A. The ‘In-House’ counsel: Surprisingly, the Indian subsidiaries of most foreign companies do not have ‘in house’ lawyers to oversee patent prosecution and litigation. Most of these subsidiaries instead depend on the ‘Company Secretary’ to double up as ‘in-house’ counsel. A ‘company secretary’ will usually have a degree in law, although I’m not sure whether its a mandatory requirement and would be located at quite a high position in the management of a company especially since it is a statutory requirement to have a company secretary for companies with a prescribed share capital. The main duty of a company secretary is to ensure compliance with the statutory and regulatory laws of the country and most importantly to impliment the will of the Board of Directors. Company Secretaries are however not practicing lawyers and will usually not be enrolled with State Bar Councils. Don’t get me wrong – Company Secretaries are brilliant people but they aren’t necessarily the ‘right’ people to be handling litigation or oppositions procedures. More importantly – law is not their primary forte and they may just be too indundated with their managerial work to focus full time on law. Contentious patent disputes require full-time attention. A first-step therefore would be to start hiring professionaly qualified lawyers, with some experience in Indian courts, as full-time ‘in-house’ counsel. Apart from their experience, a professional lawyer, with some work-experience, will be able to use his/her professional networks in choosing the right external counsel to represent the company in court. The role of the ‘in-house’ counsel should be to advise the management and co-ordinate with external law firms on legal strategy. The best hunting grounds for such individuals are of course the leading IP law firms.
B. Creating the right ‘team’ to handle the patent litigation: Most foreign companies are used to having ‘one-stop’ law firms to handle the entire gamut of contentious patent litigation in their resident jurisdictions. India however is all together a different ball-game since there is an increasing scarcity of such law firms in this country. The need of the hour therefore is to create the right team consisting of different law firms depending on the field of their expertise and this is where the ‘in-house’ counsel comes into play. An ideal team would consist of one law firm with a solid litigation practice at the ‘trial’ level, one law firm with a solid patent practice and one senior counsel to lead the arguments.
(i)Litigation law firms: When it comes to litigation law firms or independent practioners there are three principle categories in which they can be slotted. The first kind are those law firms which specialize in litigation before the writ jurisdiction of the High Courts. Typically these lawyers will have little experience before trial courts. However the High Courts in Madras, Bombay, Delhi & Calcutta have original jurisdiction which means these Courts can conduct trials for lawsuits above a certain pecuniary value. Therefore lawyers before these High Courts may also have a good trial practice. The second kind of law firms and independent legal practioners are those which specialize in trial practice before Civil Courts. These lawyers will usually have an excellent understanding of the laws of evidence, procedure and litigation strategy. The third kind of law firms are those which specialize in practice before specialized tribunals like the Income Tax tribunals etc. and they are completely irrelevant to this discussion.
(ii)Patent law firms: When it comes to patent law firms there is an abundance of them in India. The track record of most of these patent firms in opposition proceedings (which are pretty much identical to litigation proceedings) is abysmal. The reason for this is simple. Most of these firms specialized only in patent prosecution at a time when patent prosecution was a routine affair with only a few oppositions. Given this total lack of experience it is no surprise that these firms have a poor track record when it comes to oppositions. Another reason for their poor track record could be the fact that most patent firms are staffed by patent agents who may or may not be qualified lawyers. As per the Patents Act, a patent agent requires only a science degree and not a law degree. Of course if you don’t have a law degree, chances are you’re not going to know the law. From the perspective of a trial lawyer, the post grant opposition practice before the patent office, currently dominated by patent law firms, would be shocking, to say the least. For example in the Valcyte post-grant opposition and the more recent decision of the patent office in the Novartis-Cipla post-grant opposition there was not a single reference in the Order to the recommendations of the Opposition Board, despite Section 25 mandating that the Controller is required to consider such a report! Of course if this is an oversight of the Controller hearing the dispute, the patent firms in question bear no blame but it is highly unlikely that the Controller would have omitted to discuss the report of the Opposition Board if the counsels arguing the case had mentioned the same before him. Same is the case when it comes to evidence. In order to prove an issue, under the laws of India, it is not enough to simply file a photocopy of a relevant prior art document. Instead such evidence needs to be lead through the testimony of an expert witness who can be cross-examined by the opposite side. If you haven’t lead the evidence through an actual human witness you haven’t proved anything before the Patent Office and chances are you will lose your case on appeal. Another shocking lapse in post-grant oppositions is the absence of cross-examination of the expert witness. It is beyond my comprehension as to why none of the high-value patent opposition cases have witnessed a single cross-examination till date. How else are you going to impeach the evidence and expert testimony of the opposite side, if you’re not going to conduct a cross-examination? Oral arguments can take you only so far. Any patent trial in the U.S.A. or the U.K. or even before the High Courts in India would necessarily require a cross-examination of the expert witness. Why then do these patentees and opponents make an exception to cross-examination in the context of the post-grant opposition before the Indian patent office, especially when a post-grant opposition has the same effect as a revocation trial before the High Court? The two most high profile disputes i.e. opposition proceedings against Glivec and Valcyte were marked by a complete lack of cross-examination of the expert witnesses.
Having said all that I must mention that a good patent law firm is still important in order to provide the entire team with good prior art searches and assistance on the technical front. Ideally nothing more must be expected from these firms. Strategy, evidence and procedure are best left to the consideration of a litigation firm.
(iii)Senior Counsels: A senior counsel is the equivalent of the Queen’s Counsel in the U.K. A senior counsel is designated so by the Judges of the High Court or Supreme Court as a recognition of his advocacy skills. Typically senior counsels are involved only at the stage of oral arguments and he will be briefed by a law firm or an independent legal practicioner who has drafted and strategized the law suit. Given the fact that there is no lack of unethical, unscrupulous senior counsels in India, it would bode well to be careful while selecting a senior counsel to lead litigation. Most senior-counsels are of three categories:
(a) The ‘face-value’ senior counsel: Some Senior-Counsels are hired for their sheer face-value i.e. their reputations are expected to carry the case. A ‘face-value’ senior counsel is usually quite a high profile gentleman with little or no time for a detailed briefing. These ‘face-value’ senior counsels are best reserved for those special moments like admission hearings for appeals before either the High Court or the Supreme Court. Don’t expect a ‘face-value’ senior counsel to have a long-term meaningful engagement with either a patent infringement proceeding before the High Court or the patent office.
(b) The ‘screamer’ senior counsel: The ‘screamer’ Senior Counsels are hired for their sheer capacity to scream their lungs out in Court regardless of whether or not they make any logic or sense. Again the ‘screamers’ should be reserved for those special moments when one of the parties is simply looking to confuse the hell out of the hearing judge and make him doubt his very existence.
(c) The ‘ideal’ senior counsel: The ideal Senior Counsel for an opposition proceeding or a revocation trial before a High Court is a relatively low-profile senior counsel, who is willing to spend the long hours that a patent infringement suit would demand. It would also bode well to investigate the background of the senior counsel because its no secret that some senior counsels are appointed to the position of senior counsels for reasons that will not be discussed over here. Another important criteria while selecting a senior counsel would be his willingness to ‘listen’ to the briefing counsel. An occupational hazard for briefing counsels is the fact that a Senior Counsel engaged by them may just decide to hijack the strategy and go on his own trip. Therefore while selecting a senior counsel the most important factor is the willingness of the Senior Counsel to spend long hours conferencing with the briefing counsels in order to ensure that he is adequately prepared to argue the case.
(iv) Foreign Law Firms: Given the obvious scarcity of decent patent law firms in India it may not hurt patentees to fall back on either English or American law firms to advise them on their Indian patent litigation. The basic principles are pretty much the same especially when compared to the U.K. English law firms have already recruited large numbers of Indian lawyers and will therefore be in a better position of provide the right mix and match of talent for litigation even in India. It obviously goes without saying that only Indian qualified lawyers can actually appear before Indian courts.
(C) Client-Attorney privilege: Given the global nature of patent rights, an ‘in-house’ counsel should ideally take steps to review the rules of privilege in each country so as to protect possible communications from discovery proceedings in alternate jurisdictions. In India special care must be taken while communicating with ‘patent agents’. The reason for this as explained above is quite simple – A law degree or enrollment with the Bar is not a prequisite to become a patent agent in India. However under S. 126 of the Evidence Act, 1872 only communications with a certain class of legal practitioners would be covered under this exception. It is therefore not completely clear as to whether ‘patent agents’ would be covered under Section 126 of the Evidence Act.
(D) The importance of a ‘due-diligence’ prior to litigation: Of all the patents that I’ve reviewed in the last few years, I can assure you that atleast 75% of them could have been knocked down on pure procedural grounds without having to raise a single argument on the science of the invention. These procedural grounds could vary from Section 8 requirements to faulty assignment deeds. The failure to submit details of corresponding foreign applications under Section 8 is nothing but gross negligence and patentee should not shy away from suing those patent law firms which are guilty of such gross negligence. Given their recently disclosed, mind-boggling revenues, I’m sure they will be able to pay up for their gross negligence. For patentees, it is of the utmost importance that they hire a firm, not being the firm which prosecuted the patent application, to conduct a due diligence on all patents that are deemed to be of a certain strategic value.
(E) Let the Indians take the decisions: Most Indian subsidiaries of foreign companies are completely controlled by their masters in foreign lands. It is simple common sense that a person sitting thousands of miles away, with little or no knowledge of the Indian market, should defer to the Indians managing their Indian subsidiaries when it comes to taking the final call. This would obviously involve the foreign management swallowing their ego and it is unlikely that this will happen any time in the future.
brilliant article..concise and to the point…
PR,
Being an in-house IP counsel and some one who has been involved in a fair number of patent cases, I completely agree with the critical role that an in-house counsel plays as also the completely inappropriate use of Company Secretaries. Look at the way the Big pharma companies’ cases are being managed. Though, I do not necessarily agree with the right hunting ground for them being law firms.
Now, next:
b) Right team – an effective in-house counsel can manage a lot.
c) Litigation law firms:
I have worked with and seen on the opposite side, more than half dozen odd law firms – including the so called most expensive and ‘Numero uno’ law firm. Across the board, the law firms do not have great technical talent but have no qualms in charging rates almost equivalent to US patent law firm rates.
d) Counsel – we have a dearth of good patent counsel, and I am not talking here of senior counsel. I am talking of folks at the IPO level.
e) Quite a patent law firms are a joke. This is evident in a large number of law firms’ messing up the cases. Look at the host of divisional rejections from DEL PO, since the Agent did not file the original as a S. 5 file.
f) Due diligence – again.. a good in-house counsel will approach the case, keeping this in mind.
Before ending, personally, I think that the top law colleges of today do not groom the killer instinct that is needed for a litigation counsel (incl. those needed for patent litigators).
I think that even an in-house counsel needs to be a litigator with a killer instinct… but with a mild exterior.
He should be ready to fight.. get on to the bare knuckles fight when needed, while suave when approaching the top management and giving them facts and implications, not getting panicky himself nor confusing the top management.
Regards,
Freq. Anon.
Great post Prashant.
Innovator companies are indeed not learning from their mistakes. For example, Novartis’ opposition proceedings taught the importance of including efficacy data in a patent application. However, how often the learning is incorporated by doing pre-filing amendments of pharmaceutical patent applications is debatable. Till recently, I was handling pharmaceutical patent applications at a top IP law firm, however, seldom was I instructed/allowed to carry/suggest clients technical alternations in the patent application before filing at IPO. Clearly, I see it as an inhibition on side of patent law firms, who being headed by lawyers, are averse to getting into technical discussions with a client, and only focus on religiously following procedural formalities.
This strengthens your suggestion of having a strong ‘In house IP counsel’ having a right mix of patent practitioners, who can guide innovator companies at filing and prosecuting stages, and professional lawyers, who can sail the companies during a patent opposition/litigation.
BR,
Kshitij Malhotra
What PR is suggesting is nothing out of the box or radical.
The only reason for the current underdeveloped Patent Litigation scenario is the fact that’Patent Litigation’ is yet to evolve in India. Once it does, all the highlighted issues will be solved. There aren’t enough Patent Litigation suits happening my friend.
Consider this fact: first it was not even a pre-requisite to have a scientific background to be a registered Patent Agent. Now it is. We are inching slowly and surely.
I object to the language in which Patent Agents have been described. They are only supposed to be lawyers as far as the Patents Act is concerned. They are supposed to be more technical than legal. You are not supposed to know the procedural part of law to become a patent agent. Its only unfair to demand such things from them.
Instead you should demand that opposition proceedings may only be carried out by Patent Agents + lawyers. Then you are justified in your crass comments.
Nevertheless, your article was interesting.
Thanks Sandeep.
Hi FA,
Agree with you on most points. On killer instinct, I think its more a function of personality than training. Anyway, students from the top law schools hardly if ever get into patent litigation.
Best,
Prashant
Hi Kshitij,
I guess the problem was not with the fact that it was lawyer heading your previous firm but the fact that the lawyer was unprofessional to not warn the client of the consequences of not filing complete specifications.
As for procedural formalities, I don’t see too many patent law firms that are upto the mark.
Hopefully individuals like you in the practice will help remedy the situation.
Cheers,
Prashant
Dear Anon (7:06 PM)
I never claimed the Nobel Prize or a patent for my post. So yes, I agree with you that it doesn’t have anything radical in it. The tragedy however is that innovator companies just fail to see the obvious while trying to patent their allegedly non-obvious inventions.
Secondly I object to this attitude that patent litigation is yet to evolve in India. Its been 5 years since patent litigations kicked off full steam in India. I’ve sure that certain strains of bacteria are evolving faster than the Indian patent law practice. The reason for this ridiculous rate of evolution is because of the quality of advice being rendered by inefficient law firms. The complete lack of attention to detail is appalling. For example I’ve seen patent applications filed without a single scrap of Section 8 information. The patent agent who filed such an application should be brought to the task for such negligence especially since these guys charge through the roof for their deficient services. It is ridiculous to even suggest that a patent agent is not supposed to know the procedural part of a Patent Act.
Coming to your last point, you’ve obviously not read the portion where I’ve clearly recommended that opposition proceedings should be carried out by a team consisting of patent agents + lawyers!
I would also request you to point out the ‘crass comments’ to me so that I can delete the same.
Prashant
PR,
One major issue here is that patent agent’s are doing the job of lawyers. This is not good for the profession. The Bar Council of India should take action against patent agent’s who give legal advise.
Additionally, lawyers like you (no offense intended) cannot render advise under patent laws. by lawyers like you, I mean people who have no technical background and are not eligible to be a patent agent.
One comment mentioned that Indian patent litigation is not mature enough. The act was passed/amended in 2005 and it has only been 5 years. Our system is ill-equipped to properly patent cases.
Dera PR
(your post:8:47)
Just because you have noticed a few incidences of negligences, you cannot whip the entire community and give them a bad name. I can assure you that there are others like me who diligently adhere to all such requirements. This is what I was objecting to and that’s what was my reference to your crass comments. Just because you do not want to name that irresponsible agent/law firm, you cannot just downgrade the entire community of Patent Agents in India. I hope you get my point, in good faith. There are good and bad, responsible and irresponsible people everywhere.
FYI and incidentally, in my dealings with some international IP firms, I have experienced much worse.
@Anonymous – If lawyers can’t render legal advice, and so can’t patent agents, then who has the authority to render legal advice on patent laws?
I think your understanding about rights of patent agents as defined under patent act is patently wrong – not surprising though considering the sub-standard of patent agent examination till the revamping recently. I would advice you a reading of Advocates Act, 1961 after you go through relevant provisions of the patent act, to develop a better understanding on the topic. Any discussion, will thereafter be useful.
@Prashant: I would like to object on the point of Client-Attorney privilege as mentioned in your post. The reason for taking special care must be taken while communicating with ‘patent agents’ is not that simple, when you use the sentence “It is therefore not completely clear as to whether ‘patent agents’ would be covered under Section 126 of the Evidence Act” later. The extension of ambit of sec 126 of IEA, 1872 is debatable, especially considering the exclusive powers vested on a patent agent by the Indian patent act, and the broad connotation of the term ‘attorney’ according to dictionary definition. Therefore, derivation of a strong conclusion based on a simple (but not completely clear) reasoning could have called for some more serious thinking on your part.
BR,
Kshitij Malhotra
Dear Anon (1:23)
Excellent point, I should have covered it in my post.
As per my interpretation of the current law, lawyer enrolled with the Bar Council are qualified to give opinions on patent infringement because patent infringement is essentially a question of law.
On the other hand a patent agent who is not a lawyer is not qualified to practice law, especially since patent infringement cases are decided before High Courts, where a patent agents without a law degree cannot practice.
Besides the above point, I also contest the logic of your assertion that only patent agents can advice. As of now I find the science requirement of the patent agent exam quite illogical because it allows a person with a chemistry degree to qualify as a patent agent who can also draft a patent application related to software or mechanical engineering degree. Another example is a person with a degree in botanical sciences being able to sign of on an automobile patent application.
In fact I would refer you to Feroz Ali’s excellent article in the Hindu in January of this year for a more detailed critique of the present patent agent system.
http://www.hindu.com/seta/2010/01/21/stories/2010012150101300.htm
Cheers,
Prashant
Dear Anon (10:27)
These are not ‘a few incidences of negligence’. These mistakes are being repeated in every opposition!
I have no doubt that you are diligently adhering to all the requirements of the patent office. In which case, you are the exception and not the rule.
The ‘rule’ as we have been seeing in consecutive oppositions, most of which were handled by the leading firms, has been that most cases are destined to be doomed because of shoddy prosecution by these firms. Its time for them to wake up to their mistakes.
And given the fact that you couldn’t point out any of the ‘crass comments’, I will assume that there were no ‘crass comments’ in my post.
Warm Regards,
Prashant
Hi Prashant,
Awesome post!!
I agree wid ur “imp. of due dilligence” point at last.
most of the patent agents (with so called fair “technical knowledge” ) have started becoming lawyers also or vice versa but i guess that is not sufficient. getting trained under appropriate counsel and learning the litigation technique with respect to strategy, grounds and process is something significant.
regards
Swaroopa
ps: surprisingly scary to know about screamer counsels 🙂
Dear Kshitij,
I think ‘anonymous’ meant to say that only a lawyer who has also qualified as a patent agent can give advice on patent issues.
On the point of ‘Client-Attorney’ privilege extending to patent agents, I intend to put up an entire post clearly substantiating my opinion on the same.
Cheers,
Prashant
Hey Prashant,
Waiting for the post. Will be an interesting discussion 🙂
Cheers.
Kshitij Malhotra
Dear Prashant,
First things first, gutsy article dude! Politically Incorrect, but true to a large extent! I just hope we have a few more “Dirty Harries” doing some plain-talking instead of hiding behind time, experience and other such flimsy excuses. I don’t see how can these be used as “reasons” when quite a few firms have been in the business of patents for atleast 3-4 decades?? Drafting is seen as a means of making a quick soft buck without really adding value to the application. I am not painting everyone with the same brush, we have produced some brilliant drafters, but by and large this area leaves a lot to be desired in terms of quality. Our approach to patents, be it drafting or any other aspect of prosecution or litigation lacks depth and above all, a marked unwillingness to understand and acknowledge that you just cannot practice patent law the way you practice other branches of law. I really don’t know how long or what is it going to take to drive this point home, but trust me your post is a timely step in the right direction.
Before I proceed to comment any further, I’d like to put on record that I flunked (miserably at that) in this year’s patent agent exam. I say this only because I find that when even someone like me who has failed in the exam finds certain practices/arguments irrational, I am surprised that established practitioners (agents and lawyers, not all, but a significant few) fail to question what is obviously and patently incorrect.
My apologies if I sound patronising, but I clarify I am not taking a patronising stance. It’s just that I find your post the perfect vent to a few frustrating experiences in the recent past; somehow the practice of patents appears to be driven so much by a herd-mentality that to question a certain so-called established practice is to invite the wrath of those who have spent a lot of years in the field. The funny part is that their reaction doesn’t stem from the fact that a question is trivial, rather the reaction is attributable to their inability to understand the question or even if they manage to understand, to come out with an honest answer (leave alone satisfactory answer. Answers come only when one attempts to put aside that absurdly bloated ego to focus one’s energies on the issue).
The standard retort is “This is how it has been going on for years! Are you telling me that all these people are fools?!”, to which most of the time one has half a mind to shoot back and shoots back “Yes!!! And that’s a resounding Yes!”
I think if you (generally speaking) have a question about a certain “protocol”, but you don’t have the spine to voice it aloud and you continue with the norm just because you are scared of drawing stares, you lose the right to take offense when you are clubbed with the rest of your peers who scorn and scoff at anything that is new, forget obvious or not. So much for practicing the law of imagination and innovation!
On the issue of Agents v. Lawyers, I think I really cannot generalize, but personally speaking I would really prefer a sensible experienced agent to an experienced lawyer when dealing with a patent dispute. Because, as you rightly pointed out, quite a few disputes can be dealt with at a procedural and practical level and an agent who has spent some time and thought on the framework of the Act and the requirements of the application, is any day a better asset than someone who is good with court craft. I don’t mind having both, I am just thinking of a situation where I am required to choose the better of the two. That said, sometimes a few agents do get stuck on a point without understanding the legal implications or the needs of the Courtroom.
On a broader level, I think patent practice in India suffers from serious compartmentalisation in terms of the skill set required. Although, I don’t think a degree in science or engineering is required to take the patent agent exam, it is necessary if patent practice is to be meaningful. There may be some exceptional practitioners who have proved to be wonderful drafters without a degree in science, but they are, as I said, exceptions. We really need to groom people who understand law in general and the requirements of patent law in particular.
I am completely with you on the point of engaging senior counsels. For me, a patent dispute is more about preparation and understanding the merits of the case than mouthing a gazillion “Your Lordships” before finishing one coherent and relevant sentence. You just cannot afford to go to the Court with eleventh-hour preparation in a patent matter and hope to fall back on “face-value” and a smokescreen of mumbo jumbo.
Patent disputes cannot be treated as just any other real estate dispute where each side fields the biggest names money can buy and hopes to get a ruling in its favour. In the process, the law goes for a six, it becomes all about lung-power. The simplest and the most fundamental of questions are given a go by because the question gasps and struggles to scale and surmount the ego of the horse ventilating the case.
I just pray that atleast this branch of law comes out of its “jugaad” philosophy where connections, linguistic and regional affiliations prevail over merit and commitment.
Bests,
Sai.
PR
Read your post with interest.
While there is no war between patent agents and legal attorneys, each bring their own expertise to patent litigation and serve roles complementary to each other. A patent agent is a technologically qualified person helpful in, for example, interpretation of patent claims while a legal attorney guides through the court procedures. If you have a patent attorney, holding a law and a technology qualification, on hands, God bless you.
i remember a situation when a so called senior counsel referred to one of the young , brilliant and internationally proven “patent attorney” as a “kid” in a derogative sense during a conversation.my retort might have made that person to think “as another kid”.(incidentally the first kid! has also commented in this post)
PR,
Lawyers can render legal advise.
However, not all lawyers can write “Patent Attorney” against their names.
As far as the requirement of science, it is a requirement world over. See the practice in Europe/Japan/Korea/US. There is nothing illogical.
Rather, I find your assertion (science background)to be illogical. The reason it is illogical is because it is the market (read client) and not the patent office that determines what a patent agent/attorney writes.
To be clear, lawyers like you (again no offense intended) cannot be “Patent lawyers.”
I wonder what Shamnad and Rajiv have to say on this (they are the only patent lawyers on this blog)
Cheers,
Hey Sai,
Lol@ the ‘gutsy’ and ‘dirty harry’ comments. I decided to get candid since I’m pretty much out of the game now.
Don’t worry about that patent agent exam – I’m sure you’ll smash it apart the next time.
I can completely understand your frustration at the state of affairs with patent litigation, especially the selection of Senior Counsels.
Let’s hope the ‘Jugaad’ philosophy dies a quick death.
Cheers,
Prashant
Dear Anon (2:30 PM)
I agree with you – if you find a person with both a law and science degree, God has indeed blessed you.
Amen!
BR,
PR
Dear Anon (6:40 PM)
You have distorted my comment. I didn’t say it was illogical to have a science degree. I said it was illogical to allow a person with a degree in chemistry to draft a patent application for a invention pertaining to mechanical engineering or a software patent.
In case you’re offended that a person who is not a ‘patent lawyer’ is giving out this gyan to you, I would like to refer you to Feroz Ali’s article in the Hindu: http://www.hindu.com/seta/2010/01/21/stories/2010012150101300.htm
In case you didn’t know, Feroz is an author of a pretty bulky book patent law and was also one of the counsels involved in the Valcyte case.
PR
Hardly any film crictic of repute ever made a decent film!!!
I guess, same goes for the bloggers!!!
PR,
Your words in the comments: “As of now I find the science requirement of the patent agent exam quite illogical because: it allows a person with a chemistry degree to qualify as a patent agent who can also draft a patent application related to software or mechanical engineering degree.”
I rest my case for distorting your comment.
There is nothing illogical in a science requirement. Just do a Wikipedia search on ‘Patent attorney.’ It is a requirement world over.
As I had said earlier, it is the market that decides who writes what application. Give me a single instance where a newly qualified agent has written an application outside his field of expertise. Only caveat, agent should not have just put their name to the file.
Finally, if you are throwing names around, make sure you give the correct name. His correct name is “Feroze Ali: the book that you mention is written by Feroze Ali, and Feroze Ali appeared for the Valcyte case.
Dear Anon (2:39)
I guess the same goes for anonymous commentators on this blog. 🙂
Warm Regards,
Prashant
This comment has been removed by the author.
Dear Anon (9:39PM)
1. In regards the spelling of Feroz Ali’s name I refer you to 5 links below, which will lead you to his blogs, publications and books:
1. http://in.linkedin.com/in/ferozalik
2.
http://www.hindu.com/seta/2010/01/21/stories/2010012150101300.htm
3. http://pharmapatents.blogspot.com/
4. http://www.lexisnexis.in/the-law-of-patents-with-a-special-focus-on-pharmaceuticals-in-india-softcover.htm
5. http://www.dnaindia.com/money/comment_how-to-destroy-an-invention-the-patent-office-way_1338913
So now that I’ve established that there his name is Feroz and not Feroze, I’m going to once again ‘drop’ his name around and refer you to his article in the Hindu, desperately hoping that you actually read it this time.
Your point on the ‘market’ deciding who writes what application is well taken. My point was in regards the Patents Act making this a statutory requirement. The law and by implication the Parliament need to provide a reasonable basis for excluding somebody from carrying out certain functions. In the context of the Patents Act, Parliament has created a special class of people who can write the patent agent exam while excluding several other people. The ‘equal protection’ clause of Article 14 of the Constitution requires a reasonable basis for excluding other citizens from qualifying for this class. ‘Reasonableness’ requires some degree of logical consistency which brings us back to the same point – how is it logical for the statute to allow a person with a chemistry degree to sign off on a software patent. Such a classification is unreasonable and deserves to be struck down. Once again I would implore you to read Feroz Ali’s article in the Hindu.
Warm Regards,
Prashant
Feroze Ali or Feroz Ali – he did appear for one of the defendants on Valcyte and having seen him up close, I can assure you – he is a great Counsel.
He does not have science degree but every bit of science he presented, he was way more convincing than the Innovator Counsel… I was there!
Regards,
Freq. Anon.
Wow! way to go Reddz..
If i could be a lil filmy about it.. it takes intension to be a patent attorney and not just qualification!
Legal acumen and strategizing that might be required in a patent litigation does not come with a degree…and similarly understanding science needs one to be inquisitive.. no degree measures that! So this debate of .. “my daddy stronger” ..is pretty much useless! Procedurally there might be a few restrictions applicable to both but that doesn’t stop the work ever.
Reddy’s point is bang-on: Dedicated (lawyer + patent agent) OR patent agent + lawyer… whatever u prefer (lest their be a fight ..who came first!) makes a good combination.
It’s a process.. we’ll get there.
Amen to that!
PRashant,
Thanks for letting me/us know about the different versions of Feroz/Feroze’ spelling. Feroze has been practicing for decades, if not for years. He is more of an exception rather than a rule. I have read his book, his blog, and his posts on spicyip with keen interest.
Till 2003, there was no science requirement for the patent exam-It was brought on post 2003 and you should talk to Shamnad about it; He was the last patent agent to be registered without having a science degree.
You are creating a fiction (software engineer sign off on chemical application) to assert that the exam should be open for all. Let me ask you, if you would prefer to be treated by a doctor would simply took the exam and passed or somebody who studied medicine, then qualified for the exam?
Now I would like to draw your attention to the fact that the Indian Advocates act also had to differentiate between pleaders, mukhtiars and advocates. The basis for these amendments was to stop the public from being fleeced by people who did the job of advocates. So pleaders, etc could not write Advocates against their names.
Similarly, there is a reasonable basis for excluding people who do not have a science background from prosecuting patents. Note that I say prosecuting patents not litigating them. You can litigate patents but you cannot prosecute them.
Taking an exam, and working after qualifying an exam are two different things. You are confusing requirements of an exam and those a profession.
The exam is open all science graduates. Hence the law applies equally to all. Therefore the exclusion is reasonable and is rationally related to a legitimate government interest. The patent office does not differentiate between a botany/engineering graduates and both can take the exam.
Finally, in my limited experience (8+ years), I am yet to see an engineer sign off a pharma applications or a Ph.D. in bio sign on a wireless communication application.
As an endnote, if you think that it is illogical to have an botany graduate sign off on a software patent, please go ahead and challenge the law, but please do not equate taking an exam with practicing after an exam.
Dear Anon (7:42PM),
1. If I may quote from your last comment “Finally, if you are throwing names around, make sure you give the correct name. His correct name is “Feroze Ali: the book that you mention is written by Feroze Ali, and Feroze Ali appeared for the Valcyte case.” I just pointed out 5 links with his right name and yet you stubbornly persist with ‘Feroze’ and not Feroz. Given that you are an anonymous commentator and someone with experience (8+) it would behove of you to accept your fault and if not that atleast use the correct spelling.
2. In regards Feroz’s experience I would like to point to you that Feroz has not been in practice for decades, in fact he is only in the early thirties and it is precisely his success at such a young age that make’s him a brilliant patent lawyer. I’m sure a lot of us would appreciate it if you didn’t rob him of the credit due to him.
3. In regards your endnote you say “please do not equate taking an exam with practicing after an exam”. This is once again a figment of your imagination since I never made any such insinuation.
4. Coming back to the science requirement of the patent agent exam. If the statute seeks to discriminate against citizens who do not have a science degree it is not only required to prove a basis for this reasonable classification but also prove a rational nexus to the object of the legislation. In the case of the patent agent exam although science degree is deemed as necessary, the exam does not test the candidate on his science degree. It only tests a candidate in compiling scientific information in the format of a specification. Compiling such information can be done by anybody with a reasonable grasp over the English language. Secondly since there is no requirement that a candidate with a chemistry degree signs of on only a chemistry patent, the law permits him to sign of on a software patent which results in an unreasonable classification. Therefore to qualify as a reasonable classification with a rational nexus the patent agent exam should ideally test the candidate on his science degree and ensure that the patent agent can sign off only on those applications in which he has earned a qualifying science degree.
5. The patent agent exam has a direct bearing on the quality of patents and the cost of patenting. Fewer the number of patent agents, greater the cost of patenting.
Warm Regards,
Prashant
PR (11:04 PM)
You are overwhelmed with stupidity.
Do you think that a Chemistry client who is spending a good amount of money will entrust the drafting of his patent specification to a software engineer ? I am sure that a wise answer is NO. Then why are you just going on bragging about this science stream classification.
It is just not practical/feasible for the Patent Office to test the candidate’s scientific credentials. And on what grounds will they do it? If is the job of the Engineering/science colleges to test a candidate for his scientific abilities. And only after doing so, they award him/her a science degree. The Patent Office tests the candidate for Patents Act next. As simple as that.
In response to the above and given the fact that the kind of a stubborn blogger you are, I expect that you will suggest of floating another course which teaches both Engineering and Law and awards a Patent Agent Degree.
Please also update yourself of the fact that preparing a patent specification is not just compiling information, no – not at exam level too. It is for this reason that the question paper gives you a disclosure on at least two engineering/science streams.
All of your above statements indicate that you don’t have much respect for the profession of Patent Agents. It seems that you have a perennial grouse against Patent Agents since they have been allowed to come and work in you lawyer’s territory. I think you are extremely unhappy that the Patents Act has made it compulsory to have a science degree before taking a Patent Agent exam. Since you yourself cannot take the Patent Agent exam, you are using any nonsensical argument available at your disposal to show the Patent Agents in bad light.
I sincerely request you to stop that.
Dear Anon:
As a moderator, I was not inclined towards publishing your comment. But Prashant insisted that we do so…perhaps he’s much more tolerant and forgiving than I am..
What you have used is clearly unacceptable language and tone. Please do remember that we put in a lot of time and effort to bring you the latest in IP…and more importantly to review IP stuff in a manner that is somewhat useful to you (hopefully). The least you can do is to be courteous, while disagreeing with any of the view points.
Prashant’s post raised important issues about the quality of patent litigation generally…and having seen this quality myself…i tend to agree with him. We need to ramp up our quality—for we have an adversarial system and the judgements are (in many cases) reflective of the quality of counsel arguments marshaled before the courts. He also touched on the rationale behind a science qualification for patent practice in that context….you may agree with him…or disagree with him….but if I can please implore upon you to do so politely…so that we don’t waste our time in acrimony and negative feelings. but can move on the much larger issues at stake here…and contribute to better IP policy in this country. Thank you very much.
@ Anon (11:35AM)
This discussion is over. Your last comment crossed the line of decency and propriety.
Fortunately for you I will not stoop to the level of imputing personal motives to you or your intelligence.
Come back to SpicyIP once you learn the rules of decency and propriety. Until such time you are most unwelcome on this blog.
Prashant
@ Anon
1. The Patent Agent exam might intend to restrict the entry of certain professionals that u consider unqualified for the reason that they do not have a formal science degree, but this will not stop people interested in pursuing patents from working on a patent application or drafting claims or opposing application so on and so forth.
2. I dont know how much of patent drafting you have come across in last 8 years but i do know that there r firms and individuals that use expertise of e.g. a biotech grad to draft a software patent or electronics etc. I wont say they cant do it…if i support the proposition that a lawyer can assist in drafting an application, then a biotech grad surely can assist in working on a technology different from his formal degree.
3. I agree with Reddy also coz we have to understand…a patent application is just the beginning of the whole ordeal. A well drafted patent application not just claims well, but needs to anticipate possible disputes and claim in a way to avoid those disputes! Claim drafting is an art…and difficult too. Il again say, degrees cannot measure ability. It might be necessary to award degrees to ensure streamlining and avoid frivolous actions, but one must not carry a bias.
4. If u agree that the Paent Agent exam cannot test scientific acumen then why restrict it? Why not let all individuals take the exam. The ones who clear the exam should be capable.
5. Is there a degree or a qualification certificate required to invent something???? does the law expect u to have a degree to claim an invention? if u can invent u obviously have the talent. If you can draft a decent claim and understand the technology and defend a patent and sue for infringement of a patent, then why this stubbornness to disqualify someone on assumptions that they will obviously not be good enough?
6. Sir, even at the Court one is expected to know the science and argue based on the patent and the prior art. Not having a degree does not stop you from studying does it?
7. There are so many ..so many professionals in India and abroad who do not have a formal science degree but are pursuing patents and doing extremely well.
8. Anyway, i dont mind the patent agent exam and the conditions imposed as of now. what i mind is the extent of ignorance and being territorial.
Prashant,
I am the anonymous blogger at “1:23 AM”, “9:39 PM”, and “7:42 PM.”
But I am certainly not the one at “11:35 AM.”
You can tell that from the tone and style of writing. Even where I disagreed, I addressed you properly at all times. My disagreement was regarding the science requirement for the exam-not about the other issues.
I had ended my comment with the endnote (7:42).
I generally sign my name as “anonymouse” but I simply forgot to add it to my previous comments.
Regards,
Anonymouse
Dear Shamnad & Prashant,
I apologize for the abusive language in my last comment. I guess, I got carried away.
Best Regards,
Anon
(11:35)
What I understand is that Indian S & T personnel never took this patenting practice as a profession, at least now they have groom it to mushroom, in fashion models when failed in vanity can sprout in charity. Only a CHARIOTEER knows how to fill the gaps, without having the reigns in his/her hands. If he/she has in hands can spread the wisdom of life that is CSIR’s symbol.