Since the enactment of the Bayh-Dole Act in 1980, many countries have favoured patenting by universities over patenting by funders or inventors. Patent filings by universities have surged in India as well in the recent past, thanks to exponential growth in research & development (R&D) activities. This calls for a revisiting of the issue from an Indian perspective.
Patent protection
A patent is a legal right granted by a government that gives an inventor exclusive rights to make, use, sell, and distribute their invention for a certain period, usually 20 years from the filing date. In exchange for this protection, the inventor must publicly disclose the details of the invention. There are several types of patents, including utility patents (for new processes, machines, or compositions of matter), design patents (for new, original designs), and plant patents (for new plant varieties).
Why should universities obtain patents?
Patent protection is vital for universities as it helps protect their innovative ideas and technologies, and provide them with a significant edge by establishing patent ownership rights and discouraging infringement of their rights by unscrupulous third parties for commercial gain. Further, having patents in their arsenal can improve the marketability of universities’ inventions and facilitate monetization of the patented technologies through licensing.
Benefits of having patents for universities
• Exclusive rights: Patents give universities exclusive rights to their inventions.
• Academia-industry partnership: Having patent protection demonstrates credibility and increases confidence of amongst relevant stake holders, thereby increasing research funding.
• Royalty generation: Patents allow universities to generate royalties by licensing their inventions to industry and creating revenue streams.
• University spin-offs: Inventions may be commercialized by transferring the related patent rights to corporations by way of a licence. Examples of some successful spin-offs include Google and Genentech.
• Public research funding: Strong patent portfolios helps universities secure public research funding.
Performing novelty search
Primary step in filing a patent application is to know whether an idea is patentable or not. Therefore, it is imperative to conduct a patent search, also known as a novelty search. A comprehensive prior art search can avoid potential conflicts and help universities know if their invention crosses the registrability thresholds or not.
Drafting a patent specification
A patent specification should include detailed descriptions, drawings, and claims that clearly define the novelty and utility of an invention. Universities may consult qualified patent attorneys who can help them draft their patent applications in accordance with the applicable laws,rules and regulations. Once the draft specification is ready, the patent application should be filed with the Patent Office.
Filing patent application
In India, once necessary forms, documents, and the prescribed official fee have been filed/paid, theApplicant is required to comply with all mandatory formal and technical requirements.
Fee rebate for universities
Since 21 September 2021, universities may benefit from a significant 80% discount on the official fee for filing patent applications in India. This incentive aim to drive-up research, encourage more industry-university collaborations and assist educational institutions in the patenting process. The fee rebate helps educational institutions minimise their financial obligations associated with filing patent applications and makes the patent filing process much more accessible.