The Ministry of Commerce and Industry has published a notification in the Official Gazette on September 21, 2021. In the notification, the ministry announced 80% of reduction in patent fees for educational institutions.

Indian Educational Institutions have been the hub of some of the most innovative minds. An amalgamation of ideas from a student and teacher during a learning process can foster substantial innovation. But one thing that was lacking so far was the affordability to legally own and monetize these ideas by the fraternity in educational institutions.

The Annual report of the Indian Patent office for the year 2018-19 indicated that the number of patents filed have steadily increased on a yearly basis as shown below:

Trends in Patent Applications:

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Courtesy: Annual Report 2018-19 by Indian Patent Office

However, when we look at the top 5 Indian applicants for patents, we observe that very few educational institutions make it to the top 5 applicants' list in India. Also, the number of patents filed by all the educational institutions in India put together is hardly 2% of the total number of patents filed in India.

Top 5 India applicants for patents in the field of Informatioon Technology

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Courtesy: Annual Report 2018-19 by Indian Patent Office

Therefore, a rebate of 80% according to the notification published on  21st September 2021, by the Ministry of Commerce and Industry, will now attract more and more projects to be filed and monetized by educational institutions across the nation. In accordance with the notification, the Central Government has made certain rules to amend the Patent Rules, 2003. The amended rules are called Patent (Amendment) Rules, 2021, and has come into force on the date of their publication in the Official Gazette. The key takeaways of the notification are as follows:

Sl. No

Rules

Sub-Rule

Inference

1.

2

(ca) "educational institution" means a university established or incorporated by or under Central Act, a Provincial Act, or a State Act, and includes any other educational institution as recognized

by an authority designated by the Central Government or the State Government or the Union territories in this regard;

All the universities and other educational institutions recognized by any one of the Central Government, State Government or Union Territories will hence forth be recognized as "educational institution" by the Indian Patent Office for categorizing under the right fee slab.

2.

7

(1) Provided further that in the case of a small entity, or startup, or educational institution, every document for which a fee has been specified shall be accompanied by Form-28.

The filing fee for educational institution is same as the filing fee for a natural person, small entity or a startup.

(3) In case an application processed by a natural person, startup, small entity or educational institution is fully or partly transferred to a person other than a natural person, startup, small entity or educational institution, the difference, if any, in the scale of fees between the fees charged from the natural person, startup, small entity or educational institution and the fees chargeable from the person other than a natural person, startup, small entity or educational institution, shall be paid by the new applicant along with the request for transfer.

In case the educational institution chooses to transfer their processed application to any entity other than a natural person, small entity or a startup, the difference in the chargeable fees must be paid by the new applicant.

3.

First Schedule

Headings and sub-headings in Table 1.

"educational institution" is included in the heading and sub-heading of Table 1 along with natural person, small entity and a startup.

4.

Second Schedule

Form 28

"educational institution" is included in Form 28 along with natural person, small entity and a startup.

Who will qualify as an educational institution?

In accordance with the newly amended Rule (2) (ca), for an Indian applicant, an "educational institution" is a university established or incorporated by or under Central Act, a Provincial Act, or a State Act. Further, any other educational institution recognised by an authority designated by the Central Government or the State Government or the Union territories will also be recognised as an educational institution in India. A foreign applicant can qualify as an educational institution by furnishing any legal document to ascertain the same.  

How can an educational institution claim the benefits of educational institutions?

In accordance with the newly amended Rule (7), the educational institutions are recognized on par with a small entity or a startup and are therefore entitled to file the required documents using the new Form -28. Further, the scale of fees chargeable for an educational institution is on par with a small entity or a start-up.

CONCLUSION

Most of the educational institutions take a minimum of 10 years to establish themselves. Their profits do not alter according to the industrial requirements. Therefore, recognizing them on par with a small entity thereby reducing the filing fees by 80%, will make it easy for young innovators to legally protect their innovations.

Further, the provision of 80% rebate for filing patents by educational institutions seems like a win – win opportunity for both the government as well as the educational institutions. On one hand, by reducing the filing cost for patents filed by educational institutions, the Government has channelized the innovative ideas towards strengthening the Indian Economy.  On the other hand, a greater number of educational institutions will now be willing to file patents of innovative projects carried out by students under the guidance of their respective mentors. This in turn will provide an added income to the educational institutions once the patents are monetized.

Moving in this direction, the Andhra University has welcomed the new rule by setting up an exclusive centre for Intellectual Property (IP) within its campus. The IP centre will henceforth oversee the documentation process and bear the cost of filing for IP rights of researchers in Andhra University. On the whole, this new rule has set a platform to utilize the vibrant young minds towards building a strong economy thereby contributing to the growth of the nation.

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