GUIDELINES FOR BIRAC-PATH (PATENTING & TECHNOLOGY TRANSFER FOR HARNESSING INNOVATIONS) AND BIRAC AS A FACILITATOR UNDER SIPP (START-UP INTELLECTUAL

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1 GUIDELINES FOR BIRAC-PATH (PATENTING & TECHNOLOGY TRANSFER FOR HARNESSING INNOVATIONS) AND BIRAC AS A FACILITATOR UNDER SIPP (START-UP INTELLECTUAL PROPERTY PROTECTION) 1

2 GUIDELINES FOR BIRAC-PATH (PATENTING & TECHNOLOGY TRANSFER FOR HARNESSING INNOVATIONS) A. Guidelines fr Patenting Supprt All patent applicatin filed by BIRAC will be in the name f grantees and BIRAC will nt have any wnership in the filed patents. If recmmended by IP & Technlgy Management Cmmittee, the supprt will be prvided based n belw mentined ptins: OPTION 1: Supprt framewrk, if the prpsal requests fr Cmplete Indian Patent filing- Funding will be by way f grant-in-aid having crrespnding bligatin t pay ryalty as mentined belw Funding shall cver the cst twards cmplete patent filing and maintenance fr the duratin as mentined belw- Six years frm the date f filing r Tw year after date f grant f patent r Cmmercializatin in India, whichever is earlier OPTION 2: Supprt framewrk, if the prpsal requests fr Cmplete Indian patent filing alng with cnventin filing in nt mre than three cnventin cuntries- Funding will be by way f grant-in aid having crrespnding bligatin t pay ryalty as mentined belw Funding will be twards the cst f cmplete and cnventin patent filing and maintenance fr the duratin as mentined belw: 100% funding twards allwed cst fr Tw years frm the date f filing/date f pririty, fllwed by 50% funding fr the next tw years fr bth cmplete and cnventin mde r 50% funding twards maintenance fr Tw year after date f grant f patent fr bth cmplete (Indian Patent) and cnventin mde r Cmmercializatin in the territry f supprt, whichever is earlier OPTION 3: Supprt framewrk if the prpsal requests fr cmplete Indian filing alng with PCT filing- Funding will be by way f grant-in-aid having crrespnding bligatin t pay ryalty as mentined belw Funding will be twards the cst f cmplete Indian Patent filing and PCT applicatin filing fr the duratin f Thirty ne mnths frm the date f filing/date f pririty r 2

3 Apprval fr natinal phase funding by BIRAC r Cmmercializatin, whichever is earlier. Further funding fr natinal phase entries will be cnsidered based n the ISR published by WIPO and the cmmercialisatin strategies Funding will be twards the cst f cmplete and natinal phase entries and maintenance fr the duratin as mentined belw: 100% funding twards allwed cst fr tw years frm the date f filing/date f pririty, fllwed by 50% funding fr the next tw years fr bth cmplete (Indian Patent) and natinal phase entry r 50% funding twards maintenance fr Tw year after date f grant f patent fr bth cmplete (Indian Patent) and natinal phase entry mde r Cmmercializatin in the territry f supprt, whichever is earlier After this perid the applicant has t bear the cst f patent applicatin/patent maintenance etc. It will be in the discretin f the Cmmittee t recmmend the number f cuntries and the name f cuntries that will be cnsidered fr funding under natinal phase entries Specific cnditins fr Patenting The funding will be in the frm f grant-in-aid. Prpsals shuld be submitted by the applicant with-in the first nine (9) mnths frm the date f filing the prvisinal and nt thereafter. The prpsal shuld be clear if request fr funding is twards Cmplete Indian Filing and/r PCT Filing/Cnventin Filing The prpsal shuld cntain all the required infrmatin/data/ specificatins/drawings etc. that are essential t evaluate the scpe f Cmplete Indian Filing and/r PCT Filing/Cnventin Filing. The prpsal must als layut the cmmercializatin strategies and the effrts in this directin shuld be put t license r transfer the IP filed with the BIRAC supprt, within the duratin as mentined belw fr all supprt framewrk. Prpsals where the applicant has already incurred the expenses twards IP prtectin shall nt be cnsidered n reimbursement basis under this scheme. Backgrund IP will nt be supprted Benefit sharing The applicant will have t infrm BIRAC n Cmmercializatin f the prduct(s). 3

4 The applicant shall btain written permissin frm BIRAC befre Licensing r Technlgy Transfer f the technlgy patented with BIRAC s Supprt. The applicant shall share the benefit with BIRAC at the rate f 5 percent n- Annual Net Sales f the prduct(s) develped by the technlgy patented with BIRAC s assistance OR A mutually agreed upn percentage n fees in case f Licensing r Technlgy Transfer f the patented technlgy. Sharing f benefit shall fall due beginning with the first sale f the prduct(s) and it will terminate upn the first f any f the fllwing tw events t ccur:- Sharing f benefit shall amunt t 5% f the Annual Net Sales f the prduct(s) develped by the technlgy patented with BIRAC s assistance has been paid t BIRAC; and Sharing f benefit will terminate when the share f the benefits paid t the BIRAC becmes equal t the amunt f the grant-in-aid disbursed under PATH. Prvided, if the applicant is already a beneficent under such Scheme f BIRAC that has Ryalty bligatin and the particulars f such pre-existing Prject pertains t the same Intellectual Prperty as prpsed t be prtected hereinabve then, n Cmmercializatin f the Patent, the applicant shall pay ryalty t BIRAC at a rate f 7 (seven) per cent n annual Net Sales f the prduct(s) develped with BIRAC s assistance till such time the share f the benefits paid t the BIRAC becmes equal t the cumulative amunt f the grant-in-aid disbursed under such scheme and PATH. Fr this purpse- 1. Benefit sharing shall mean fair sharing f the mnetary benefits arising frm the cmmercializatin f the prduct(s) develped Prduct shall mean prducts, services, prcesses, technlgies, materials, sftware r ther innvatins resulting frm the prtected IP which wuld generate cmmercial incme. 2. Net Sales fr this purpse shall mean grss sales by the Cmpany/its licensee/ its sub-licensee excluding excise duty and sales tax, as certified by the Chartered Accuntant. 3. If the Cmpany intends t transfer r sell/assign/exclusively license the Prduct s interests t any third party, it shall take prir written permissin frm BIRAC and BIRAC will recver the due Ryalty amunt r 5% f the resultant incme excluding excise duty and sales tax, as certified by the Chartered Accuntant, whichever is less, befre grant f such permissin? 4

5 Discharge f the liability t share the benefits: Benefits t be shared fr each financial year shall be payable t BIRAC within 60 (sixty) days f clse f audit f the crrespnding financial year. In case f delay in payment, the applicant shall be liable t pay simple interest at the rate f 12 (twelve) per cent per annum n the amunt f default fr the perid f delay. B. Guidelines fr Technlgy Transfer Supprt Interested party which may be an individual entrepreneur, start-ups, SMEs supprted under any f BIRAC s prgram will sign the Pwer f attrney with BIRAC fr technlgy transfer/ license. This will include the full right t sublicense the technlgy t thers. BIRAC will transfer the case t empanelled agency fr technlgy transfer /license. An inventin can be licensed t multiple licensees, either nn-exclusively t several cmpanies r exclusively fr few cmpanies, based n field-f-use (applicatin) r gegraphy. Specific cnditins fr Technlgy Transfer Revenue Mdel under Technlgy Transfer Supprt Fr each successful technlgy transfer by empanelled agency, 30 % f the upfrnt technlgy fee will be kept by BIRAC/ Empanelled agency. 70% will be given t the licensr/interested party 30% f the upfrnt technlgy fee retained will then be distributed in rati f 1:2 between BIRAC and empanelled agency. Similar mdel will be fllwed fr the ryalties decided fr pst mnitring f the technlgy after transfer. 5

6 GUIDELINES FOR BIRAC AS A FACILITATOR UNDER SIPP (START-UP INTELLECTUAL PROPERTY PROTECTION) In respect t the Scheme fr Facilitating Start-ups Intellectual Prperty (SIPP) annunced by the Gvernment f India, fllwing prcedure t be adpted fr filing/prcessing f Start-ups applicatins fr Patents, Designs and Trademarks and fees t be paid t the facilitatrs in respect theref. This t be fllwed as per the annuncement made n 8 th June, 2016 by the Gvernment f India. The facilitatr after assessing the patentability f the inventin and ther aspects as per Patent Act and Rules and being satisfied that the applicatin fr patent can be filed, shall draft the patent specificatin in cnsultatin with the start-up. Thereafter, the facilitatr shall file a cmplete Patent specificatin at the apprpriate Patent Office n behalf f the start-up as per jurisdictin by fllwing the prescribed prcedure under the Patent Act and Rules. Fee fr filing patent applicatin and ther statutry fees, as per First Schedule, shall be brne by the Start-up The Facilitatr shall mnitr and perfrm further steps f prceedings f start-ups patent applicatin, prepare the reply t any query frm Patent Office, attend the hearings etc. and shall file the relevant dcuments in the Patent Office by fllwing the time line, as and when required, n behalf f the start-up and may submit the claim fr payment f the fee as per the fee schedule f SIPP Scheme as per the prcedure elabrated abve. 6