Many patent applicants are unaware that even before seeking overseas protection, Indian law imposes a gatekeeper: a Foreign Filing Licence (FFL). Form 25 is the formal request for that licence. If you are a resident of India and intend to file a patent application abroad, Section 39 mandates that you first obtain permission via Form 25 (unless certain conditions are met). Failure to comply may jeopardise your rights in India and lead to penalties.
In this article, I explain the statutory basis of Form 25, its scope and exceptions, procedural steps, drafting considerations, risks of non-compliance, strategic tips, and common FAQs.
Legal Foundation: Section 39 & Rule 71
Section 39: Residents must seek permission
Section 39(1) of the Patents Act, 1970 states:
“No person resident in India shall, except under the authority of a written permit … make or cause to be made any application outside India for the grant of a patent for an invention unless -
(a) an application for a patent for the same invention has been made in India, not less than six weeks before the application outside India; and
(b) either no direction has been given under subsection (1) of Section 35 in relation to the application in India, or all such directions have been revoked.”Section 39(2) mandates that the Controller dispose of the permit request “within such period as may be prescribed,” but adds a proviso: for inventions relevant to defence or atomic energy, the Controller cannot grant the permit without prior consent of the Central Government.
Section 39(3) provides an exception: the prohibition does not apply “in relation to an invention for which an application for protection has first been filed in a country outside India by a person resident outside India.” In other words, if you are a non-resident (or the first filing was abroad by a non-resident), Section 39 does not apply.
Thus, the basic rule is: Indian residents must either file in India first or obtain a written permit (via Form 25) before filing abroad.
Rule 71: The procedure for the permit request
Rule 71 of the Patents Rules, 2003 prescribes:
The request for permission for making a patent application outside India must be made in Form 25.
The Controller shall dispose of the request within twenty-one days from filing, except for inventions concerning defence or atomic energy, in which case the countdown begins only after the Central Government’s consent.
Thus, the law gives a relatively short review window, and the Controller must act unless there are special national security concerns.
When is Form 25 Needed - Exceptions & Alternatives
You might wonder: Do I always need to file Form 25?
Here are common scenarios:
First filing in India, then wait six weeks: If you file first in India, and no secrecy direction is issued under Section 35, and six weeks elapse, you may file corresponding inventions abroad without further permission. This is a statutory “waiting period” route.
Invention by non-resident / first filed abroad: Section 39 does not apply if the invention was first filed outside India by a non-resident.
Defence / atomic energy inventions: Even if requesting Form 25, additional clearance by Central Government is mandatory.
Therefore, Form 25 is most relevant when you are an Indian resident and either you wish to bypass the six-week wait or you haven’t filed in India first.
Contents & Drafting of Form 25 Request
You can download the blank Form 25 - Request for Permission for Making Patent Application Outside India from the IPO website.
When preparing the request, ensure:
Title and brief description of the invention (summary, technical field).
Names, addresses, nationalities of inventors / applicants, especially those resident in India.
Intended jurisdictions / foreign countries in which the applicant plans to file patent requests.
Reason or justification why the applicant wishes to file outside India (e.g. market potential abroad, simultaneous filing strategy).
Power of attorney if an agent is filing on applicant’s behalf; often original signature must be submitted.
Because the Controller must evaluate the subject matter, the description should be sufficiently clear to assess whether the invention may raise national security concerns.
Controller’s Decision & Timeline
The Controller should ideally decide within 21 days of the Form 25 filing.
For inventions involving defence or atomic energy, the countdown begins only after the Central Government’s consent is received.
If permission is granted, you may proceed to file the application abroad in the specified jurisdictions.
If permission is refused (or conditions are imposed), those reasons should be communicated.
Once the permit is granted, it is considered a written authority under Section 39.
Consequences & Risks of Non-Compliance
Non-compliance with Section 39 may lead to serious legal consequences:
Imprisonment or fine under Section 118: Section 118 penalises a person who makes (or causes) a patent application abroad in contravention of Section 39. Penalty may extend to two years’ imprisonment, fine, or both.
Deemed abandonment or revocation under Section 40 / 64: If a foreign application is filed contrary to Section 39, the corresponding Indian application may be deemed abandoned, and any patent granted abroad may be subject to revocation.
Loss of priority or rights in India: Because non-compliance amounts to violating the law, domestic rights may suffer.
Thus, filing without the required permit is a serious risk to your patent strategy.
Strategic Considerations & Best Practices
File first in India: In many cases, it is safer and simpler to file a provisional or complete specification in India and wait the six weeks window to gain an “implied” permission to go abroad.
Early decision: If you plan foreign filings imminently, prepare and file Form 25 early to avoid delays.
Clear, concise disclosure: The version submitted with Form 25 need not be a full patent specification, but should sufficiently describe the invention so that the Controller can assess its subject matter.
Multiple jurisdictions: You may list multiple foreign countries in the request, but ensure that the description addresses relevant technical features.
Monitor response timeline: If no reply is received in 21 days (or appropriate extended period for defence cases), you may follow up or escalate.
Caution with modifications: If you later make improvements or variants and want to file abroad further, fresh permission under Form 25 may be needed for the new matter. (Some practitioners treat it conservatively)
FAQs
Q. Do I always need Form 25 if I’m Indian and want foreign patent protection?
Not always. If you file first in India and six weeks pass without direction under Section 35, you may proceed abroad without further permission. But if you plan to file abroad before or within six weeks, you must file Form 25.
Q. What if the invention is in defence or atomic energy?
Even with Form 25, permission depends on Central Government’s consent, and the 21-day timeline starts only after that consent.
Q. What is the term “resident” in Section 39?
Patents Act does not define “resident.” In practice, Indian tax law residency criteria (number of days in India) are used as a guide.
