Recommended drafting practises for FFL disclosure

Section 39 of the Indian Patents Act, 1970 requires that a patent application shall not be filed outside India without permission from the Office of the Controller General of Patents, Designs & Trade Marks (Indian Patent Office or IPO). This is to ensure that any invention that could pose a threat to national security should not leave the country.

An application by a resident inventor shall not be first filed outside India without obtaining a foreign filing licence (FFL) from the IPO. Where the application is first filed in India, the applicant is required to wait six weeks for the IPO to assess the technical nature of the invention. The IPO will determine whether the invention relates to sensitive technologies, such as those in the defence or atomic energy sectors, and would have any adverse effect on national interests, if revealed abroad. If the application appears to be related to sensitive technology, the IPO may refer the application to the Ministry of Defence (MOD). The MOD will then review the patent application and provide clearance to the IPO to proceed further with the application.

Usually there are significant delays in receiving clearance from the MOD. During this period the patent application cannot be published, or if it has already been published, the IPO may give directions for prohibiting or restricting such publication. The applicant cannot even claim damages for this period even if the patent is eventually granted.The annual reports of the IPO between 2015 and 2018 show that it received 13,546 FFL applications. Of these, 12,823 were granted while 387 were referred to the MOD. Of these referrals, 215 were granted, two applications were denied, and 170 are still pending.

It is therefore crucial that the disclosure of the invention be properly drafted. The invention must be clearly explained and should not leave any doubt, particularly in respect to any potential applications. There are words, the mere mention of which, in the disclosure that will trigger a reference by the IPO to the MOD. For example, any invention relating to drones needs to be scrutinized by the MOD before it leaves the country. This makes sense considering that the operation of drones is not yet fully regulated and drones have recently been found surveying sensitive areas.

However, carelessly used words in the disclosure can lead to an unnecessary referral to the MOD with its associated delay. For example, an invention may relate to establishing communication between two devices, and the drafter may state that the communication device may include a cellular device, a tablet, a laptop or a drone. These are merely examples of communication devices and the invention does not even relate to drones as such. However, the presence of the word “drone” would likely lead to a referral by the IPO to the MOD. Similarly, such terms as UAV, unmanned aerial vehicle, flight control, aircraft, aviation, avionics, aeroplane, helicopter, glider, army, navy, air force, military, tank, gun, bomb, rifle, battle, war, warship, harpoon, radar, satellite, explosives, shooting, target, torpedo, grenade, or other weaponry in the disclosure will likely result in a referral by the IPO.

Nuclear or atomic energy applications involve materials, such as thallium, plutonium, uranium and thorium. The mention of these terms in the disclosure would be examined in context by the IPO for a referral to the MOD. In such cases, it is important that drafters clearly explain the context of the use of such materials in the invention and be extremely careful in using such terms when filing in India.

The applicant should not conceal any possible application of the invention to a field of sensitive technology from the IPO. However, it is a common practice to mention technical applications of the invention by way of examples in the disclosure, and due care should be taken while including such details. For example, technical applications may be mentioned in the disclosure which the applicant may not pursue or may not even be feasible. Such mention may just be an attempt to unnecessarily broaden the scope of the invention. In such cases, these terms or technical applications should be avoided.

National security is paramount, and applicants must therefore fully disclose all the details of their invention to the IPO. However, the applicant should avoid mentioning technical applications, where the intention is to unnecessarily broaden the scope of the invention, or where such application may not even be feasible. Otherwise, the invention may be closely scrutinized by the IPO and the MOD with a consequent waste of time and resources by those agencies.

Article by Joginder Singh and Piyush Sharma, first published in IBLJ