Complying With First Filing Or Foreign Filing Permission Requirement In India Amid COVID19 Pandemic.
Legal News & Analysis - Asia Pacific - India - Regulatory & Compliance - Intellectual Property
24 April 2020
India is currently under lockdown due to the ongoing pandemic of the novel coronavirus, also known as COVID-19. All government offices including the Indian patent office have been shut down as part of the lockdown. All the due dates falling in between the lockdown period have been extended to the first working day of the Indian patent office after uplifting of the lockdown restrictions. Most of the work at the Indian patent office has been suspended until further orders. However, the online filing system at the Indian patent office is fully functional as of now. Despite that, there are a few things which are getting affected badly. For instance, India has a first filing requirement for inventions involving Indian resident inventors. This is to make sure that any invention originated in India which is of interest to national security, e.g., any invention relating to defense technology or atomic energy does not go outside India without proper scrutiny.
There is an alternative to the first filing requirement and that is to obtain foreign filing permission, also called foreign filing license or FFL in short, from the Indian patent office before first filing a foreign patent application. It generally takes about two to three weeks to obtain foreign filing permission from the Indian patent office. However, the Indian patent office at the moment is unable to issue foreign filing permissions due to the ongoing lockdown. That is why applications seeking foreign filing permission are getting piled up at the Indian patent office for clearance. And when the patent office opens next, they will have a huge queue of such pending applications. Obtaining foreign filing permissions from the Indian patent office is, therefore, going to take some time depending on when the lockdown is eventually lifted. In the meanwhile, applicants wishing to file a direct foreign patent application will lose on the earliest filing date for their inventions.
In this scenario, it is wiser for applicants to rather file a first patent application in India using the online filing system provided by the Indian patent office. In this way, they will be able to comply with the law of the land and still secure the earliest filing date for their inventions. In case, foreign inventors are also involved along with Indian inventors, the first filing requirement in the corresponding foreign countries also needs to be looked into. For instance, a few jurisdictions also allow obtaining foreign filing permissions retrospectively and some foreign patent offices are operating remotely due to the ongoing pandemic of COVID-19 and issuing foreign filing permissions on merits. If inventors of such foreign countries are involved along with Indian inventors, it makes more sense to obtain foreign filing permission from the foreign patent offices if possible and file a patent application in India first at least till the Indian patent office remains close for doing its bit in stopping community transmission of COVID-19 in India.
It is pertinent to note here that applicants need to wait for 6 weeks to provide the Indian patent office sufficient window to scrutinize an invention for its relevance to the national security. After the expiry of 6 weeks period, applicants as per the law are very much free to file foreign applications if they do not hear back from the Indian patent office. When an invention relates to defense technology or atomic energy, the Indian Patent Office issues secrecy directions on the recommendation of the Ministry of Defense. It is unclear how the Indian patent office is going to scrutinize patent applications during the lockdown period. The Indian patent office needs to come up with a solution for this problem because, due to lack of any other remedy, applicants are justified in going ahead with the filing of foreign applications any time after 6 weeks from the date of filing of Indian patent application. In the meantime, applicants should make sure at least from their side that the first filing route is used for non-sensitive inventions only and if they can they should wait to hear from the Indian patent office especially for sensitive inventions that can have relevance to the national security.
Article here was 1st published on Lexology
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Joginder Singh, Partner, LexOrbis