Filing Patents of Addition abroad also requires Foreign Filing Licenses

Filing a patent in your home jurisdiction is merely the beginning of building a patent portfolio. Depending on the subject matter of the patent, and the business model, it would be strategic to also file related patents abroad. 

What are FFLs?

In India, Section 39 of the Patents Act, 1970 (“the Act”) requires that a patent applicant seek written permission from the Indian Patent Office (“IPO”) before filing a patent  application outside the country (commonly known as a “foreign filing license”, or “FFL”). (A list of FAQs on the subject is here: https://www.obhanandassociates.com/blog/foreign-filing-license/).

An FFL is only granted if either no secrecy direction (issued under Section 35) has been given by the Controller for an invention relevant for defence purposes, or a previously-issued secrecy direction has been revoked. In any event, if the invention is so relevant, the Controller grants an FFL only after obtaining permission from the Central Government.

Further, Section 118 of the Act generally provides for a fine or imprisonment for not complying with the foreign filing requirements. Most importantly, Section 40 provides that not seeking an FFL will result in the Indian application being deemed abandoned, or liable to be revoked (under Section 64). 

FFLs for Patents of Addition

While the law is clear on the requirement for FFLs for a main patent, there are doubts about whether derivative patents filed in the home jurisdiction also require FFLs. This note discusses the requirement of an FFL for a specific type of derivative patent, i.e., Patents of Addition.

Patent applications filed for an improvement in an earlier-filed patent application filed by the same applicant are referred to as ‘Patents of Addition’ or ‘improvement patents’. A Patent of Addition shares similarities with a Continuation-in-Part (CIP) application under practice in the United States (“US”). Both serve as applications for modifying or improving an existing patent application.

The question of whether a separate FFL is required for an improvement patent when such a license was already granted for the main patent application came up for consideration in an appeal before the Madras High Court, in the case of Selfdot Technologies (OPC) Pvt. Ltd. v. Controller General of Patents, Designs & Trademarks, 2023 SCC OnLine Mad 7520. 

The Selfdot case

The Appellant first filed a patent in India, followed by a PCT application, which eventually led to the grant of a US patent. Without obtaining a FFL, the Appellant then filed a Continuation-in-Part (CIP) application in the US and later applied for a corresponding Patent of Addition in India. The Controller rejected the Patent of Addition application on the ground of violation of Section 39 of the Act, emphasising that:

  1. the mandate of Section 39 is clear and applies to patent of addition;
  2. Patents of Addition differ from divisional applications for which FFLs are not necessary.

A key basis for the Court’s decision was its view that Patents of Addition involve additional disclosures beyond the patent for the main invention, thus requiring separate permissions for FFLs. Such patents are, according to the Court, different from Divisional Applications which pertain to matters already fully disclosed in the main patent.

Delving into legislative history, the Court observed that Section 40 (which provides for deemed abandonment of patent applications, or revocation for granted patents) originally applied only to a contravention of secrecy directions (under Section 35). However, with the 2002 amendment to the Act, Section 40 was expanded to include contraventions of Section 39. At the time, Section 39 dealing with FFLs was also limited: to inventions relevant for defence purposes or related to atomic energy. The presumed logic was that, the requirement for obtaining FFLs in cases involving such patents had to be especially strict, given the potential harm to national interest, and hence, non-compliance would carry severe consequences like patent abandonment or revocation.

However, with a subsequent amendment of the Act in 2005, Section 39 was also amended, this time, to include inventions in all fields, while maintaining the additional condition of obtaining permission from the Central government in cases of defence or atomic energy-related patents. But no corresponding amendment was made to Section 40. Thus, the scope of Section 40 was effectively further widened in 2005, to include all cases where an FFL was not obtained, without specific reference to any specific subject matter. The Court accordingly concluded that “contravention of Section 39” under Section 40 denotes substantial and clear breaches and not just technical or procedural irregularities.

The decision and its implications 

What eventually worked in the Appellant’s favour was its defence: that, as it had obtained an FFL for the main invention, the Appellant bona fide believed that a further FFL was not required for a corresponding Patent of Addition. Even as the Court concluded that the law required an FFL for Patents of Addition, it admitted that the relevant statutory provision (Section 39) was ambiguous enough to require judicial interpretation as to whether it applied to Patents of Addition. Combined with the finding that the Appellant’s omission was bona fide, the Court deemed the Appellant’s actions, at worst, a technical breach, that did not warrant the drastic consequences stipulated under Section 40. 

Nevertheless, for practitioners and patent applicants, this decision of the Madras High Court clarifies that a separate FFL is clearly required under Section 39 of the Act for a Patent of Addition. Failing to obtain such a license would open up an application to abandonment or a granted patent to revocation. Sound strategy when building a multi-jurisdictional patent portfolio would thus require filing abroad only after such licenses are obtained and in order.