PROVISIONS AND PROCEDURE IN RESPECT OF PATENTS FOR INVENTIONS BY RESIDENTS IN INDIASECTION 39 OF PATENTS ACT, 1970
The situation in question is indeed specially provided for in Indian patent law and the provisions have altered back and forth over the past eight years or so. To appreciate it, it is wisest to have the relevant section as it now stands set out before one. Accordingly, Section 39 of Indian patent law is quoted hereafter in full together with the contents of the relevant Rule 71 in conjunction with which the section is to be read.
“Residents not to apply for patents outside India without prior permission –
- (1) No person resident in India shall, except under the authority of a written permit sought in the manner prescribed and granted by or on behalf of the Controller, make or cause to be made any application outside India for the grant of a patent for an invention unless -
- (a) an application for a patent for the same invention has been made in India, not less than six weeks before the application outside India; and
- (b) either no direction has been given under sub-section (1) of Section 35 in relation to the application in India, or all such directions have been revoked.
- The Controller shall dispose of every such application within such period as may be prescribed:
Provided that if the invention is relevant for defence purpose or atomic energy, the Controller shall not grant permit without the prior consent of the Central Government.
- This section shall not apply in relation to an invention for which an application for protection has first been filed in a country outside India by a person resident outside India.
Permission for making patent application outside India under Section 39 –
- (1) The request for permission for making patent application outside India shall be made in Form 25.
- (2) The Controller shall dispose of the request made under sub-rule 1 within a period of twenty-one days from the date of filing of such request:
Provided that in case of inventions relating to defence or atomic energy, the period of twenty-one days shall be counted from the date of receipt of consent from the Central Government.
Significantly, the prohibition imposed by sub-section (1) of Section 39 extends to any person resident in India. In other words, it does not mean only persons or legal entities of Indian nationality but applies to anybody resident in India who makes an application for patent or who causes an application for a patent to be made in a country outside India. The reference to “who makes an application outside India” is not difficult to comprehend. However, the section includes even those “who cause an application to be made outside India”.
Clearly, the phrase “causes to be made” is the problem phrase in the section. Persons falling within this latter group would include any natural person or legal entity resident of India who enables an application to be made abroad and such a party would, apart from an applicant himself, include an inventor or other assignor of the rights to the invention or even an assignee having rights to the invention.
Sub-section 1 of Section 39 primarily requires a party resident in India who wishes to make an application for patent or cause an application for patent to be made abroad for an invention first of all to obtain the authority of the Controller to do so in the form of a written permit. In this connection, the law as contained in Section 39 (2) read with Rule 71 (2) [as recently amended] states that the time within which the Controller shall dispose of a request for permission to file an application for patent outside India before filing in India shall ordinarily be within a period of twenty-one days of the date of filing of any such request. Although our law prescribes a maximum period of twenty-one days, such permission is generally granted by the Controller within seven to ten days of the date of filing of any such request.
Sub-section 1 of Section 39 also affords such a party an alternative method of proceeding. This is for the party concerned first of all to file an application for patent in India and then, after a waiting period of six weeks, to file a corresponding application anywhere else in the world in any country or countries of his choice without having to require any permission whatever.
We consider it pertinent to mention here that since India is now a member of both the PCT and the Paris Convention, the earlier danger of a priority claim not being allowed from the date of a first filed Indian patent application [as India was not earlier a member of either convention] no longer exists.
It is appropriate also to inject a word of warning. If the terms of Section 39 are transgressed, that is to say, if someone resident in India were to file an application for patent for an invention abroad without first taking prior permission of the Controller or without first filing a corresponding application in India, the situation would invoke and bring into operation the penal provisions of Section 118 of our law. This last-mentioned section reads as follows:
“118. Contravention of secrecy provisions relating to certain inventions –
If any person fails to comply with any direction given under Section 35 [or makes or causes to be made an application for the grant of a patent in contravention of Section 39] he shall be punishable with imprisonment for a term which may extend to two years, or with fine, or with both.”
It will be gathered from this that the provisions of Section 39 are not such as to be taken lightly by any Indian resident who wishes to make an application for patent or cause an application for patent to be made in a country outside India. Of course, where an invention is created by any resident abroad, even Indians, the requirements of Section 39 cannot apply. This is clear from sub-section 3 of Section 39.