In its decision dated 28.09.2023 in Selfdot Technologies (OPC) Pvt. Ltd. v. Controller General of Patents, Designs & Trade Marks (T)CMA(PT)/61/2023, the Madras High Court has held that the failure to seek a foreign filing license (FFL) in respect of a patent of addition did not amount to contravention of the substantive provisions of Section 39, but only a technical breach/procedural violation.

In the instant case, the applicant had first applied for a patent in India for the parent invention and had thereafter filed a PCT application pursuant to which it had secured a US patent. Thereafter, the applicant decided to apply for a continuation-in-part (CIP) application directly in the USPTO without prior clearance from the Indian Patent Office. Pursuant to the grant of the CIP patent in the US, an application for a patent of addition was made in India. The application for a patent of addition in India was deemed to have been abandoned by the controller under Section 40 of the Patents Act on the ground of contravention of section 39.

Having heard arguments, the Madras High Court examined the relevant provisions and the history of amendments under Sections 39, 40 (relating to foreign filing license) and 54-56 (relating to patents of addition) and decided the issue whether: “any application for the grant of a patent for an invention” in sub-section (1) of Section 39 would apply to a patent of addition whether the expression”.

The Court concluded that the words “contravention of Section 39” in Section 40 are intended to apply to situations where there was a clear and substantive breach of the written prior consent requirement of the Central Government under Section 39 in respect of inventions in all fields as opposed to procedural irregularity. As the Applicant had already filed in India first for the parent invention, there is credibility in the assertion that the Applicant did not intend to circumvent the provisions of Section 39 and had bona fide belief that it did not need to seek a FFL for filing a patent of addition. Accordingly, the breach committed by the appellant would, at worst, qualify as a technical breach but would not trigger the deemed abandonment under Section 40, and recourse may be taken to provisions applicable for procedural violation.

In holding that the reasoning of the impugned Order cannot be faulted and the absence of seeking FFL in a Patent of Addition constituted a breach (even though a technical breach and not a substantial breach), the Court upheld the requirement of seeking an FFL in an application for a Patent of Addition.

Patent Law is continuously evolving to address new issues and thus, for situations, where a patent application does not have subject matter requiring permission under section 39 and considering that a patent of addition application in respect of said patent application would relate to only additional features of the invention disclosed in the parent application, more clarity may be seen in the interpretation of section 39 and 40 in future litigations.