When can I file for patent protection outside India?

Section 39 applies to any person resident in India, whatever their nationality. A person resident in India may not apply for a patent outside India for an invention, or cause such an application to be made, unless one of two conditions is met:

• an application for the same invention has been filed in India, and at least six weeks have passed since that filing, and no direction prohibiting or restricting publication has been given under Section 35; or

• written permission has been obtained from the Controller. This is requested on Form 25 with the prescribed fee, accompanied by a brief description of the invention and details of the intended foreign filing. Rule 71 requires the Controller ordinarily to dispose of such a request within twenty-one days, except where the invention is relevant for defence or atomic energy purposes.

Section 39 does not apply where an application for protection has first been filed outside India by a person resident outside India.

The consequences of getting this wrong are serious. Under Section 40, a corresponding Indian patent granted on an application made in contravention of Section 39 is liable to be revoked. Under Section 118, contravention is punishable with imprisonment of up to two years, or a fine, or both — a provision that the Jan Vishwas decriminalisation of 2023 did not touch.

In practice, this most often arises where an inventor based in India contributes to an invention filed first by a parent company abroad, and no one has treated the Indian inventor's residence as a filing constraint. A short foreign-filing check, applied before anything goes overseas, resolves it.