidate a foreign patent per se, it can significantly impact the ability to seek patent protection or enforce rights in India later.

What About Indian Companies Filing Abroad?

Even if none of the inventors are Indian residents, if an Indian company is the applicant and seeks to file a first patent application in a foreign country, the company being a legal resident in India is required to obtain an FFL or follow the six-week domestic filing rule.

This is crucial because FFL compliance is assessed at the level of the applicant’s residence, not just the inventors.

FFL in Practice

In practice, many Indian resident inventors do apply for FFLs when intending to file their first application abroad. The Indian Patent Office typically processes such requests within a few weeks.

That said, it is not common for Indian citizens who are not resident in India, such as those working in the USA or Europe, to apply for FFLs, because the requirement doesn’t apply to them.

Understanding and complying with the Foreign Filing License requirement is vital for any India-related patent strategy. While the law is relatively straightforward, practical interpretation depends on the residency status of the inventor or applicant, not citizenship alone.

Indian entities or inventors residing in India should always assess FFL requirements before filing patent applications outside India to avoid regulatory or legal setbacks. On the other hand, Indian inventors & applicants residing abroad are typically in the clear.