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Real-life scenario · fictionalised
The US filing that came first
An Indian engineer working from Hyderabad co-invents a scheduling algorithm with two colleagues in California. The company's outside counsel in the United States files a provisional at the USPTO as a matter of routine, listing all three inventors. Four months later the Indian entity asks about filing in India.
Is there a problem, and how serious is it?
Section 39 turns on residence
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 same invention was filed in India at least six weeks earlier and no secrecy direction followed.
The engineer is resident in India. No Indian application preceded the US filing and no permission was obtained. On the face of it, section 39 has been contravened.
Why nobody noticed
Because the decision was made by people for whom filing first in the United States is normal and unremarkable, and the Indian inventor had no reason to know that Indian law imposes a condition on him.
The consequences under section 40 include refusal or revocation of the Indian patent, and section 118 provides penal consequences. The position is fact-specific and needs advice quickly - the worst outcome is discovering it during litigation years later.
What should have happened
- Built a foreign filing check into the group's invention disclosure process, keyed to inventor residence.
- Applied for written permission on the prescribed form before the US filing - a short process, routinely granted for ordinary subject matter.
- Or filed in India first and waited the six weeks.
- Told the US counsel that an India-resident inventor was involved.
Section 39 is a rule about where your inventors live, not about what your invention is.
This scenario is a composite teaching example written by Ragulika IP. It does not describe any real client, application or matter, and any resemblance to a specific case is coincidental.
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
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It does not matter which country I file in first.
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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.
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.