“As is obvious from the procedural and evidentiary mistakes that are happening before the Patent Office, the law component of the Patent Agent Examination is completely inadequate.
A simpler option, in my opinion, would be to include some compulsory legal subjects as a part of the qualifying examination to become a patent agent. For e.g. the Law of Evidence, Statutory Interpretation, constitutional law, legal methods etc.”
I am reproducing my response to him, since I think these issues merit a more detailed discussion.
“You raise a very valid point about having to test prospective patent agents on foundational legal subjects—since a large part of patent prosecution will involve “legal” aspects. And better that we permit patent agents to engage more openly with legal issues (and issue patent infringement and clearance opinions etc) after testing them on the law, rather than trying to draw this artificial “technical” vs “legal” competence issue.
For patent practice (at all levels) really involves a mix of both these aspects. If a patent agent has to draft a strong claim, he/she must be aware of claim construction decisions that have issued from courts….and to properly assess the scope and relevance of such judicial decisions, they must be well versed in the role of precedents, the hierarchy of courts, principles of statutory interpretation, the case law method etc…in short, a patent agent must have some basic sense of the law and the legal method. Merely asking them questions on the Indian patents act is not sufficient.
However, should one go one step further and insist that they have a law degree as well? I think not. I’ve been speaking with some of the folks involved with the conduct of the Bar Exam this year and have been insisting that they merely test on “foundational” legal subjects and on legal reasoning, rather than an information guzzling and vomiting test on 20 different legal subjects. Once a good enough bar exam that tests on 4-5 foundational tests and legal logic is evolved, we have an appropriate filter. Much like Japan, we can have anyone take the exam and not just folks with a law degree. A law degree and a rigorous legal education is certainly likely to place such candidates at a considerable advantage over others in passing this exam…but should others without a law degree pass this exam, that much more credit to them!
The above logic ought to apply for patent agent qualifications too….our only filter ought to be a rigorous exam that tests on patent law, foundational legal subjects, basics of patent drafting and ability to read, interpret and craft a patent document. A technical/science person is able to appreciate technology better and is more likely to score better on the part requiring the candidate to assess the technology in question and craft an appropriate patent specification or to interpret it.
In fact, I expected some of our commentators to raise this issue of technical competence that stems from a science/technical degree. Although a chemistry graduate might not do justice to an application dealing with an anti-gravity invention, the logic of science that is embedded within the educational DNA of such a candidate might make them better placed to appreciate another area of science, as opposed to a pure lawyer with no science background at all. So there just might be some rationale for insisting on a basic science degree for all patent agents.
However, while evolving guidelines for all of this, we also need to bear in mind that we have an under-supply problem when it comes to patent agents in India. Having very rigorous entry level criteria may limit our supply even further…and prove detrimental.
Therefore, as I mentioned earlier, I think the only filter should be that of the “exam”. And after that market forces….”
My 2 cents:
a) Science degree – in the real sense- do ‘hopefully’ teach a student of logical thinking and structuring thoughts in sequence. So, to me a ‘science’ degree as a foundation/ filter is completely acceptable.
b) I am not sure of how clients can differentiate today… there are just too few practitioners who focus on specific fields and are OK with refusing new clients who come for fields other than their specialisation.
c) Let’s also remember one important thing… for non science lawyers who are really interested in patent law – the only real thing they are missing is ‘initial’ patent prosecution… all other aspects – like pre/ post grant oppositions and revocation suits are open to them for practise.
I do not have solutions.. but some more observations…
Let me tell you some thing that I am seeing… there are people who are now doing the degrees that they are missing – either for genuine learning or resume padding.
For instance, I see/ have seen at least a dozen IP professionals who did the law degree in last few years but whose legal understanding (to me) is really questionable… I am not sure how these (really good top class science) people would advise any one on a question of patent LAW… or how a particular IP point impacts a contract of merger!
Similarly… I also see/ have seen at least half a dozen names who are great/ decent/ average lawyers but are now doing science degrees from open universities… Again, I am not really sure, if these new ‘science’ graduates will be really able to do justice during claim amendment and whether they will really know what substitution (methyl or ethyl) is the heart of the claim – based on open university science degrees.
The Observer
The Patent Office undoubtedly needs officers who are well versed in Patent Law but I don’t think that they should necessarily have a LLB degree. Further, the need of the hour is to take administration and judiciary closer to people and simplify the justice delivery systems at all levels rather than complicate the legal process to such an extent that it requires a special class of professionals to interpret and understand it. This is important as the faith of the common people in the administration, judiciary, and especially lawyers, is at an all time low and our country is passing through a critical phase of internal unrest that is brought about by failiure of our administrative and judicial systems to deliver. That said, about patent practice before the patent office, I fail to understand why there is the impression that only patent agents can practice before the patent office. The lawyers can always draft claims for inventors and the individual inventors can file their own applications. Further, Section 132 (b) of the Patents Act expressly states that “Nothing in the Chapter shall be deemed to prohibit an advocate, not being a patent agent, from taking part in any hearing before the Controller on behalf of a party who is taking part in any proceeding under this Act”. Considering that practice before the Patent Office involves drafting, filing, and pre-grant opposition and the Act allows lawyers to do everything except perhaps file a patent application (though some of my batchmates are of the strong opinion that a non-patent agent lawyer can file as an agent of the inventor as per Section 6(1)(b) of the Act and for which they recently grilled an Assistant Controller of patents mercilessly during a guest lecture in our school-RGSOIPL), I fail to understand how lawyers think that they are prohibited from practicing in the Patent Office ?
Achintya Nath Sexena
RGSOIPL
IIT-Kgp
@ Observer:
Thanks for your comment. You’re absolutely right that degrees don’t necessarily confer competence. which is why an entry level exam that is rigorous might do a better job of playing the role of an effective filter…
@ Achintya: tks for your comment. interesting observation that lawyers could file patent applications too as agents. The provision that you refer to does not seem to support this observation.
Section 6(1) (b) reads as: “by any person being the assignee of the person claiming to be the true and first inventor in respect of the right to make such an application;”
Clearly, a “lawyer” cannot file on behalf of the applicant unless the lawyer is an assignee ….
In fact, section 132 appears to restrict the right to file to only the applicant (and not to any agent, other than a registered patent agent). It reads thus:
Nothing in this chapter shall be deemed to prohibit—
(a) the applicant for a patent 2[x x x] from drafting any specification or appearing or acting before the Controller; or
(b) an advocate, not being a patent agent, from taking part in any 3[hearing before the Controller on behalf of a party who is taking part in any proceeding under this Act].
The Act grants lawyers only the right to take part in a hearing. As you will appreciate, this is a very limited right. A lawyer cannot generally draft, prosecute the patent or correspond with the patent office regarding the patent application.
Section 129 is the key “eligibility” section (along with section 127) and states that:
“1) No person, either alone or in partnership with any other person, shall practise, describe or hold himself out as a patent agent or permit himself to be so described or held out, unless he is registered as patent agent or, as the case may be, unless he and all his partners are so registered.”
The term “practice” has then been defined in the section as:
“(a) applying for or obtaining patents in India or elsewhere;
(b) preparing specifications or other documents for the purposes of this Act or of the patent law of any other country;
(c) giving advice other than of scientific or technical nature as to the validity of patents or their infringement.
Clause (c) is quite interesting. Does this mean that no lawyer (who is not a registered patent agent) can advice on patent validity and infringement? In other words, since 129 specifically states that no person other than registered patent agent can “practice” as a patent agent (and the term practice as a patent agent includes advise on patent validity), a lawyer who is not a patent agent cannot advice on patent validity and infringement? If this reading were to hold good, a number of lawyers and law firms are in breach! Or is there a way to read this differently or to argue for a different interpretation in the light of another section or another law?
What we need is at this hour is that is the professional approach, in dealing with this sort of the problems of Patenting, we have no schools that can teach this. Just like a CA student works under a Qualified CA or LLB holder practicing with Sr Lawyer. IP which comprises Open Knowledge, Traditional Knowledge, Interdisciplinary S & T culture and also management skills along with knowledge of patenting procedures.
Keeping the pace of technology into consideration, according to my understandings, degree in science/ engineering/ technology is a must one to draft a patent application and I hope that no body can question this primary requirement. I also agree that a legal awareness is definitely required to effectively draft a patent application as well as to properly prosecute it before the IPO. However, before arguing on the need of a law degree or legal aptitude for being a Patent Agent, I would like to have some view on the minimum qualifications as stated in the Patent Act.
Section 126 (1) (c) states as follows:
“he has obtained a degree in science, engineering or technology from any university established under law for the time being in force in the territory of India or possesses such other equivalent qualifications as the Central Government may specify in this behalf”
The primary question which I intend to put here is – What is the exact definition of the term ‘degree’ in view of the aforementioned section? Is the term ‘degree’ means a first degree or an under graduate degree or any other degree, such as a post graduation degree?
Just for information: Such provisions can be found in various jurisdictions, however respective PTOs provides regulations with regard to minimum qualifications for appearing in the examinations and the manner in which the exam should be conducted. Such specific regulations can be found in USA, UK, etc. which categorically mentions the degree as first degree or a minimum three year degree course. In the absence of such regulation, from Central Government/ Controller General, in our jurisdiction, the status is unclear.
In view of above, I understand that definitely a three year degree would have been the intention of the legislature because no post graduate degree in science/ technology/ engineering can give basics of the respective field. Furthermore, in the absence of a basic degree in science/ technology/ engineering, a person taking up the task of drafting a patent application will definitely not do justice.
Under 1970 Act, requirement of science degree with a LL.B. degree clearly substantiate the understanding that the legislature intended to a basic degree which is necessarily a minimum three year degree course.
Now, going further, understanding that the degree means a degree whose duration is minimum three years, I would like to put up few more questions, as follows:
With what authority were the people having post graduation degree in computer applications but not having any basic degree in science/ technology/ engineering were allowed to write the qualifying examination for patent agent conducted by the IPO?
After passing the examination, under which provision were the persons registered in the Register of Patent Agent?
Who is exactly responsible for such irregularity?
What is the fate of such persons who have been wrongly registered?
** One may refer to UGC Act, various regulations for Standards of Instruction for the Grant of the First Degree through Formal Education, AICTE Act and regulations, regulations in USA, UK etc.
Knowing that Mr. Samnad Basheer is in the Examination Board, IPO, I understand that he will be the most suitable person to answer the above questions.
In my view the patent is a product of high level of research and not a mere A, B, C….of science.
Now a days most of the inventions are a combination of very advance tehnology.
A highly qulified person like a Ph.D in science or at least masters should take care of patents only. It is not a game of Bachelor (which is a qulifying eligibility only). I saw many lawyers having B.Sc degree or B.A degrees…they dont even understand the invention…….and without understanding the invention or technology involved in a invention nobody whether he is a lawyer or senior lawyer can argue the case …before any office, board or…
I am a patent agent with M.SC (NET- JRF) and LLB from a good institute. Currently, working as a Patent attorney in a company. This introduction is sufficient to make me an interested person in the subject matter of the current discussion.
No longer patenting is an activity confined to Indian patent office, it is a global phenomenon. There is no point in discussing the provisions of law in the Indian context on practice of lawyers before patent office. Professor Basheer made the limiting provisions crystal clear.
However the problem of competency (of patent agents) is a problem having far deeper roots. In recent times nobody wants to enroll into a basic science course, because of concerns about job prospect s after a science degree. The quality and quantity of research and PhD scholars is a bigger concern for the country. The standard of science education up to B.Sc. level (even M.Sc. at some places) is not encouraging. The lack of good teachers further complicating the situation. I will not discuss the standards of engineering education in India; only 20% are employable according to NASSCOM.
Now, where to find competent people to practice as a patent agent? If someone says domain knowledge is irrelevant for a patent attorney, then there is some problem with his/her understanding. However, this knowledge can be obtained through many ways, a formal degree in science, research, PhD degree, informal self study, working as a patent agent for 10 years, drafting 100 patents, etc. Thus, the technical aspect is beyond the scope of debate or discussion. It is a most in all major countries.
Now coming to legal knowledge, which is only confined to National law schools (!!!), we have a greater dilemma. Fresher law graduates usually work as juniors for considerable length of time to reach the minimum standards of a practicing lawyer. Nobody can deny that it requires 2-3 years of practice to understand the Indian Evidence Act.
When we neither produce good science scholar nor good law graduates, where to find the competent hybrids? Please rule out the exceptions like Mr. Sai Deepak and professor Basheer . I think this blog by Mr Prashant is much ahead of time. May be relevant in future, at least 5-10 years down the line. As a matter of fact the intellectuals are always futuristic and they should be. The reality is that we are not ready for patents yet, the companies and market is not aware, the law firms do not care (about quality), the examiners are equally mediocre, the quality teachers are scarce………,…………………………………………..a long list indeed.
Finding and solving the root cause of a problem, solves it in its entirety- Chanyaka
Ref. Keeping the pace of technology into consideration…
Awaiting for Mr. Basheer Comments…
With due regard to Professor Shamnad Basheer, i would like to interpret “Section 129 of Indian Patent Act” differently from what Mr. Basheer has suggested. A counter view on my interpretation of this section is very much welcomed.I have been a keen observer of this blog post and comments posted in different discussion forum. To be specific i do not want to get indulged into main discussion regarding controversies involved in science and law but I would like to raise a valid point in respect of interpretation given by Mr. Shamnad Basheer.
I want to re-produce the exact sentence which Mr. Basher has reduced after applying definitions
No person other than registered patent agent can “practice” (advise on patent validity) as a patent agent which infer specifically according to Mr. Basheer “a lawyer who is not a patent agent cannot advice on patent validity and infringement”
Now i would like to reduce the same section as No person shall practise as a patent agent unless he is registered as a patent agent that means first he should be registered as a patent agent, then only he can practice as a patent agent and advise on patentability, no other person can practice as a patent agent.
Precisely, first criteria should be he should be registered as a patent agent then he has right to practice as a patent agent which includes advising on patentability. If a person who is not registered as a patent agent cannot practice as a patent agent. Registration is the basic criteria to act as a patent agent. It is wrong to interpret that a person who is not a patent agent i.e. A lawyer does not have right to advice on patentability. Important thing to note is a lawyer cannot hold himself out act as a patent agent because he is not registered as a patent agent. Reiterating the same section to emphasis on this point as follows:
No person shall practise, describe or hold himself out as a patent agent or permit himself to be so described or held out, unless he is registered as patent agent.
Unless a person is registered as a patent agent he cannot
Hold himself out as a patent agent; Describe himself as a patent agent; or Practice as a patent agent.
To practice (advise on patentability) as a patent agent, he must be registered as a patent agent is a condition precedent.
In Mr. Basheer’s interpretation he has missed out the role of words “as a patent agent “to mean to act as a patent agent. Drawing a conclusion that a non-patent agent (a lawyer) cannot advise on patentability is not a relevant conclusion at all. It is more like jumping to a conclusion which is not well connected to the premise given. A lawyer can advise or not that is out of question here (a conclusion based on false premise), at least this cannot be inferred from what is given in the statute. What can be inferred from statute is simply that if a lawyer not registered as a patent agent cannot act as a patent agent.
Here the premise is that “a person is registered as a patent agent “. If he is, then he will act(practice or describe himself) as a patent agent and if he is not ,he cannot act as a patent agent. Mr. Basheer has drawn the conclusion on the premise that “he is a patent agent “. If he is a patent agent he can practice and if he is not he cannot practice which is a wrong argument. The proof of a conclusion depends on both the truth of the premises and the validity of the argument. The truth of the conclusion is a logical consequence of the premises—if the premises are true, then the conclusion must be true. The validity of an argument is not a guarantee of the truth of its conclusion. A valid argument may have false premises and a false conclusion. A fallacy is an invalid argument that appears valid, or a valid argument with disguised assumptions.
Awaiting for Mr. Basheer’s comments……
At times I miss on a few comments due to inadequacy of time, but I made out time this weekend to read all the posts and comments relating to the above topic. It is indeed an insightful debate among the Learned (a humble attempt to include both lawyers and science guys) as to what should be the ideal profile of a Patent Practitioner in the Indian scenario.
As I broadly summed up, the issues are as follows:
1. ideal patent competence ?
2. patent competence of an officer at IPO ?
3. Constitutionality of the proceedings before the IPO ?
My first two issues might be questioned as required to be necessarily united, but I do differ on such proposition. I would like to support such view with my argument in the ongoing comment. I guess we have been a bit over critical in our analysis and in trying to find an ideality we have proposed means which cannot be implemented in reality. The debate includes mostly criticism on the legal aspects of the procedural formalities at the IPO. But again I guess the debate has nicely summed up as to what constitutes the ideal patent competence. The requirement as to basic legal and science knowhow has been acknowledged by all. (I stress on the word basic) The bigger has always been the better but the minimum standard has not rightly been questioned. Further you can always improve on your knowledge if you know the basics but one cannot read an english line without knowing the alphabets. So I guess there should not be a tug-of-war among the science and law turf but everybody should be capable in their own particular domain as patent drafters, attorneys and those in litigation. The science-law combination influences in an inversely proportional manner among the profiles wherein the drafters should possess more scientific knowledge and ligitators that of law but everybody nonetheless should possess the minimum standard.
2. Now coming to patent competence of an officer at IPO, we cannot classify the same under any category of the above, and further we cannot expect to have an ideal patent competence of the same. But again the minimum standard can always be argued upon. We have two different work profiles at the IPO concerned with the grant of patent – the Examiners and the Controllers. . In my opinion the necessity of knowing the basic legal principles and procedures is more among the Controller than that the Examiner, who is concerned only with the examination of the applicant’s patent documents in accordance with the Patent Act. It is not necessitated for him to know the legal principles of evidence and examination required during times of opposition. Subsequently I agree the Controller should possess legal knowledge for conducting better opposition proceedings. As a solution I feel no entry level bar should be placed at the IPO for legal screening of prospective examiners. But the examiners should only be promoted to Controllers only after completion of suitable legal training required to handle the opposition proceedings before the IPO. Lastly in order to support my argument that an ideal patent competence possessing all the necessary attributes cannot be expected of an officer at IPO is simply because a person with such profile would not volunteer to work at the IPO looking at the challenges, profile, perks etc (one can differ but instances are in exception)
3. On the third issue I do not want to comment on anything but I feel its better to have the views of a person well versed in Constitutional aspects.