FAQs – 2nd October, 2017
If you have a question that is not addressed below, an answer you don’t understand or any other feedback, please let the us know.
1. What can be patented?
Any new knowledge that is generated in IISc is IP or intellectual property. When you file for a patent you get an IP right that protects your property. All new knowledge can be protected subject to certain requirements (see section II on patentability). This includes new products, processes and designs.
2. Can I publish a paper before filing a patent?
No. The paper will become prior art. You cannot publish first if you want to file for a patent. You can publish only after a provisional patent, a full patent or a PCT (see section III) is filed.
3. I have an idea, how do I file a patent?
The first step in filing an IISc patent is to file a disclosure. You can upload your disclosure online here. Currently only IISc staff members can register and hence disclosures can only be uploaded against their login ids. If you are a student and your advisor is not a co-inventor contact the IPTeL to file your disclosure and enter it into the IISc IP process.
You can download the disclosure MS Word format from here if you want to work on it offline and then cut and paste from there. It is essential to upload your final disclosure through our online portal so that a docket number is generated. This docket number is the reference number that the IPTeL will use to track your IP.
4. How long does it take to file a patent?
The IP process at the IPTeL can be found at the link here. The IPTeL does an in-house prior art search that may take up to 10 working days. If no prior art is found then IPTeL will set up a meeting with you to evaluate market potential and potential industrial licensees. Once, that is done an IPEC (IP Evaluation Committee) is set up to decide on the next course of action. The IPTeL tries to finish this step within 30 days of disclosure submission. If the committee decides to file for a patent, the IPTeL puts the inventor in touch with an attorney from our panel. The inventor then needs to work with the attorney to draft the patent. Once this is done and the final draft is approved by the IPTeL, the attorney files the patent. The time taken depends on the interaction between the faculty and the attorney.
If there is disagreement on prior art with the inventor, the IPTeL leaves the decision to the IPEC committee.
5. Can a faculty member who has funding file her /his own patent?
While this process has to be ratified by the standing committee of the IPTeL, YES, a faculty member can proceed with filing her /his own patent if they have funding. The disclosure will however have to be uploaded on the IPTeL website as an IISc docket number has to be generated. The patent still belongs to IISc.
Once the docket number is generated, IPTeL will put the inventor with an attorney who can then assist the faculty member in filing an application. IPTeL will still need to approve the final draft. This process however cuts out the time taken in prior art search and scheduling the IPEC and can result in filing a provisional quickly.
6. What is the difference between a “Provisional” and a “Full Patent” application?
According to the USPTO “A provisional application for patent … allows filing without a formal patent claim, oath or declaration, or any information disclosure (prior art) statement. It provides the means to establish an early effective filing date in a non-provisional patent application …”
A provisional is typically filed to give the inventor a priority date once the novelty and non-obviousness of the invention has been established but more data is required to completely draft the claims the inventor can make.
An inventor has one year from the date of filing the provisional to filing a full patent.
7. How much does an Indian Patent filing and maintenance cost?
The filing to grant costs are about ₹ 1.5-2 lakhs over a period of 4 to 7 years which is the average time for grant of an Indian patent now. Maintenance up to the 20th year would cost up to ₹ 4 lakhs.
8. How much does an International Patent filing and maintenance cost?
PCT involving the European Search or USPTO can cost up to ₹ 4 lakhs. As a small entity, the filing to grant costs for a US patents are about ₹ 4 to 5 lakhs.
For more details, please refer this spreadsheet.
9A. Can I file for a patent outside of India (PCT or provisional or complete)?
No. A foreign patent application can be either filed only after six (6) weeks from the Indian filing if no secrecy directions are imposed by the Indian Patent Office (IPO) within that period , or after receiving written permission from the IPO . The written permission is called as Foreign Filing License (FFL). The IPO grants a FFL ideally with 21 days of such a request .
9B. What happens if I don’t file?
As per the Indian Patent law, filing for a patent outside India without seeking permission from the Indian Patent office violates section 39 of the Indian Patent Act.
Section 39. Residents cannot apply for patents outside India without prior permission.—(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.
Implication: Violation of section 39 attracts jail term upto two years or fine or both.
The relevant section is reproduced below for your reference.
118. Contravention of secrecy provisions relating to certain inventions.—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.
Objective of having the above clause: To ensure that no invention filed outside India falls under the classified information or under the secrecy directions relevant for defence or atomic energy.
10. Does the Institute support filing applications in India and abroad?
Prior to November 2016 the Institute only financially supported filing and maintenance of Indian IP.
Post November 2016 the IPTeL has taken a policy decision that only Indian filing is of limited use (See Section III) unless the the Indian market is the predominant market for the invention. Hence, the IPTeL has decided to file internationally. However, filing and maintaining international patents is very expensive. Hence, the IPTeL urges inventors to look for industries who might be interested in licensing the patent. If there is industrial interest the IPTeL will recommend that the Institute help the inventor file for PCT (See Section III). This step gives the inventor an added 30 months to do national phase filings. The IPTeL recommends this support in the hope that the industrial interest presented at the time of disclosure will fructify in this intervening period.
11. What is the priority date?
The date of first filing either a provisional or a full application in any of the Paris Convention Countries constitutes the priority date. The patent is protected, typically, for 20 years from the date of first filing, if it is granted. A filing does not guarantee a grant.
12. Can I contact a patent attorney directly on my own if I am funding my own IP?
No. IISc has a panel of attorneys whose schedule of charges is fixed.
13. What is the difference between Authorship vs Ownership of IP?
Those who contribute intellectually are the authors of an IP. Those who enable it by providing funding and infrastructure are the owners. For example, IISc faculty members are authors whereas IISc is the owner. Somebody from outside of IISc who also contributes to the IP will be a co-author but not necessarily an owner. His /her organization might possibly become a ‘co’ or joint owner depending on the MOU signed. In the absence of an MOU, IISc is the sole owner of all IP generated from IISc.
14. Can I directly contact a patent attorney /agent?
15. Can I file a patent in my name?
No. All patents are filed in the Institute’s name.
14. What should I include in my presentation at the IPEC?
See suggestions here
15. How is patentability determined?
Utility, novelty and non-obviousness are the three key aspects of a disclosure to determine patentability. Utility is concerned with commercial potential for the most part. Novelty involves improvement over and difference from existing state of the art. This novelty should be non-obvious. In addition, the ability to easily detect infringement and prosecute are also important. In such as case, it is easy to detect infringement in product patents and in designs than in process patents. To detect infringement in process patents one needs a court order to examine the process being done in a third party site.
16. What happens after a patent application is filed?
The patent is examined by the patent office where it is filed. Objections are raised based on prior art by the examiners, that have to be addressed by the attorney with the help of the inventors. Following this examination and response process and subsequent modification of claims the patent is granted. Following the grant the patent has to be maintained over its lifetime by paying maintenance fees. A patent will lapse if the maintenance fees are not paid.
It typically takes 6-8 years for the grant of an Indian patent and about 3 years for the grant of an American or European patent.
17. If I file an Indian patent, is it protected all over the world?
No. Novelty is global but rights to protect are only local. An Indian patent only protects your idea from infringement in India. It cannot prevent somebody from copying the product and selling it in another geographical region. However, nobody else can patent it anywhere else in the world.
18. Is there a global patent?
19. How do I protect my invention globally?
You will have to file your patents in each country or grouping of countries (mainly Europe) individually. Typical international patents include US, Europe, Japan and China. Ease of filing and potential markets determine the geographical extent of filing.
20. PCT and PCT?
PCT refers to the Patent Cooperation Treaty and is at times confused with the Paris Convention for the Protection of Industrial Property. It is administered by WIPO, the World Intellectual Property Organization.
For more details visit: http://www.wipo.int/pct/en/faqs/faqs.html and https://en.wikipedia.org/wiki/Patent_Cooperation_Treaty.
A PCT filing does NOT grant a patent. It generates a PCT report on patentability by the patent office chosen by the inventor. A positive PCT report on patentability hastens national phase filing.
An inventor needs to file for PCT within 12 months of the priority date or the date of first filing such as that of a provisional application in India.
National Phase filing needs to happen within 30 months of the priority date.
21. Can national phase filing in various countries be done directly without a PCT report?
22. What then is the advantage of PCT filing?
National phase filing in each of the individual countries needs to be done within 12 months of the priority date.
A PCT filing on the other hand gives the inventor 30 months to decide on national phase filing given that filing and maintaining international patents comes at a cost. This time can also be used to strategize and evaluate the potential of the patent.
A PCT report also hastens the process of examination and eventual grant of the patent.
23. I am an IISc staff member. How can I license my patent?
The patents belong to IISc. Contact the IPTeL for licensing details. If you have an industrial lead share it with us and we will follow it up on your behalf.
24. I am an IISc staff member. Can I discuss technical projects with industries that may be interested without signing an MOU?
To the extent that the discussion is limited to only framing the problem, yes, discussion can be had. However, it is best not to discuss solutions that may lead to IP that can be patented. Prior to any such discussion it is IMPERATIVE to sign an MOU. Note that it is not the scientist in industry who decides IP sharing. It is the legal cell.
25. I am an IISc staff member. Can I discuss the cost of licensing with industries that may be interested?
No. No. No. Please tell them that all financial and legal details will be dealt with by the IPTeL. Financial and legal issues are interconnected and is best left to us.
26. I am an industrialist. What are IISc’s licensing and IP policies?
a. Both exclusive and non-exclusive licenses are possible. It also depends on the IP and funding involved in generating it. Contact IPTeL for details of the particular IP you are interested in licensing. If there is government funding involved, then it usually comes with strings attached that need to be addressed in any MoU.
b. If you are interested in funding a project then joint authorship of IP is possible if there is intellectual contribution from industry either in the form of active collaboration or if background IP and knowhow are involved.
c. Joint ownership of IP with first right to refusal for exclusive or non-exclusive licensing is possible for industries that fund research and contribute intellectually. A time for decision making is arrived upon by mutual discussion with industry during drafting of the MoU.
d. Transfer of complete ownership to industry is possible under very special situations. A more liberal transfer of ownership in all industry sponsored projects is under consideration.
e. IISc follows either one of the three routes for IP licensing:
i) 3-10 % of revenue as licensing fee from sale of products based on the IP or knowhow transferred. IISc generally does not prefer this route as it is a significant overhead to assess revenue generated from IP on a year to year basis in the case of large corporations. Startups prefer this route. Since IP can be related to products and revenue in a startup, IISc IPTeL, is in general fine with this approach for startups.
ii) Upfront payment for a specified period of time based on an assessment of market potential. This period of time is typically 5 years after which the terms and conditions are reassessed. This is good for both IISc and the industry that has funded research as if the potential turns out to be lesser/greater than what was predicted, the licence fees can be renegotiated. In case industries wish to cross license, then licenses for the life of the IP are also possible.
iii) Upfront payment based on an assessment of the market for similar products.
27. What is know-how and the process for its transfer?
Know how or trade secrets refer to IP that is not protected by the filing of a patent. The Coca Cola formula is an example. The procedures are similar to IP licensing, an MOU that includes the details of licensing and its cost.