File a Patent Abroad: Routes and Strategy
You are filing a patent outside India from an Indian priority application. This page covers two route decisions and one statutory gate: whether to file via PCT or direct national filings under the Paris Convention, and whether a foreign filing licence under Section 39 of the Patents Act, 1970 is required first. The route decision is time-bound where a priority deadline is approaching, and Section 39 must be cleared before any foreign filing where it applies.
Speak to a Patent AgentPCT International Filing Timeline
When direct national filing abroad is the right choice
Direct national filing means filing in each foreign country individually under Article 4 of the Paris Convention, which preserves priority for 12 months from the priority date. This route fits when:
Jurisdictional list is short — direct Paris Convention filings often produce comparable coverage at lower cost when only one to three jurisdictions are involved, because the PCT international and search fees do not arise.
Speed to grant in a specific country matters for licensing or enforcement.
Applicant is already confident about which markets to protect. The trade-off is decision pressure: the Paris Convention period is firm, and translation, claim adaptation, and local agent appointment must complete inside it.
Direct filing also remains the only option for the small number of jurisdictions that are not PCT contracting states. Once the period lapses, restoration of priority is generally not available.
When the PCT route abroad is the right choice
A PCT international application fits where:
Wider jurisdictional spread — a single PCT filing made within 12 months of the Indian priority date secures the right to enter national phase in over 150 contracting states.
Country-selection decisions need more time — the roughly 18-month interval between PCT filing and national-phase entry can be used to commission patentability or freedom-to-operate searches and observe market traction.
Foreign-stage budgets must stage across years rather than concentrate in the priority year — national-phase deadlines are typically 30 months from priority, 31 months for India under Rule 20(4) of the Patents Rules, 2003.
The PCT filing does not itself grant an international patent; national and regional offices retain full authority over examination and grant. File a PCT International Application covers the PCT route in detail.
The foreign filing licence gate
Section 39 of the Patents Act, 1970 must be checked before any person resident in India makes, or causes to be made, a patent application outside India. Compliance has two routes: file in India first and wait six weeks with no secrecy direction in place, or obtain written permission from the Controller through a prescribed written request before the foreign filing is made.
Place of incorporation is not dispositive. If an inventor or applicant is resident in India, Section 39 must be cleared even where the named applicant or assignee sits outside India. Non-compliance has consequences: deemed abandonment of the Indian application under Section 40, revocation exposure under Section 64(p), and penal exposure under Section 118. Intepat assesses the position case by case, prepares the Foreign Filing Licence in India request where required, and aligns the permission date with the proposed PCT or direct filing date.
What Intepat handles in India
Intepat acts as the India-side coordinator for foreign filing. Pre-filing and filing-stage scope covers:
Section 39 assessment and foreign filing licence preparation where required
PCT versus direct national filing advice across candidate jurisdictions
Specification and claim review against target-jurisdiction examination practice — software, AI, and computer-implemented inventions face different claim form between India, the USPTO, and the EPO, and the priority document benefits from pre-filing review where multi-jurisdictional filing is contemplated
Selection and instruction of foreign associates — for PCT, Intepat files at the Indian Receiving Office; for direct national filings, Intepat instructs the foreign agent of record and runs the chain of priority through to prosecution
What is handled by foreign associates
Examination, prosecution, and representation in any foreign jurisdiction are handled by associate counsel admitted there. The work includes filing translations, responding to office actions, attending examiner interviews, paying maintenance fees, and managing local registry interactions. Intepat selects associates by practice depth, runs conflict checks before briefing, briefs them with the prosecution context built up in India, and reviews their drafts of office action responses for consistency with the India position.
Who this is for
Related IP services
Foreign Patent Filing FAQs
PCT or direct national filing, how do I choose?
The choice turns on four variables: how many jurisdictions are in scope, how firm the country list is, how foreign-stage spend needs to phase, and whether speed to grant in any single country is commercially material. A short, firm list of one to three jurisdictions, or a need for fast prosecution for licensing or enforcement, points to direct filing. A longer or open list, or a need to defer country-by-country spend, points to PCT followed by national-phase entries.
Do I need a foreign filing licence to file abroad from India?
A Section 39 assessment is required where any applicant or inventor resident in India intends to file, or cause to be filed, a patent application outside India. Compliance has two routes: file in India first and wait six weeks provided no secrecy direction has issued, or obtain written permission from the Controller before the foreign filing. Non-compliance can result in deemed abandonment under Section 40, revocation under Section 64(p), and penal exposure under Section 118.
How are claims adapted for foreign jurisdictions?
Claim sets that work in India do not always travel cleanly. Software and AI inventions face Section 3(k) framing in India, subject-matter framing under Alice in the United States, and the technical-effect test under Article 52 EPC at the EPO; each calls for different claim form. Intepat's pre-filing review covers fallback positions, multiple claim categories, antecedent basis, drawing support and reference numerals, and added-matter risk before the foreign filing package is released.
Can Intepat file directly in foreign patent offices?
Direct filing in foreign patent offices is handled by associate counsel admitted in those jurisdictions; Intepat is the India-side coordinator, not a filer of foreign national applications. The exception is the PCT international application: where India is the Receiving Office, Intepat files directly with the Indian Patent Office in that capacity. For Paris Convention direct filings, Intepat selects and briefs the foreign associate, prepares filing-ready documents in India, and stays the single firm the applicant deals with through examination.
How are foreign filing costs structured?
Foreign filing costs separate into three buckets. The India-side bucket covers Intepat fees, foreign filing licence preparation if needed, and PCT international application official fees. The foreign-jurisdiction bucket covers associate fees plus official fees in each country, paid at national-phase entry or at direct filing. Translation costs arise in non-English jurisdictions. A country-wise estimate is prepared once jurisdictions, specification, and route are known.
Outline Your Foreign Patent Filing Requirements
Send your details and a Patent Agent will respond within one business day. All consultations are confidential.