I filed a patent abroad without permission from the Indian Patent Office. What now?
Section 39 requires a person resident in India either to obtain written permission before filing abroad, or to file in India first and wait six weeks. If neither happened, any Indian application for that invention is treated as abandoned, an Indian patent already granted becomes liable to revocation, and the contravention is a punishable offence. This is not a defect that can be quietly corrected later.
What the law actually says
Section 39 exists so that India gets the first look at inventions made by its residents, and so that the secrecy machinery for defence-sensitive subject matter has a chance to operate. It offers two lawful routes. The first is written permission from the Controller, obtained in advance on Form 25 under Rule 71, commonly called a foreign filing licence. The second costs nothing: file in India first, allow six clear weeks to pass, and file abroad provided no secrecy direction under Section 35 is in force.
The section catches people, not companies. It applies to a person resident in India who makes, or causes to be made, an application outside India. An Indian-resident inventor employed by a foreign parent is caught even though the applicant on the foreign filing is the parent. It also applies to any invention. The section does not ask whether the subject matter is sensitive; that assessment is what the permission process is for.
Section 40 sets out the civil consequence. Where an application is made abroad in contravention of Section 39, the Indian application for that invention is deemed to have been abandoned, and any patent granted in India on it is liable to be revoked. Section 64 lists the contravention as a ground on which a granted patent can be revoked. Section 118 makes contravention a punishable offence, and the penalties have been revised in recent years, so the current text has to be read rather than remembered.
The uncomfortable part is that the Act provides for permission before the foreign filing. It does not set out a procedure for permitting a filing that has already been made. A Form 25 filed today does not retrospectively authorise something done last year. Anyone in this position needs a patent professional to look at the actual dates, the residence position of each inventor, and where the invention was made, because those facts decide whether there was a contravention at all.
What follows from it
- Any Indian patent application for that invention is deemed to have been abandoned under Section 40.
- Any Indian patent already granted for it is liable to be revoked, and Section 64 makes the contravention an express ground.
- Contravention is a punishable offence under Section 118, and the exposure falls on individuals as well as on the company.
- Where a secrecy direction under Section 35 was in force at the time, the position is more serious again.
- The defect is disclosable. Investors, acquirers and licensees ask for foreign filing licences in diligence, and the answer affects valuation and warranties.
- The foreign patent itself is generally untouched by Indian law, so the company can end up holding rights everywhere except its home market.
What options exist
Establish whether there was actually a contravention Usually available
This has to come first. The questions are factual: was each inventor resident in India at the relevant time, was an Indian application filed for the same invention, did six clear weeks pass before the foreign filing, and was any direction under Section 35 in force. Suspected contraventions sometimes turn out not to be contraventions once the dates are laid out. Only a patent professional working from the actual file can answer this.
Apply for permission covering the filings still to come Usually available
Where further foreign filings are planned in the same family, a request on Form 25 under Rule 71 should be made before they are filed. Rule 71 requires the Controller to dispose of the request within twenty-one days, counted differently where consent relating to defence or atomic energy is needed. This does not cure what has already happened, but it stops the problem growing with each new jurisdiction.
Approach the Controller about the filing already made Rarely available
Some applicants have written to the Controller setting out the circumstances and asking for permission after the event. The Act does not provide for this and there is no entitlement to it. Whether such a request is entertained, and what weight it later carries with a court considering revocation, are open questions. It should be understood as an attempt to build an honest record, not as a cure.
Plan around the Indian position Limited
Where the Indian application is already treated as abandoned, the practical question becomes what, if anything, can still be protected in India. Later developments that were not disclosed in the earlier specifications may be filable on their own merits, subject to the usual prior art analysis. The commercial consequence of having no Indian right also needs to be planned for, in contracts and in disclosure to counterparties.
The labels above describe how often a route is realistically available in general practice — not a prediction about your matter. Relief that depends on the Controller's discretion is never an entitlement.
How to stop it happening again
- Before any foreign filing, ask whether any inventor was resident in India when the invention was made. Nationality is not the test and neither is the applicant's country.
- Where an Indian application is filed first, count six clear weeks, record the date on the file, and do not file abroad before it.
- Where a foreign deadline falls sooner than that, apply on Form 25 under Rule 71 rather than filing and hoping.
- Tell foreign counsel about the Indian residence position in writing. They generally do not know to ask, and they will not raise it.
- Keep the permission, or the evidence of the six-week gap, with the family file. Diligence teams ask for it years later.
A Bengaluru drone team and a United States provisional
Two engineers resident in Bengaluru, working for the Indian subsidiary of a United States company, developed a rotor control method. The parent's counsel filed a United States provisional application first, as it did for every invention across the group. Nobody asked where the inventors lived. No Indian application had been filed, and no request on Form 25 had been made. Two years later the group entered the Indian national phase, and the Indian agent asked for the foreign filing licence. There was none. Counsel reviewed where each inventor had been resident, when the invention was made, and the exact filing dates. The Indian application was exposed under Section 40, and the position had to be disclosed during a funding round. The United States patent was unaffected by Indian law. This is a simplified illustration. Whether a contravention occurred in any real matter is a question of fact that only a professional can assess.
Simplified illustration only. Actual outcomes depend on the facts.
Questions people ask
Does Section 39 apply even if the invention has nothing to do with defence?
Yes. The section does not distinguish between sensitive and ordinary subject matter. The secrecy directions in Chapter VII are aimed at inventions relevant for defence purposes, but the permission requirement in Section 39 applies to residents generally, whatever the invention is about. That surprises many founders and many foreign counsel. A software or consumer-product invention made by an Indian-resident inventor is subject to the same requirement as anything else.
Who counts as a person resident in India?
The Act speaks of a person resident in India, and residence is a question of fact rather than of nationality or citizenship. An Indian citizen living abroad long-term and a foreign national living and working in India can each fall on the side people do not expect. Duration, purpose of stay and the person's settled place of living all matter. Because the answer decides whether Section 39 applied at all, it is one of the first things a patent professional should examine on the actual facts.
Can permission be granted after the foreign filing has already happened?
The Act provides for written permission obtained before the foreign application is made. It does not contain a mechanism for authorising a filing already made, and a later Form 25 does not undo an earlier act. Some applicants have written to the Controller explaining the circumstances, and being candid may help the overall record. It should not be presented, by anyone, as a step that clears the contravention or removes the ground of revocation.
Does this affect my United States or European patent?
Indian law does not directly invalidate a patent granted elsewhere. The consequences under Sections 40, 64 and 118 attach to the Indian application or patent and to the person who contravened the section. In practice, though, foreign rights are affected indirectly: acquirers and licensees look at the whole family, and an unresolved Section 39 problem in the home jurisdiction is a diligence issue wherever the deal is being done.
How long does a Form 25 request usually take?
Rule 71 requires the Controller to dispose of a request for permission within twenty-one days from the date it is filed. Where the invention relates to defence or atomic energy and the consent of the Central Government is needed, the period is counted from the receipt of that consent, which can extend the real timeline. Applicants planning a foreign filing on a tight convention deadline should allow for this rather than assuming the shortest period will apply.
Worried about a foreign filing made without Indian permission?
MYCrave Consultancy & Services can review the residence position and filing dates across your family.