International Patent Application from India
Many companies/startups operating from India cater to foreign markets, especially the USA. Hence, such companies are keen on filing International patents outside India. Such companies/startups generally contemplate adopting the following options:
Option 1. File PCT Application
An Indian applicant can file a PCT application in the following manner:
a) Filing at Indian Patent Office [IPO]
In case filing at Indian Patent Office, the application should be accompanied by permission for foreign filing license under section 39. Such consent will be allowed or may be deferred after scrutinizing the invention details.
An international patent application can be filed in IPO as a receiving office in the PCT request form using PCT-SAFE. After the grant of such permission, the Patent Office India shall transmit the application to the IB. The applicant has to pay the prescribed transmittal fee in addition to the International Application fee and search fee.
b) Filing directly at WIPO
An international application can be directly filed in IB along with the prescribed fee in the PCT request form. Permission u/s 39 is required before submitting directly in IB. Such an application may also be filed ePCT.
c) Filing after a patent application in India
A PCT application can be filed anytime before the expiry of 12 months from the date of filing. File an international PCT application in IB of WIPO or an IPO as a receiving office. However, if the international filing is within six weeks from the date of filing in India, such filing shall be made after taking permission u/s 39 from the IPO.
An applicant has another option to file an International Application within twelve months from the filing date of the patent in India, directly in IB, claiming the priority of the previously submitted Indian patent application along with the prescribed application fee. A certified copy of the Indian application needs to be forwarded to IB within sixteen months from the date of priority.
In Option 1, the applicants need to file national phase applications in foreign countries within 30 or 31 months from the PCT filing date. To learn more about PCT filing, you may read the PCT Application in India.
Option 2: File patent applications in foreign countries without filing patent applications in India
When the second option is adopted, patent applicants have to complete a formality with the IPO before proceeding with patent application filing outside India. This formality has to be completed if one or more inventors in the patent application are residents of India. The formality requires the patent applicant to request the IPO to grant permission to apply for a patent outside India. The IPO generally gives the consent within 21 days from the date of making the request mentioned above. The IPO may reject consent if the subject matter is relevant for defense purposes and/or atomic energy.Option 3: File patent applications in India, and soon after, file patent applications in foreign countries
When the third option is adopted, patent applicants should not, immediately after filing the Indian patent application, apply for a patent outside India. If the patent applicant wishes to submit patent applications as soon as possible, then permission shall be sought from the IPO.
On the other hand, patent applicants can wait for six weeks from the date of filing the Indian patent application. And after that, proceed with foreign patent applications filing, if the IPO has not issued a notification in those six weeks to the contrary. This formality has to be completed if one or more inventors in the patent application are residents of India.
Once the IPO grants permission or six weeks have passed since the filing date, patent applications can be filed in one or more countries outside India.