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Applying for a Patent Foreign Filing License Vs. 6 Weeks Prior Filing in India

As we all know that as per section 39 of the Indian Patent Act, 1970, it is a requirement to file a patent application in India for an invention 6 weeks prior of its filing outside India. Or a written permission has to be obtained from the Controller to file a patent application outside India by residents in India. An important question crops up in my mind that which method is best? and which approach should be adopted keeping in mind the advantages of such a method.
It is important for me to discuss here a case which answers this question. A well-known case of Mr. Puneet Kaushik Vs Union of India comes to my mind while discussing about this question.
It was cleared in this case that, while it is necessary to obtain a foreign filing license in order to file an application under PCT by a person resident in India, it is also important to note that an application made under PCT should not be considered as an “Indian filing”, if the PCT application is filed with Indian Patent Office as a receiving office. This was further cleared by Delhi High Court in the case filed against the Union of India by Mr. Puneet Kaushik. Mr. Kaushik had filed a PCT application on 14 September 2012 with Indian Patent Office as a receiving office coupled with Form-25 for obtaining foreign filing license for the same application. The patent office granted foreign filing license on 27th September 2012. Mr. Kaushik claimed that the international filing date should be 14 September 2012. However, the court did not approve of this and held that the international filing date would be 27th September 2012, the date on which foreign filing license was granted. The court also pointed out that had the applicant filed the application first in India, then after 6 weeks filed a patent application for the similar invention outside India, then, in that case, the backdating would have been accorded to the applicant as an international filing date.
Therefore, it is clear from the Delhi high court decision that an applicant has to obtain a foreign filing license first from the Indian Patent office and then he/she has to file an application under PCT, which obviously could lead to a delay of few more days to get an international filing date. In such cases, it is advisable to file a patent application for an invention in India first and then file a PCT application after 6 weeks, in order to get an international filing date accorded as early as possible. Thus, this leads to discrimination between these two methods making it safer for an applicant to opt for filing an application in India first to get an international filing date of backdating.

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