Foreign Filing Licence: What Indian Inventors Must Know Before Filing Abroad
Section 39 in plain terms: the six-week rule, Form 25 permission, the common traps and the penalties for breach.
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- Advocate, intellectual property
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- Registered Patent Agent
- Updated
- · 7 min read
Under section 39 of the Patents Act, 1970, a person resident in India may not file a patent application outside India for an invention unless either an application for it was filed in India at least six weeks earlier with no secrecy direction, or the Controller has given written permission on Form 25. Breach can cost you the Indian application and a granted patent, and is punishable under section 118.
- Reviewed by
- Registered Patent Agent
- Last updated
On this page · 7 sections
What does section 39 require?
Section 39 is a security provision. It gives the Patent Office the chance to check whether an invention made in India is relevant to defence or atomic energy before it is disclosed abroad through a foreign patent application.
The rule applies to any person resident in India who makes, or causes to be made, a patent application outside India. Residence is what counts, not nationality: an Indian citizen living abroad is generally outside it, while a foreign national working in India is inside it. Because it covers anyone who "causes" an application to be made, it reaches Indian-resident inventors whose employer files abroad, even if the employer is a foreign company.
Such a person may file abroad only if:
- an application for the same invention was filed in India, often a provisional application, at least six weeks before the foreign application, and no secrecy direction under section 35 was issued (or all such directions have been revoked); or
- the Controller has granted written permission, applied for on Form 25.
Where the invention relates to defence or atomic energy, the Controller may grant permission only with the consent of the Central Government.
Six-week rule or Form 25: which route applies?
Both routes satisfy section 39. The choice depends on whether you want to file in India first.
| Six-week route | Form 25 permission | |
|---|---|---|
| What you do | File a patent application in India first | Ask the Controller for written permission |
| Earliest foreign filing | Six weeks after the Indian filing, if no secrecy direction | When permission is granted |
| Typical time | Fixed six weeks | Ordinarily decided within 21 days of the request (rule 71) |
| Defence or atomic energy | Secrecy direction possible during the six weeks | Needs Central Government consent; the 21 days run from that consent |
| Suits | Most Indian applicants, who file in India first anyway | First filing abroad, such as a US provisional or a PCT at WIPO |
Based on sections 35, 39 and 40 of the Patents Act, 1970 and rule 71 of the Patents Rules, 2003.
What happens if section 39 is not followed?
The consequences fall on both the Indian and the foreign side.
- Indian application. Under section 40, an Indian application for the invention may be treated as abandoned, and a patent on it refused.
- Granted Indian patent. Section 64(1)(n) makes breach of section 39 a ground for revoking an Indian patent.
- Criminal liability. Section 118 makes contravention punishable with imprisonment of up to two years, a fine, or both. A 2026 amendment under the Jan Vishwas (Amendment of Provisions) Act, 2026 adds a proviso: the punishment does not apply where the Central Government is of the opinion that the invention was not relevant for defence purposes or atomic energy at the time of the contravention. How that opinion is formed is not yet prescribed, so the safe course is unchanged: file in India first or obtain a licence.
Foreign patents are not directly affected under Indian law, but the loss of the Indian application can matter commercially, and a breach can surface in due diligence when the patent is licensed or the company is acquired.
Situations where it is easy to slip
- A founder in India files a US provisional directly with the USPTO before filing in India.
- A multinational files in its home country for an invention made by its research team in Bengaluru, Pune or Hyderabad.
- Co-inventors in several countries. One inventor resident in India is enough to bring section 39 into play.
- A PCT application filed directly with WIPO as receiving office, rather than with the Indian Patent Office.
- University and research collaborations with foreign partners who file in their own names.
How do you apply for permission on Form 25?
Step 1
Prepare a description
A description of the invention sufficient for the Controller to judge its subject matter, with drawings if any, and the applicant and inventor details.
Step 2
File Form 25
Filed online at the Indian Patent Office with the prescribed fee, through an agent or by the applicant.
Within about 21 days
Controller decides
The Controller ordinarily decides within 21 days. For defence or atomic energy, the period runs from the Central Government’s consent.
On permission
File abroad
File the foreign application or PCT. Keep the permission on file; it is often asked for in due diligence and by foreign attorneys.
Does a PCT application need a foreign filing licence?
Filing at the Indian receiving office
An international application filed with the Indian Patent Office as receiving office is filed in India. Filing a first PCT application with WIPO’s International Bureau, or with another receiving office, is a filing outside India and needs the six-week wait or Form 25 permission first. Our PCT page explains the receiving office choice.
How can R&D teams stay compliant with section 39?
A few habits in the invention disclosure process prevent nearly every section 39 problem.
- Record inventor residence. Capture where each inventor lives on the invention disclosure form, not only their employer or nationality.
- Decide the first filing office early. If any inventor is resident in India, plan an Indian first filing or a Form 25 request before the foreign attorney drafts anything.
- Diary the six weeks. Count six weeks from the Indian filing date and do not file abroad before it, unless permission has been granted.
- Keep the evidence. Store the Indian filing receipt or the Form 25 permission with the family file; acquirers and licensees ask for it.
- Brief foreign counsel. Tell foreign attorneys about the rule in writing so that continuation or divisional filings do not breach it.
Questions about the foreign filing licence
Does section 39 apply to foreign companies?
It applies to persons resident in India. A foreign company is affected when an inventor resident in India makes or causes the foreign filing, which is common for global R&D teams with members in India.
Can I file a US provisional application before filing in India?
Only with written permission on Form 25 if you are resident in India. The simpler route is to file a provisional in India first and file abroad after six weeks.
Is the six weeks counted from the provisional or the complete specification?
From the date the Indian application for the invention was filed, which can be a provisional application, provided it covers the invention being filed abroad.
Can permission be obtained after filing abroad?
Section 39 requires permission before the foreign filing. Requests for permission after the event are uncertain and depend on the facts, so the safe course is always to seek it in advance and to take advice at once if a filing has already been made.
Does the rule apply to design and trademark filings?
No. Section 39 applies to patent applications only. Trademarks and designs can be filed abroad without permission.
What does the Controller check on Form 25?
Whether the invention is relevant to defence or atomic energy and should be subject to secrecy. It is not an examination of patentability.
Does section 39 apply if the invention was made abroad by an Indian resident on a visit?
Residence, not the place of invention, is the test in the section. An inventor who is resident in India remains subject to it. Where residence is unclear, for example for staff on long secondments, take advice before the first filing.
