Internatioinal Patent Protection in Electronics & IT (SIP – EIT) Scheme by DIT

It is enriching to hear and read so much of focus going these days into Innovation at Grass Root and Startup level. With initiatives being taken at all levels by Stakeholders including FICCI, MSME, DIT, and NASSCOM, the next wave of the so-called Start-up innovation can really be envisioned. As has correctly been stated by the article of Vivek Wadhwa of 14’th December 2010, a new breed of Indian Start-ups now is developing high-value products based on Intellectual Property. Having out-licensed some of such out-of-box telecom and network security products, I couldn’t have agreed more.

This article essentially relates to about a 2-year-old but not so actively participated scheme that DIT has for Indian Information and Communication Technologies (ICT) based Start-ups and SME’s. Having worked with many Indian Startups in the domain of Software and Electronic technologies, I have regularly seen unfunded Corporates turning down potential IP’s which could have had significant valuations when putting across to the Investors. This is more so the case when the Applicants avoid filing the PCT and National Phase Applications outside India knowing full well that the real valuation of an IP at the present moment is only considered as a value proposition if it’s protected in the US and EP.

The proposed scheme is called the SIP-EIT (Support International Patent Protection in Electronics and IT), wherein the scheme reimburses the costs incurred by SMEs and Technology Start-Up units in filing International Patent Applications (in the field of Electronics & ICT) for their indigenous inventions.

The highlights are as follows:

1. Registered MSME, DSIR Certified companies, and Technology Incubation enterprises are eligible to apply for the scheme.

2. The funds are given as a grant – i.e., no refunds expected.

3. The Applicants are free to hire any Attorneys whose fees are included in the schedule and would be refunded subject to the below-mentioned maximum limit.

4. 50% of all expenses, including lawyers’ fees, are reimbursed by the DIT. However, this “50%” must not exceed Rs. 15 Lakhs

5. Along with the registration and financial details, the Applicant needs to provide a prior art search report indicating the chance of patentability of the invention, product brochure, and Official copy of Indian Patent Application Filing.

6. The Start-up/SME need not be an ICT company, it can be a Pharmaceutical or any other company having an ICT product, apparatus, and/or process.

We believe this to be excellent support that if utilized properly can yield effective Licensing and Product Commercialization opportunities for the company.

The only caveat in my perspective, at the moment, would be the appropriateness in the grant of ICT based Patents in India and their enforceability in the Court of Law-keeping Section 3(k) in mind. We have already seen examples of Computer-implemented patents being granted in India whose corresponding Patents have been rejected by the EPO and other geographies that have tests based on technical effect and tangible results. Therefore, keeping in consideration the inconsistency of patents being granted based on the technical effect bar of the Indian Patent Office, probably its high time that objective tests be set to ensure reliability in the outcome of the patentability to produce defendable and enforceable ICT patents.

About the Author: Mr. Tarun Khurana, Partner and Patent Attorney in the Institute of Intellectual Property Research & Development (IIPRD) and can be reached: [email protected].