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Patent criticality
Filing abroad first, without permission
My co-founder is in the US and their attorney wants to file there first. Is that a problem?
A person resident in India may not apply outside India for a patent without written permission from the Controller, unless an application for the same invention was filed in India at least six weeks earlier and no secrecy direction followed. Breaching it can still cost the Indian patent.
Who it catches
It is a rule about residence, not nationality and not employment. It catches Indian researchers collaborating with foreign institutions, Indian employees of multinationals whose group files in the United States as standard practice, and Indian founders of foreign-incorporated startups.
It is one of the least-known provisions in the Act and one of the most damaging, because by the time anyone notices, the foreign filing has happened.
The two lawful routes
Either file in India first and wait at least six weeks before filing anywhere else, with no secrecy direction imposed in that period. Or apply for written permission on the prescribed form before filing abroad - which is a short process, and is granted routinely for ordinary subject matter.
Where a foreign filing has already happened without either, take advice quickly. The position is fact-specific and the earlier it is addressed the better.
Sections 39, 40 and 118 of the Patents Act 1970; rule 71 and Form 25 of the Patents Rules 2003. Section 40 provides that a patent may be refused or revoked where section 39 is contravened.
The consequences under section 40 - refusal or revocation of the Indian patent - are unchanged.
The criminal exposure has been narrowed. The Jan Vishwas (Amendment of Provisions) Act, 2026, whose patent provisions took effect on 1 June 2026, added a proviso to section 118 removing criminal punishment for section 39 breaches where the Central Government forms the opinion that the invention was not relevant to defence or atomic energy. That removes the risk of imprisonment in ordinary cases. It does not remove the requirement, and it does not touch section 40 - the application can still be refused, and the patent can still be revoked.
Build a foreign-filing check into every collaboration agreement with an Indian-resident inventor.
Assuming section 39 applies only to sensitive technologies. It applies generally.
Any invention with at least one India-resident inventor where the first filing is planned abroad. The 2026 narrowing of criminal exposure is not a reason to stop asking.
List every pending foreign application with an India-resident inventor and confirm, for each, that India was first or permission was obtained.
Sources & further reading
- The Patents Act, 1970 (consolidated to 1 August 2024) — Official IP India text
- The Patents Rules, 2003, as amended (e-version updated to 15 March 2024) — Official IP India text
Related
Foreign filing permission
A person resident in India may not apply outside India for a patent for an invention without written permission from the Controller, unless an application for the sa…
Before filing outside India
The twelve-month priority window is effectively immovable, and section 39 catches Indian residents in a way most people never hear about.
Filing outside India without wasting money
By where a competitor would manufacture or sell, and where you could realistically enforce - then choose the route that fits how certain that list is.
Not sure whether this applies to your invention?
The honest answer usually needs someone to look at your actual disclosure, your timeline and the prior art. That is a conversation, not an article.
Educational guidance, not legal advice. This material is published by Ragulika IP for general education and information. It is not legal advice, it does not create a professional-client relationship, and it is not a substitute for advice on your own facts. Patentability, infringement, prosecution strategy and every other IP outcome turn on the specific facts and on the law and Patent Office practice as they stand at the time you act. Please take professional advice before making a decision, and read the underlying provision or judgment before relying on any point stated here.
Last reviewed by Ragulika IP on 2026-08-23. Indian patent law and Patent Office practice change; check the position before you rely on it.