In Selfdot Technologies (OPC) Pvt. Ltd. v. Controller General of Patents, Designs & Trademarks, [order dated November 28, 2023],the Madras High Court has adjudicated on Section 39 and 40 of the Indian Patents Act and held that the breach committed by the appellant was a technical breach and cannot be considered a contravention of Section 39 of the Patents Act, 1970, and hence cannot trigger deemed abandonment under Section 40.
Section 39 of the Patents Act requires a person resident in India to obtain a written permit (foreign filing license) from the Controller before making an application for a patent outside India. If an Indian resident files a patent application outside India without obtaining the said permit, then that person is liable for penalty under Section 118 of the Patents Act. Also, Section 40 lists further repercussions for breaching the provisions of Section 39, according to which, an application filed in India shall be abandoned and the granted patent shall be revoked.
In the present case, the appellant had filed a patent application before the Indian patent office (the parent invention), followed by a PCT application, and an application before the US Patent office. Subsequently, in relation to the US application, a continuation-in-part (CIP) (US equivalent to Patent of addition) application was first filed before the US authority, without seeking prior written approval under Section 39. Thereafter, a corresponding patent application was filed as a patent of addition to the parent application before the Indian Patent office. The Indian Patent office rejected the patent of addition application on grounds of contravention of Section 39. The appellant approached the Madras High Court in an appeal against this order.
The High Court considered Section 54-56 of Indian Patents Act, 1970, relating to patent of addition, along with the above facts of the case. It was held that Section 40 provisions apply to situations involving clear breach of the requirement of the written permit (consent from the Central Government), related to inventions in all fields, including in the specific context of inventions relevant for defence purposes or atomic energy. The provision does not encapsulate procedural irregularities within its ambit.
The High Court also noted that as per the provisions relating to patent of addition, the subject matter of a patent of addition is capable of getting an independent patent. The Court further noted that patent of addition requires additional disclosures, in addition to complete specifications of the parent invention and thus Section 39 would apply to patent of addition and it stands on a different footing than divisional application under Section 16 of the Act.
The High Court, however, allowed the appeal and was of the opinion that the appellant did not intend to circumvent the provisions of Section 39 and that there was credibility in the assertion of bona fide belief that permission under Section 39 was not necessary in the case of filing a CIP (or patent of addition) application as the parent application was first filed in India.
The expression “any application for the grant of a patent for an invention” under Section 39(1) does not exclude an application for ‘patent of addition’ or CIP. The High Court clarified that despite filing a parent application in India before entering the national phase outside India, Section 39 requires an Indian resident to obtain permission for filing of CIP application outside India. It was held that the breach committed by the appellant would qualify as a technical breach, but it would not be considered a contravention of Section 39. The High Court set aside the impugned order and remanded the application for reconsideration.
 Section 39, Indian Patents Act-
(1) No person resident in India shall, except under the authority of a written permit sought in the manner prescribed and granted by or on behalf of the Controller, 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 sub-section (1) of section 35 in relation to the application in India, or all such directions have been revoked.
(2) The Controller shall dispose of every such application within such period as may be prescribed:
Provided that if the invention is relevant for defence purpose or atomic energy, the Controller shall not grant permit without the prior consent of the Central Government.
(3) This section shall 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.
 Section 118, Indian Patents Act-
If any person fails to comply with any direction given under section 35 or makes or causes to be made an application for the grant of a patent in contravention of section 39 he shall be punishable with imprisonment for a term which may extend to two years, or with fine, or with both.
 Section 40, Indian Patents Act-
Without prejudice to the provisions contained in Chapter XX, if in respect of an application for a patent any person contravenes any direction as to secrecy given by the Controller under section 35 or makes or causes to be made an application for grant of a patent outside India in contravention of section 39 the application for patent under this Act shall be deemed to have been abandoned and the patent granted, if any, shall be liable to be revoked under section 64.