As discussed in our previous post, this post brings forth our analysis of some aspects of this important judgment. The judgment was provided to us by Mr. S.P. Chockalingam, the petitioner in the case. The judgment may be accessed directly here (Writ Petition 8472 of 2006).
The judgment declares the amendment introduced to Section 126 of the Patents Act, 1970, by Section 67 (a) of the Patents (Amendment) Act, 2005 as illegal, unconstitutional, ultra vires and void. Basically it allows all advocates to practice before the patent office without giving the patent agent exam.
The Madras High Court (MHC) held that “..[M]erely by prescribing qualification, as degree holder in science, engineering or technology and passing a Departmental Examination on Patents Act and drafting, the respondents cannot monopolise such category of persons and say that Advocates are not competent to be patent agents and similarly the right that was available to advocates under Section 126 (1) (c) (i) of the Act, could not be taken away against the Constitutional safeguards, by way of the impugned amendment.”
It is important to note that the MHC treats the patent agent examination as a departmental examination, and treats the same as a gimmick.
In my view the judgment actually goes too far in providing the benefit (of appearing before the patent office) to lawyers without a science background. The logic is somewhat circular – law is (social) science (paragraph 23) – and that the patent office cannot take the view contrary to that of eminent jurists that a lawyer is (social) engineer!!
Our readers would be aware of the decision of the Delhi High Court (DHC) in the case of Anvita Singh – upholding the patent agent examination and reducing the weightage for viva as discussed here. The MHC judgment is penned by a single judge whereas the DHC decision is by a division bench – For this reason the MHC judgment contradicts part of the DHC decision.
Some comments to the previous post argued that if someone could argue a patent case, then it was good reason for them to be able to practice before the patent office. These comments seem ignorant of the fact that the primary role in writing a patent application and arguing a patent case are poles apart. An analogy is appropriate here: Consider the task of demolition of a building – there are many ways to break it down – and among them could be use hammers, dynamite etc., or a civil engineer might opine to break down selected beams, pillars so that the entire building comes down under its own weight. Now consider the task of building a structure or a house – it has to be precise and ordered.
When applying to patent law, when arguing for or against a patent – the skill that is being used is not the same skill to write the patent application. The same argument can be made about judgement skills that go for adjudicating a patent case.
Similar to the writ petition before the Madras High court, an another writ petition is also pending before the High Court of Kerala. I think the judgement of Madras High Court will surely be appealed. To avoid conflict and delay in all the proceedings before different High Courts, the appeal along with the writ petition before Kerala High Court should be transfered to Supreme Court.
any updates on appeal?
Dear friends/colleague
First thing which should be considered is what a patent agent does?
as per sec 127 of patent Act, patent agent right is 1. to practice before the controller 2. to prepare all documents, transact all business and discharge such other funtions as may be prescribed.
Now as per sec 129 “practice as patent agent” includes any of the following acts 1. applying for or obtaining patents in India or elsewhere 2. preparing specification or other documents for the purposes of Patent laws of any counry 3. giving advice other than of a scientific or technical nature as to the validity of patents or their infringement.
Now what a patent agent does at patent office. Roughly 75% of indian patent applications are national phase filing through PCT rute and out of 25 % ordinary application, most of the applications filed under Paris Convention rute. Now in that prospective patent agent task are “preparing documents, transact business, applying or obtaining patents” is mainly clerical in nature and does not require skilled person. Out of all the task which an Indian Patent Agent does, is clerical jobs in filling forms, executing differint kind of office actions etc. Out of these office actions most important job is response to FER/SER etc which definately a technical job so far as it relate to “claims” in which 99% cases are replied based on inventors input. The most important job of a patent agent could have been the rights provided under sec 129 which is “giving advice other than of a scientific or technical nature as to the validity of patents or their infringement” but how funny is this piece of legislation. If a patent agent who hold scientific or technical degree can not give advice of technical nature then what is the need in prescribing criteria of having scientific / technical degree to qualify for patent agent exam. Futher that the validty/infringement suit either instituated in district court or high court,then how could a patent agent who may not hold law degree appear and argue before a court of law.
Please also consider the practical aspects of the issue-hardly you will find patent agents engaged in drafting specification. most of the specifcation are outsourced by outsourcing companies. they used to engage people with science/technical/engineering degree who are basically not a patent agent. any one who have science/tech/engineering degree can draft specification. only bar is signing that documents before presenting to patent office. It is mandatory to singed it by patent agent.
Now consider about an advocate whoes main job is to prepare documents, transact business before much higher authority like district court, high court, supreme court. so advocate can easily do these documentations. Futher “to give advice other than a scientific or technical nature” does mean advice of legal nature under patent law so how can a legislation put a bar on advocate to not give advice of legal nature which is their basic/fundamental right.Futher an advocate is entitled to practice before any court, tribunal or any outhorty and that right can not be taken away. patent office obviously not an exception.
At last it is evident that one common issue which left is “technical/scientific skill”.
I have answer to this issue. Patent specification is a techno-legal document. An advocate lack technical skill and a patent agent lack legal skill therefore we need to balance the two.
so an advocate with science/tech degree should be registered directly without exam.
and
a science/technical degree holder should pass the agent exam.
and
an advocate with no science/technical degree also should pass the agent exam.
this attempt will solve the issue.
In this view law prevaling between 2002-2004 should prevail with minor changes.
This is my personal argument based on my experinece.
Thanks
A Good Suggestion I say Yunus
I cannot but agree with Mr. Yunus.
An advocate with science /technical degree should be able to register as a Patent agent. In fact I know of several Masters and Ph.D’s in Science with excellent credentials who are qualified as Advocates but yet forced to give the Patent agent exams.
Ironocally, even after qualifying the Patent agent exam (with a graduates degree in Science / technology) a “qualified Patent agent” may not be able to draft strong patent applications on account of insufficent domain expertise or lack of good langage competency e.g. English….and we all know how the meaning of a claim can be completely misinterpreted because of incorrect sentence construction.
The only rationale for having Advocates (with Science / Tech qulaifications) pass the Patent agent exam could be to guage familiarity with all the aspects of the patent act say…two years of qualifying the exam ?
Mr. Yunus’s comments are very sensible. I think it should also be mandatory for Patent Office Examiners and Controllers to take the exam prior to appointment, and possibly also periodically – every five years or so, so that future advancement in IPO is a function of their exam performance. This will ensure that government personnel handling and examining patent applications are also up to date with latest developments and key interpretations. This should also help in raising the quality of decisions under Section 14 and 25.
Kindest regards,
Anonymous
SpicyIP,
Any update on this? Has the Madras High Court opinion finally make its way into the Patent Office? I’m trying to see if I can actually register as a Patent Agent without taking the exam, but having very difficult time finding any information on the patent office’s website.
Thank you!
Hi Rao, did you get any information relating the appeal or is there a possibility that the Patent Office accepts an advocate from science / Technical background to be registered as a PA.
Thanks
[…redacted] Editor’s note: Insults that don’t add to the conversation are being redacted.
Section 132 of the Patent Act allows any advocate to appear before the Patent Office on behalf of the client, even if that advocate is not registered as a Patent agent.
An Advocate does NOT have a fundamental right to be registered as a patent agent.
Patent Act prescribes rules for becoming a patent agent, and even Advocates have to follow those rules.
A patent agent’s work includes drafting specification which requires scientific knowledge which is evaluated by the Patent Agent Examination process. An untrained advocate may not have this requisite scientific expertise to draft a specification.
THerefore Judge TAMILVANAN’s judgment is misguided.
It is time to challenge it in the Supreme Court, and restore the dignity of Patent Agents.
THe World is laughing at us for our low quality “useless advocates masquerading as patent agents.”
.
..
[…redacted] Editor’s note: Insults that don’t add to the conversation are being redacted.
Section 132 of the Patent Act allows any advocate to appear before the Patent Office on behalf of the client, even if that advocate is not registered as a Patent agent.
An Advocate does NOT have a fundamental right to be registered as a patent agent.
Patent Act prescribes rules for becoming a patent agent, and even Advocates have to follow those rules.
A patent agent’s work includes drafting specification which requires scientific knowledge which is evaluated by the Patent Agent Examination process. An untrained advocate may not have this requisite scientific expertise to draft a specification.
THerefore Judge TAMILVANAN’s judgment is misguided and [redacted]
It is time to challenge it in the Supreme Court, and restore the dignity of Patent Agents.
THe World is laughing at us for our low quality “useless advocates masquerading as patent agents.”
.