Some time back, the Agricultural and Processed Food Products Export Development Authority (APEDA), which is an autonomous organization under the Ministry of Commerce, had issued a tender inviting offers from the law firms specialized in registration and protection of Intellectual Property. The selected firm was to be engaged for an initial period of two years for the purposes of :
(a) Advising APEDA on the protection of Basmati vis-à-vis the entire spectrum of Intellectual Property laws and assist in registration of Basmati in
(b) Monitoring the national and international registers of trademarks and geographical indications on third party efforts to register the Intellectual Property in Basmati name and take requisite action in India and abroad;
(c) Initiating action against potential threats to the name Basmati in India and abroad through cease and desist notices, oppositions, cancellations, court actions or other modes of action; and
(d) Representing APEDA before the Courts of law in
However, following the issue of such tender, a Non-Governmental Organisation named Patent Agent Association of India (PAAI) that seeks to represent Patent Agents, especially new entrepreneurs practising independently, has written a letter to the Minister of Commerce & Industry, asking for relaxation of some of the qualification requirements that APEDA had laid down in the tender.
Following are the two main requirements to which PAAI has drawn attention:
a) APEDA has only sought offers from established law firms having been in practice for more than 5 years with a minimum annual revenue of Rs. 5 crore in the field of IPR in each of the 3 preceding financial years, which is to be proven vide a certificate from a Chartered Accountant submitted along with the technical bid.
(b) Secondly, APEDA has required at least 3 attorneys of the applicant firm to have a minimum of 15 years of practising experience at the Bar and also to possess domain knowledge of the international treaty, WTO Agreement and other regional agreements on the subject of geographical indications.
In its letter, PAAI has argued that the aforesaid criteria have been preventing application by legitimate Patents and Trademark Agents of India, who have duly passed the qualifying examinations and have been certified as an agent to practice by Controller General of Patents, Trademark and Design (under ministry of Commerce) on behalf of the President of India. Moreover, the extremely high revenue requirement also acts as a hindrance to the agents engaged in independent practice. Finally, according to PAAI, in the light of the fact that the Geographical Indications of Goods (Registration & Protection) Act has come in to force as recently as from September 15, 2003, the technical requirement of 15 years of experience in the domain and standing at bar makes little sense. By preventing young lawyers, who have achieved due qualification and entitlement to practice as Patent Agents recently, from offering their services to protect a national IP asset such as Basmati, such requirement also appears to be contrary to the promises made by the Prime Minister and the President of India of achieving brain-gain instead of brain-drain.
In conclusion, PAAI has suggested amendment to the aforesaid qualification requirements to the following effect:
a) The applicant law firm should be an established one in practice for more than 1 year and having at least one expert in each of the 3 disciplines of Patents, Trademark and GI.
b) The applicant firm must have at least four associates having the following
qualifications:
1. Qualified Patent Agent having passed qualifying examination organized by the Controller General of Patent, Trademark, and Design.
2. Qualified Trademark Agent and Attorney, registered in the office of the Controller General.
3. Qualified Attorney with at least 5 years of standing at the Bar.
4. An Intellectual Property expert having domain knowledge of the international treaty, WTO Agreement and other regional agreements on the subject of geographical indications.
It remains to be seen whether the Ministry pays heed to these suggestions and actually recommends APEDA to relax the qualification requirements to such effect. The fact that the tender required bids to be submitted by December 10, 2009 and so, the deadline has already expired, can only add to the worries of the Patent Agents who may be counting on PAAI to make a difference in this case.
