“Dear Sir,
Basically I am very small business man doing business related to septic tank installation work in Dehradun (Uttrakhand). I innovated a new idea, where the efficiency of septic tank can be enhanced. I contacted to National Innovation Foundation (NIF) to help me to get patent of my invention but they told that they only can help grass root innovators and I do not fall in their category. Can you please help or refer me to people that might help me with drafting the patent?”
Regards
P K Gupta
107 – Kanwali, Near Bharat Petroleum
Dehradun (Uttrakhand) – India.
09897227026, 9319946287.
Email: info[at]bindaltech.org”
Unfortunately, I have no great experience with patent drafting. Are there any good-hearted patent attorneys out there who are willing to help this person? Not exactly “pro bono” but for an “affordable” fee? And only after you’ve verified that he is indeed deserving of your highly subsidised fee schedule? If so, will you please write to him at (info[at]bindaltech.org) or call him at the numbers above and help him out.
And if possible, please do copy me (shamnad[at]gmail.com) on your emails to him….just so that I can create a list of “good hearted” patent attorneys for future reference:) Thanks very much.
I also had a query for our readers in the “know”. Do the current bar council rules etc prevent Indian attorneys from taking a share of the invention (i.e that X% of royalties, if the invention is successfully commercialised). Would this fall within the ambit of the rule that prohibits “contingency” fee lawyering i.e. that fees cannot be based on whether or not the case is succesful. The reason I ask is: if the rules do permit this, it could serve as a good incentive for many patent attorneys to take up drafting on behalf of poor inventors who cannot afford to pay their fees. Provided of course that they think the invention is worthy of commercialisation.
A related question: Are Indian patent attorneys (that are not other registered as lawyers with the Bar Council) subject to Bar Counil rules, the Advocates Act etc? If not, can they stake a claim in the invention and partake in the royalties? If “yes”, then, this might serve as an incentive for them to draft for free on behalf of poor inventors? And we could engender more participation of poor “informal” inventors in our rather “formal” patent system? And thereby bring about more social justice?
Please be informed that Mr. gupta had correspondence with one of the leading IP Firm in Delhi, who offered him to render services free of cost. only he was to pay govt. fees.Subsequently a long list of questionnaire was also appropriately responded. We believe from the querries raised by him he is well aware of patent system. We wish not disclose our identity.
While we are trying to search some good-hearted patent attorneys for such informal innovators, we need to also get more such people trained to write the patent documentation and then defend it. Rather it has to be developed into a profession.
Any such courses or organisations are existing?
Dear Abhijit,
I think you’re absolutely right. Its a pity that this country lacks well qualified drafters. The elitist 5 year LLB programs at the various national law schools do nothing to remedy this problem–as products of this system are rarely qualified to become patent attorneys. and the lack of signifcant senior folks who can train means that attorneys who start out find it tough to learn the ropes. Particularly since patent drafting can only be taught in classrooms to a limited extent. It has to really come out of work experience and an apprentice mode training –but we need good senior drafters for this–and our country has but a handful of them. Lets hope that the US recession brings back to India some of our lost talent that have made their mark as excellent patent attorneys.
As for educational courses that currently exist, the IP tailored program at IIT Kharagpur is a good start. And I believe some IP diplomas by orgns such as IIPS, GIIP and Dr Nair’s Patent Gurukul do provide good training.
Dear Anon,
I had a quick work with Mr Gupta and he informs me that although he has approached the big patent firms in the metros, none of them have offered to provide him services free of cost.
Just a quick note..
The website shows he is been marketing the product(Readymade septic tank. He is also put in details like methodology and tests for this product at http://www.toilet.bindaltech.org/. If this is the exact product he wishes to apply for a patent, his own website is prior art. If it has been sold, then it is prior public use.
indian.patent.agent
Shamnad,
National Law University, Jodhpur has a specialized course for patent drafting and prosecution in their IPR Honours Course. For this course, the pre-requisite is science background, which is fulfilled by their B.Sc course itself..
I know few people from that college and i can say that atleast some of them are pretty decent in drafting..
Although i agree with you that they have limited exposure but that can be enhanced to a certain level if the college looks into it seriously..
i had a chance to look into the their curriculum and i found that their Honors course is really good for the market need….
lets hope that we get good drafters from that college and young lawyers develop their interest into drafting also..
I do not think NLU Jodhpur is good choice for patent stuff. There is not a single student from NLU Jodhpur doing good in patent field.
Dear Indian Patent Agent,
Thanks for bringing this to my attention. I just had a word with him-and he says that all the material on the website pertains to an old 1970 patent (in the name of a third party). His alleged invention is an improvement over this. Since his website is slightly misleading in this regard, I’ve asked him to amend it suitably to reflect the fact that what he has included is stuff re: the old patent and that his technology is a better solution.
A dear friend of mine, Susan Finston, who wears several hats, ranging from a biotech entrepreneur to heading an NGO dealing with Bayh Dole issues, writes:
“Dear Shamnad,
Two initial reactions:
First, there are a number of state governments in India, most notably Karnataka but also Gujarat and a few others, that provide some level of drafting and patent prosecution support for individual inventors. It may be possible for PK Gupta to get support at the state level.
Second, internationally, the PIIPA organization (Public International IP Advocates) provides this kind of support and one attorney I know who is involved in this process is Dr Ben Prickril, who made a presentation on this topic at the ABSA’s side event at COP 9 in Bonn. I am copying him on this message. He may have instructions for how PK Gupta would apply for assistance from a volunteer for the filing of the patent application. No remuneration would be required by PIIPA, so long as they have a volunteer available to help.
(For myself, I am only a patent policy attorney and not qualified to give advice on this kind of thing.)
I hope that you are able to get him some assistance,
Susan
Sudhir Kumar, a leading Indian patent attorney and the brain behind Aswal Associates writes:
“Dear Shamnad,
As regards your post I have sent an email to Mr. Gupta, if we are sure of his bonafides believe us our charges would be very less. I fully support your idea of providing free consultancy to Indian Inventors, as they lack the resources to develop their invention to fullest and exploit them commercially, we can at best file and secure them a patent which may allow them to find an angel investor or capital to exploit the invention commercially. But things should not stop here, we have to have a mechanism were could help them exploit their invention internationally. Their financial handicap should not let their rights to be confined within India.
Now, as to your query, Advocates Act, bars advocate from receiving such commission or rights. Though there is no bar on Patent Agent that are not advocates or that are not registered as Advocate with bar council of India, they may do so (technically all applicant to whom invention is fully or partially assigned fall under this category, only their nature of investment is different), but under patent act there is provision of professional ethics that may result in cancellation of license as patent agent, though there is no bar expressly but how Court interpret it later, is anybody’s guess.
Regards
Sudhir Kumar
Advocate, Patent & Trademark Attorney
Email: sudhir[at]aswal.com
now that the topic is on..i need to get this out of my system! WHY are non-science people not eligible to take the patent agent exam? Practice is definitely the key to good patent drafting but it also requires something more than just a science degree. some ppl are just good at playing with words! there have been famous patent attorneys who dont hv a formal science education. I think there shd be some mechanism at the Indian Patent Office to let people, who are genuinely keen to do patent law, take the patent bar.
Shamnad,
Going tangentially and I would like to comment on the drafting training.
FICPI has an excellent drafting course for fresh patent attorneys.
Its a 3 part course, wherein parts 1 and 3 are held at an overseas location. Here internationally seasoned attorneys train students while part 2 is an interim period where students do exercises from thier home locations.
Though expensive for Indian costs, I have been advised that its worth every dollar spent.
Regards,
GenericIPguy
Hi Shamnad,
I am a registered patent agent with the Indian Patent office.
Section 129 of the Indian Patent act bars any person to practice or describe himself as a patent agent unless he is registered as an Indian Patent agent. The Explanation to the section further provides that practicing as an Indian Patent agent includes the following acts;
1) Applying for or obtaining patents in India or elsewhere;
2) Preparing specifications or other documents for the purpose of this act or the patent law of any other country;
3) Giving advice other than of a scientific or technical nature as to the validity of patents or their infringement.
Section 123 of the act imposes penalty of upto Rs 5 lakhs on practice by non registered patent agents.
The patent act nowhere mentions that registered Indian Patent Agents are to be subjected to Bar Council Rules. The Act also does not mention anything about contingency fee. Thus I presume that nothing prevents an Indian patent agent from staking a claim in the invention and partake royalties.
I am not sure if the above argument will also hold true for patent attorneys (I believe this term is used for people who are both, registered patent agents and advocates registered with the bar council of India).
Hope this information is useful to you.
Regards,
Aliasgar Dholkawala
aliasgar.ip[at]gmail.com
Dear Anonymous…
I dont know who you are and i dont want to move out of the topic while answering to your comment…
just a small comment – if u want to know about NLU people who are doing good in patent field mail me at [email protected]
Shamnad, i Hope i am not violating the spirit of this blog
Unfortunately agents/attorneys (like me) working for a law firm as retainers /associates are not allowed to take up work outside office. This involves even pro bono work. This is mainly because of conflict of interest that may come up in the firm. It may even read upon my NDA. Firstly the process is not a one-time event that ends at drafting. The agent should be able to defend the case in prosecution and even if opposed. Thus we are looking at least a 3-4 year period. Those working in a law firm would not be able to promise such support mainly since I can’t guarantee that no competition would be my firm’s client. This leads me to a sticky situation where I may have to compromise on one. I do not want to get into issues relating to professional malpractice.
Some agencies abroad (US particularly) attract inventors claiming to market and commercialize their invention for commission, but later exploiting the inventor who end up paying. I have also seen some agents being added up as inventors/applicants in few applications. This maybe because the agent may have actually given flesh to a bare idea or merely as a payment option.
I (as an agent) would not take up the option of percentage commission; it would be against professional ethics. After all, the same reasoning should apply as described by the Bar. But then there is nothing that stops me form not doing so, as there are no rules of professional conduct for an agent (unlike countries like JP).
The best option in my opinion would be to have a Non Profit organization which would work with the inventors, but on a commission basis. This organization can then engage a law firms or agents to file patents for a fee (subsidized or regular). The commission money which comes out of commercialization of the patent can go into a fund which helps more inventors obtain a patent (avalanche effect!!). Here the agent would do his professional work and the inventor also benefits in turn helping many other inventors.
Talking about quality of drafting, it cannot be taught in a classroom. Many start in a law firm helping an agent draft response to office action. This way they know what not to do when drafting. The experience in prosecution and later opposition make them a better in drafting. But nowadays I find people (KPO’s) who draft but have never prosecuted. This way they remain unsighted towards possible objections.
Now about qualification of Patent Agent, I don’t understand how a lawyer could understand technical details of a patent. Drafting is an important part in obtaining a patent, and it technical. Then again how will a pure lawyer give arguments against a cited document which he cannot understand? So it is out of question that a lawyer should be allowed to register as an agent. Moreover, I would like to see the requirements more stringent like having experience under an agent before appearing for the exam, like for a Charted Accountant or Patent agent in Europe. Patent Agent is a professional exam and should be conducted like one, only then you can see the quality of agents improving.
indian.patent.agent
Is there any single student from NLU in patent practice?
Indian Patent Agent…read about Morgan Chu and you’ll know how a lawyer deals with technical details.In fact ..why go that far..this blog has mentioned Tahir Amin numerous times..and he has worked a lot with pharmaceutical patents and others. Off course in court most patent cases are argued by lawyers. It is not abt being a lawyer or a chemistry major. I aint saying that one dosent need to understand science..but one definitely does not need a three year B.Sc. degree!
Dear Mr. Anonymous
I, myself is a student of NLU and I am full-time patent litigator since two years.
Two prominent cases in which I am fully involved are Novartis v UOI, TVS v Bajaj
Dear Anonymous,
There are other students working in Patent litigation and consultancy. If u want i can teel about them also..
But why are we discussing NLU on this IPR blog….
This is my last response to your comments on this blog……
you already have my email id so contact me on that
Drafting of perfect patent application comes with experience, just teaching do this or that do not help, it is a matter of practise and the depth of the subject to be handled. Taking up a course is not really helpful unless one really possess the talent or skill.
With respect to fees, any established office will charge a bomb, they have to cover their overheads and maintain the office. However, talented, sincere and knowledgeable patent attorneys and advocates, are avaible to work at reasonable costs.
Vandana Patent Attorney