Patent and Trademark Agent Examination Woes

Is the end finally near?

Thanks to a tip from one of our readers, Ms. Meera Sharma, it has come to our notice that it has been a preposterously long while since the last Patent and Trademark Agent Examinations respectively were last held, and applicants have been (quite understandably) been getting increasingly impatient at the inaction of the Government.

THE TM AGENT EXAM

The Trademark Agent Exam was last held in June 2010 – over four and a half years ago – and authorities have since then, been extremely tight lipped with regard to subsequent TM examinations. About 5 months ago, a writ petition under Section 226 was filed before the Madras HC, praying for the issuance of a writ of mandamus compelling the respondents – The Registrar of Trademarks and the Union of India – to conduct the Trademark Agent exam at least once a year in direct consonance with the system formulated by the Government for the same. The petitioner’s grievance was that despite mounting applications before the Trade Marks Registry, the respondents have failed to conduct the examination. The writ petition was allowed, and the Registrar was called upon to take a decision with regard to the matter so represented, and communicate the same to the petitioner.

Section 150 of the Trademark Rules 2002 lays down the qualifications for registration of a Trademark Agent, where; while applicants are generally required to pass the Trademark Agent examination conducted by the Trademark Registry, advocates enrolled under the Advocates Act and Company Secretaries registered with the Institute of Company Secretaries of India are the exceptions to this rule – they are qualified to represent their respective clients before the Trademarks Registry without the fulfilling the formality of passing the examination.

In December last year, as directed by the Court, a response from the Office of the Controller General of Patents, Designs and Trademarks was received by the petitioner, which stated that due to the paucity of human resources coupled with the fact that only 35 applications have been received since the 2010 exam, they had refrained from holding it altogether. It also, however, added that the next exam was scheduled to be held in the first half of the 2015-16 financial year. Consequently, another writ petition was filed before the Madras HC by the same party against the Assistant Registrar of Trademarks and GI in addition to the earlier mentioned parties, praying for the issuance of a writ of certiorarified mandamus directing the said respondents to hold the examination at least once a year.

The Court, however, deemed the justification as unsatisfactory. Taking view of the vacancies in existence, the Court directed the respondents to mandatorily conduct the examination as proposed to be held in the first half of the 2015-16 financial year. The Court, taking into account the petitioner’s suggestions, also ordered the respondents to look into the possibilities of formulating a training course for the examination, as well as the issue of entrusting the entire responsibility of training as well as holding of the examination to specialized institutions – setting a deadline of 30^th September, 2015 for the same.

THE PATENT AGENT EXAM

Additionally, there really seems to be no schedule in existence for the Patent Agent Examination either. The last examination was held on 4^th May, 2013, and there has been no official news on the matter since (note: we had earlier carried a post on the 2010 toppers of the exam here).

It remains significant here to bring up the 2002 and 2005 Amendment Acts to the Patents Act, both of which altered a pertinent provision of the 1970 version of the Act – Section 126 – which lays down an important qualification for registration as a patent agent.

The original Section laying down one of the qualifications read as follows:

(c) he has obtained a degree from any University in the territory of India or possesses such other equivalent qualifications as the Central Government may specify in this behalf, and, in addition,-

1. is an advocate within the meaning of the Advocates Act, 1961; or
2. has passed the qualifying examination prescribed for the purpose;

The 2002 amendment to the Act replaced “degree from any university” with “degree in science, engineering or technology”. Again in 2005, a rather unwelcome deletion was made, where Section 126 (1) (c) (i) that entitled advocates enrolled under the Advocates Act to register themselves as a Patent Agent without fulfilling the formality of passing the Examination, was taken away. These amendments have been analysed by Prashant in his post here.

Consequently, a writ petition was filed by Sp. Chockalingam in 2006 before the Madras HC against the Controller of Patents and the Union of India praying for the issuance of a writ declaring the said amendment under Section 67(a) of the Patents (Amendment) Act unconstitutional.

The Petitioner, an advocate himself, contended that not only did the 2005 amendment violate his Fundamental Rights as under Section 14, 19(1)(g) and 21 of the Constitution, but also curtailed an advocate’s right to practice before all courts, tribunals and quasi-judicial authorities as granted under Section 30 of the Advocates Act. The petitioner also contended that the duties of a Patent Agent as laid down under Section 127 of the Act comprised only a part of the work performed by an advocates, and by permitting only graduates in science, engineering or technology that have passed the qualifying examination to practice as a patent agent, the law introduced a greatly unjust bias.

The Court, in its March 2013 decision, accordingly declared the 2005 amendment to Section 126(1)(a) as illegal, unconstitutional, ultra vires, void and unenforceable. Since the 2002 amendment mandating a technical degree was not challenged by the petitioner, those with non-science degrees still cannot practice as a Patent agent. Thus, while advocates with a science, technology or engineering degree are automatically permitted to practice as patent agents – exempting them from the requirement to pass the patent agent examination, advocates with non-science degrees remain disqualified from sitting for the examination altogether.

Sources, however, tell us that the decision was recently appealed by the Controller of Patents after a VERY long delay – supposedly the reason for the non-conduction of the Patent Agent Examination for the year 2014 – and that the examination may be accordingly held in May 2015.

Either way, I believe the government’s dogged lethargy has much to do with the mess that both of these examinations and its affected aspirants are in at the moment. It remains to be seen whether the government gets its act together and holds both the Trademark and Patent Agent examinations before the expiry of the decided dates, or whether another writ petition is in order.