How to File Patent Application Outside India?

File Patent outside India?

Option 1: Submit a PCT application.

A PCT application can be filed by an Indian applicant in the following ways:

a) Application to the Indian Patent Office [IPO]

If the application is filed at the Indian Patent Office, it must be accompanied by a permission for foreign filing licence under Section 39. After scrutinising the invention details, such consent will be granted or deferred.

b) Direct filing with WIPO

An international application can be filed directly in IB with the PCT request form and the prescribed fee. Before submitting directly in IB, permission u/s 39 is required. This type of application can also be submitted via ePCT.

c) Submitting a patent application in India

A PCT application can be filed at any time before the 12-month period from the date of filing expires. As a receiving office, file an international PCT application with WIPO's IB or an IPO. However, if the international filing is made within six weeks of the date of filing in India, the IPO must grant permission under Section 39.

An applicant may also file an International Application directly in IB within twelve months of the filing date of the patent in India, claiming the priority of the previously submitted Indian patent application and paying the prescribed application fee. A certified copy of the Indian application must be sent to IB within sixteen months from the priority date.

Option 2: File patent applications in foreign countries without first filing in India.

When the second option is chosen, patent applicants must complete a formality with the IPO before filing a patent application outside of India. If one or more of the inventors on the patent application are Indian citizens, this formality must be completed. The formality requires the patent applicant to request permission from the IPO to apply for a patent outside of India. The IPO typically grants consent within 21 days of receiving the above-mentioned request. If the subject matter is relevant for defence and/or atomic energy, the IPO may refuse consent.

Option 3: File patent applications in India first, followed by applications in foreign countries.

When the third option is chosen, patent applicants should not apply for a patent outside India immediately after filing the Indian patent application. If the patent applicant wishes to submit patent applications as soon as possible, permission from the IPO must be obtained.