Key Terms of Patent Act # 18: Secrecy Directions

1. Term #18
Secrecy Directions
u/s (35 – 42) of
Indian Patents Act 1970
Key Terms of Indian Patents Act
Ms Bindu Sharma, Founder & CEOSpeaker
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2. • The patent application is published in
official website of the patent office
after expiry of 18 months from date
of filing or date of priority, whichever
is earlier.
• In case of the inventions, which are
considered by Central Government as
relevant for national defence and
security, Patent Act 1970 provides for
secrecy directions, meaning that
such inventions shall not be
published till the time it is
considered relevant for national
defense.

3. Secrecy directions relating to
inventions relevant for
defense purposes - S. 35
• Inventions relevant to national defense
and security are not published even
after expiry of 18 months from date of
filing.
• The Controller may give directions for
prohibiting or restricting the publication
of information with respect to the
invention and may impose secrecy
direction on such inventions.

4. Secrecy directions relating to inventions
relevant for defense purposes - S. 35
• Controller gives notice of the application /
directions to the Central Government.
• The Central Government shall decide whether the
publication of the invention would be prejudicial to
the defense of India or not.
• If the publication of the invention doesn’t appear
to be so prejudice, notice to the Controller shall be
given by the Central Government; the Controller
shall revoke the directions and notify the applicant
accordingly.

5. Secrecy directions to be
periodically reviewed - S. 36
• Periodically reviewed by Central Government.
• If invention no longer is prejudice to national
defense and security, the secrecy directions are
revoked.
• If the patent application was made by a foreign
applicant and the invention was found
published outside India, the Central
Government shall give notice to the Controller
to revoke the secrecy direction.

6. Secrecy directions to be
periodically reviewed - S. 36
• Reconsidered by the Central Government at
intervals of 6 months or on a request made
by the applicant.
• If request of the applicant is found to be
reasonable by the Controller or if it appears
to the Central Government that the
publication of the invention would no longer
be prejudicial to the defense of India or in
case of an application filed by a foreign
applicant, it is found that the invention is
published outside India, it shall give notice
to the Controller to revoke the direction and
the Controllers, shall revoke the directions
previously given by him.

7. Communication of result
of reconsideration under
section 36(2) - R. 72
• The result of every re-consideration of
the invention regarding relevance for
secrecy directions shall be
communicated to the applicant within
15 days of the receipt of the notice by
the Controller.

8. Consequences of secrecy
directions - S. 37
• No patent shall be refused the grant by
the Controller till the time secrecy
directions are imposed on the application.
• The orders passed by the Controller in
this regard cannot be appealed.
• The application may proceed up to the
stage of grant of the patent, but the
application and the specification found to
be in order for grant of the patent shall
not be published, and no patent shall be
granted in pursuance of that application.

9. Consequences of secrecy
directions - S. 37
If during the continuance in force of the
directions, any use of the invention is
made by or on behalf of, or to the order
of the Government, the provisions of
sections 100 &103 shall apply in relation
to that use as if the patent had been
granted for the invention.

10. Consequences of secrecy
directions S. 37
• If it appears to the Central Government
that the applicant for the patent has
suffered hardship due to secrecy
directions, the Central Government may
make to him reasonable payment by way
of solatium.
• Where a patent is granted in pursuance
of an application in respect of which
directions have been given (Section-35),
no renewal fee shall be payable in
respect of any period during which those
directions were in force.

11. Revocation of secrecy directions
and extension of time - S. 38
When secrecy direction is
imposed and later revoked, the
Controller may extend the time
within which any step or any
act shall take place.

12. Residents not to apply for patents outside India without
prior permission - S. 39
Resident of India but want to file in foreign
country
• He should either file application in IPO &
wait for 6 weeks to receive any objections or
take permission from IPO to file patent
application in foreign country.
• Contravention of Section-39 may result in
imprisonment for 2 years or fine or both
[Section-118, Contravention of secrecy
provisions relating to certain inventions]
Resident of India
File application in
India and wait for 6
week
Take Foreign Filing
permission (Form
25)

13. Residents not to apply for
patents outside India without
prior permission - S. 39
• If the invention is relevant for defense
purpose or atomic energy, the Controller
shall not grant permission to file patent
in foreign country without the prior
consent of the Central Government.
• 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.

14. Foreign Filing Permission: Form/ Fee/ Time
Form
Form-25
Fee
Natural person/start up
1,600 INR
Small entity
4,000 INR
Others except small entity
8,000 INR
10% additional fee respectively in case of filing by physical mode

15. Liability for contravention of
section 35 or section 39 - S. 40
If applicant violates any of the directions under
Section 35 or 39, the application of patent is:
• Deemed to be withdrawn or
• If the patent has been granted already, it
is deemed to be revoked.
These provisions are in addition to the penalty
that may be imposed under section 118 which
includes imprisonment for a term which may
extend to 2 years or fine or both.

16. Finality of orders of Controller
and Central Government - S. 41
Orders of the
Controller /
Central
Government
Final & shall not be
called in question
in any court on any
ground.

17. Savings respecting disclosure
to Government - S. 42
Controller can disclose information
concerning the application or a
specification filed to the Central
Government for the purpose of the
application or specification being
examined for considering whether an
order for secrecy direction should be
made or whether an order so made
should be revoked.

18. • Secrecy direction, primary has been introduced to
ensure that filing patents on sensitive subject
matter is not a threat to national defence and
security.
• Controller and Central Government has powers to
restrict publication of such applications and impose
secrecy directions
• Further, the Controller shall have knowledge about
the patent applications, filed in foreign country, by
the residents of India.

19. Question
Who decides whether the invention
relating to defense purposes would be
prejudicial to the defense of India or
not?
a. Controller
b. Applicant
c. Central Government
d. Examiner

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