Whenever you have research results that may have commercial potential, we recommend submitting an Invention Disclosure Form to the SSSIHL Intellectual Property Rights Cell.
For consultation, please contact us at [email protected]
To preserve potential patent rights, we strongly encourage inventors to disclose their inventions as early as possible in the research process and before any public disclosure of your innovations or results.
Public disclosures include, but are not limited to, journal and website publications, presentations at conferences or seminars (including open seminars at SSSIHL), posters, dissertations, theses, pre-prints, and abstract publications. If you anticipate any public disclosure in the near future, please reach out directly to your assigned IPR Cell representative to discuss the next viable steps as soon as possible.
FAQ Invention Disclosure
Types of Intellectual Property (IP) in India
Depending on the technology disclosed, one or more of the following types of intellectual property rights can be protected and potentially licensed by the Intellectual Property Rights (IPR) Cell at SSSIHL:
Patent
A patent in India provides inventors with exclusive rights to their invention for a specified duration (typically 20 years) in exchange for publicly disclosing the invention. To qualify for patent protection, inventions must be novel, involve an inventive step (non-obviousness), and be capable of industrial application (usefulness). Reference: Indian Patent Office – https://ipindia.gov.in/
Copyright
Copyright in India protects original literary, dramatic, musical, artistic works, and computer software. It grants authors and creators exclusive rights to reproduce, distribute, perform, and display their work, as well as create derivative works. Copyright protection typically lasts for the lifetime of the author plus 60 years after their death. Reference: Copyright Office, Government of India – https://copyright.gov.in
Software
In India, software is primarily protected by copyright law, provided it is original. The copyright owner of software has exclusive rights to reproduce, distribute, adapt, and publicly display or perform the software. The licensing and distribution of software developed at SSSIHL can be managed in various ways depending on inputs from the creators and institute guidelines.https://copyright.gov.in
Reference: Indian Copyright Act, 1957 (Amended) – https://copyright.gov.in/documents/copyrightrules1957.pdf
Tangible Research Property (TRP)
TRP refers to tangible items produced during research activities, including biological materials, engineering drawings, software, integrated circuit layouts, databases, prototypes, circuit diagrams, research equipment, and associated data. In India, tangible research materials can be protected through appropriate agreements, contracts, or material transfer agreements (MTAs).
Reference: Technology Transfer Guidelines by Department of Science & Technology, India – https://dst.gov.in/
Trademark
A trademark in India is any distinctive word, phrase, logo, symbol, design, or combination thereof that identifies and distinguishes goods or services provided by one entity from those of others. Trademarks help consumers recognize the origin of products or services and provide legal protection against unauthorized use.
Reference: Office of the Controller General of Patents, Designs, and Trademarks – https://ipindia.gov.in/trade-marks.htm
What are the types of Patents in India?
In India, patents can typically be categorized into the following types:
Provisional Patent Application: A preliminary filing that secures an early filing date for an invention, allowing inventors a 12-month period to further develop their idea before submitting a complete patent application.
- Purpose:A provisional patent application serves as a placeholder, establishing an early filing date for an invention, which is crucial for securing priority rights.
- Timeframe: It allows inventors a 12-month period to refine, develop, or test their invention before filing a complete patent application.
- Cost-effective: Provisional applications are typically less expensive and less formal than complete applications, making them a good option for inventors who are still in the early stages of development.
- Not a full patent: A provisional patent application does not provide full patent protection; it’s an interim step towards obtaining a full patent.
- Benefits: Secures Priority Date: Establishes an early filing date, which is essential for claiming priority in future patent applications.
- Allows for Further Development: Provides time to refine and develop the invention before committing to a full patent application.
- Cost-Effective: A less expensive and less formal alternative to a complete patent application.
- Provides Security: Allows inventors to disclose their invention without fear of losing their patent rights while they continue to develop it.
Complete Patent Application: After the 12-month period, inventors can file a complete patent application, which provides full legal protection for their invention.
Ordinary Patent Application: Filed when the inventor has no priority claims from previous filings. It provides protection within India.
- An ordinary (or non-provisional) patent application is filed when an invention is fully developed.
- It contains detailed specifications of the invention’s structure, function, and unique features, along with claims defining the scope of legal protection.
- It is submitted with a complete specification.
- Once approved, it provides full legal protection, granting the inventor exclusive rights to make, use, sell, or license the invention.
- This type of application is immediately examined by the patent office and must meet all patentability requirements to secure enforceable patent rights.
Convention Patent Application: Filed under the Paris Convention, allowing inventors to claim priority based on a prior application filed in any convention country within 12 months.
PCT National Phase Patent Application: Entered into India after an initial international application is filed through the Patent Cooperation Treaty (PCT). It must enter the national phase within 31 months from the priority date.
PCT International Application A PCT International Application is submitted under the Patent Cooperation Treaty (PCT), enabling inventors to pursue patent protection across more than 150 member countries through a single application process. It is highly recommended if you aim to protect your invention in multiple international markets. This application is typically filed via the Indian Patent Office, serving as the Receiving Office, along with submission of the required documentation and prescribed fees. The key advantage of this process is the streamlined international patent filing, granting applicants additional time to assess the commercial viability and market potential of their invention in various countries.
Divisional Patent Application: Filed when an existing patent application contains multiple inventions, and the applicant divides it into separate applications.
Patent of Addition: Filed to protect improvements or modifications of an invention for which a patent application has already been filed or granted. It remains valid as long as the main patent remains valid. Reference: Indian Patent Office – https://ipindia.gov.in/
Invention Disclosures and Status:
Why should I disclose an invention to the IPR Cell at SSSIHL?
Faculty, staff, or students at SSSIHL must disclose potentially patentable inventions promptly to the Intellectual Property Rights (IPR) Cell. Timely disclosure ensures compliance with Indian law, government policies, and sponsored research agreements. It also facilitates timely patent filing, maximizes patent rights, and enables in fulfilling statutory obligations.
How should I disclose an invention?
You can disclose your invention through the online Invention Disclosure Form available on the SSSIHL IIC-IPR Portal. Prompt disclosure is crucial, especially before any public presentation or publication, to ensure maximum protection of intellectual property rights.
How can I track the status of my invention?
To check the current status of your disclosed invention, log into the SSSIHL IIC-IPR Portal. Ensure your contact information is updated in case further communication is necessary, especially if your association with the Institute changes.
Inventorship and Ownership:
How is inventorship determined? Does the order matter?
Inventorship differs from authorship on publications. All contributors to the creative aspects of the invention should be listed in the disclosure. The formal determination of inventorship may be conducted by the IPR Cell, sometimes with external patent counsel’s input. The order of inventors is not significant in patent documents.
Who owns the inventions developed at SSSIHL?
SSSIHL generally owns inventions developed or created wholly or partially using Institute resources or by faculty, staff, or students within their official roles. Ownership is determined according to the Institute’s IPR Policy.
Does the government retain rights to inventions?
If inventions result from government-funded research, the government retains certain rights to these inventions in accordance with applicable laws and regulations.
Should I disclose personal or independently developed inventions?
Inventions developed independently, without significant use of Institute resources or not related to your institutional duties, typically remain with the inventor. However, if there’s uncertainty regarding ownership or resource usage, consult the IPR Cell for guidance.
What is intellectual property?
Intellectual property includes intangible assets protected through patents, trademarks, copyrights, and design registrations. These rights protect creations and innovations, distinguishing them from tangible assets like physical property.
Patent Applications:
Who covers the costs associated with patent filing?
The IPR Cell initially covers the costs of patent filings and prosecution. These expenses may be reimbursed by the licensee if the invention is licensed.
What should I do if asked to review a patent application draft?
Inventors are responsible for reviewing draft patent applications to ensure accuracy and completeness of the description and inventorship. Prompt feedback is essential for timely submission and securing optimal patent protection.
What if SSSIHL decides not to file a patent?
If the Institute decides against filing a patent, inventors may seek permission to independently file or commercialize the invention, subject to institutional approval and guidelines.
Licensing and Negotiations:
What is a license agreement?
A license agreement is a contract granting permission to third parties to commercialize Institute-owned intellectual property. Licenses specify terms including the field of use, duration, geographic region, and other conditions for technology transfer.
How long does licensing take?
The duration of licensing processes varies significantly, often taking months to years depending on technology maturity, market conditions, and negotiation complexities. Licensing agreements with straightforward terms can be completed quickly.
What if multiple companies want to license my invention?
If multiple companies express interest, the IPR Cell will facilitate fair and transparent negotiations. Decisions will be based on the prospective licensee’s ability to effectively commercialize the invention, considering experience, resources, and business focus.
What is the inventor’s role during licensing negotiations?
The inventor’s role is typically advisory, providing technical expertise as requested by the IPR Cell. Inventors should avoid direct negotiations with licensees to prevent conflicts of interest.
Conflict of Interest (COI):
Why does SSSIHL have COI policies?
SSSIHL’s Conflict of Interest policies ensure a balanced approach to external consulting and professional activities by faculty. These policies help manage commitments to the Institute and prevent potential conflicts arising from external interests.
How is equity handled in licensing?
When licensing includes equity, the IPR Cell manages equity distribution as per the Institute’s policy. After administrative costs, the remaining equity is shared between inventors and the Institute according to established procedures.
References:
- WIPO Patient Drafting Manual: https://www.wipo.int/edocs/pubdocs/en/wipo-pub-867-23-en-wipo-patent-drafting-manual.pdf
- Innovation and IP: Duke University https://policies.provost.duke.edu/docs/chapter-6-innovation-and-intellectual-property
- Negotiating Technology Licensing Agreements: https://www.wipo.int/edocs/pubdocs/en/licensing/906/wipo_pub_906.pdf
- SaMD: The categories of software for biomedical applications:
- SaMD, software in a medical device,
- software used in the manufacture or maintenance of a medical device, including clinical trial collaboration and
- sponsored research agreements