More about the Invention Disclosure
An innovator (could be a faculty or staff or a student) from the Partner institutions should disclose his / her invention to the KIIT-TBI-TTO if they think that their research can be commercialized for public or industry benefit. Typically, inventions or innovations from Universities or Startups are early stage innovations and require a significant investment for developing a market viable product (MVP). Therefore, Intellectual property protection (in the form of patents and other forms of IP) is a prerequisite for industry to pursue perfecting such a technology.
As a first step, the TTO will make an assessment about the following:
- the legal protection of the research concept and results, and
- identify outside development partners or industry partners for commercializing the technology.
Most researchers use government funds (from DST / DBT / ICMR etc.) or industry funds for their research. It is imperative for such researchers to file an IDF. And this needs to be reported to the sponsoring or the funding agency.
Researchers should submit a disclosure for all developments that can help solve a significant problem and/or have significant value. They can also connect to TTO to discuss their research and potential invention to take help from the TTO staff to align their research to solve known industry or community problem. TTO may also advise on various forms of licensing depending upon the nature of the outcome from their research. All communication between the researcher and the TTO is kept confidential, especially till the time the intellectual property is filed with the concerned office.
It is important that the disclosure is made before presenting the invention or the innovation through publications, conferences, posters or any other communication. Once publicly disclosed (i.e., published or presented in one form or the other), an invention usually has very restricted potential for patent protection.
What constitutes a public disclosure? Anything that is readily available to public, may it be a journal paper, a conference presentation, a publication on the Internet, Facebook post, Instagram post, a YouTube video, or even a thesis indexed at the library, that describes the basic idea in enough detail for someone else to be able to discover and use the invention constitutes a public disclosure, including selling or offering for sale a prototype of the invention. If possible, researcher should disclose the invention several months before the invention is to be publicly disclosed, to ensure that it is properly protected.
Even after filing the IDF, researchers should inform and consult the TTO of any imminent or prior presentation, abstract, research paper publication, lecture on invitation, poster session, research proposal, dissertation, or thesis or any other public display of the invention.
If a researcher is dealing with materials such as plants, cell lines, mice, antibodies, vectors, plasmids, and other materials used as “tools” in the research, these materials do not need protection by patents. However, there may be other research tools (like new separation or synthesizing or germination process) that may need to be patented, so that industry can invest in the development to make the process useful and or efficient for its production processes. If a researcher’s tools are valuable from this perspective, TTO can help you with appropriate IP protection and licensing strategy. TTO can also help you to distribute the research materials at minimal charges to other academic collaborators while preserving the materials’ commercial potential.
The submission form of disclosure should be filled out completely, including sponsorship information, a description of the invention and original signatures.
It is important to mention the names and affiliations of all contributors to the ideas leading to an invention in the IDF, even if they are not employees of your own organization. The TTO, along with its legal counsel, will determine the rights of such persons and institutions. It is helpful to discuss possible collaborative research projects (before they begin) with the TTO to understand the implications for any joint inventions.
While filling the IDF, the researcher should describe the invention as detailed as possible. All information provided to TTO is kept confidential. Without adequate information, TTO cannot perform a complete evaluation of the invention’s licensing potential, nor can TTO obtain an accurate legal opinion as to whether it is patentable. The researcher can request for a meeting with the TTO office to discuss it in greater detail.
The dates of public disclosure are important because foreign patent rights are lost once an invention has been publically disclosed. A patent application is to be filed before the public disclosure. Once the disclosure has been made, the invention cannot be patented.
The researchers need to submit the IDF after logging into the TTO portal and follow the simple instructions. TTO shall contact the researcher shortly thereafter about next steps in the process of patenting and commercialization. This may include personal meetings and / or more details about the technology or domain or the industries working in the relevant domain. Feel free to contact TTO for any questions before or after the disclosure. TTO shall come back to you within one week for any more clarifications required, or with a technology evaluation report within one month of submission of IDF.