Legality of Patent Agent Exam: Collaborative Policy and CLAM


In the aftermath of the last patent agent exam, in March this year, we had a heated round of discussions on this blog. For a nuanced statistical analysis of the results of this exam, please see Rajiv’s post here.
Given that the IPO just announced the schedule for the next exam (January 15 and 16, 2011), we thought it might be an opportune time to reassess the exam, what it stands for and how it could be bettered.

For those not in the know, the eligibility criteria for taking the patent agent exam and the current format/structure of the exam is as below:

i) The candidate must be a citizen of India

ii) Must have completed the age of 21 years

iii) Must have a science, engineering or technology degree from India

iv) Must have passed a qualifying exam:

The qualifying exam mentioned above tests a candidate on his/her knowledge of the patents act (Paper I) and his/her proficiency with drafting and interpreting patent specifications and other related documents (Paper II). The total marks for the exam are 300. Each of the written papers (Papers I and II) is for 100 marks. Subsequent to the written exams, a viva voce of 100 marks is also conducted.

In order to qualify, a candidate must get 50% in each individual component of the exam (Paper I, II and the viva) and shall be declared to have passed the exam only if he/she obtains an aggregate of 60% of the total marks.

Some commentators to our earlier posts on this theme argued, and rightly so, that the viva voce (oral exams that are conducted post the written exam and carry 100 marks) is inherently subjective. Having been part of the viva process in May this year, I personally think it is useless (for want of a more sophisticated term), casts an undue administrative and financial burden on the government (as also on candidates), and is also unconstitutional.

Along with some of my students who did some exceptional background research on vivas and their legality, I was planning on writing directly to the government and petitioning them to scrap the oral viva rounds. However, we thought it might be more useful to first elicit feedback from our readers on some of these issues.

Towards this end, we have thrown open this debate on two platforms. One is our CLAM platform, that had already been introduced on this blog earlier. We’d run two policy proposals on CLAM, one dealing with the copyright exception for the “disabled” and the other dealing with other copyright proposals (that were drafted in the light of the recent copyright amendment bill by the government).

All you need to do is register through a very simple process–and you can participate in CLAM by posting your comments.

Alternatively, for those of you “argumentative” folks interested in more of a “debate” style platform, we’ve put up the above proposals on debatepedia. Here again, all you need to do is to simply register (provide a user-name and password) and you are ready to go.

If you don’t have the time and inclination to register at these sites, you can still view the proposals by simply visiting the relevant pages on CLAM and Debatepedia.

In short, our objections to the patent viva voce exam are as below:

1. The requirement of a viva voce is unconstitutional, inherently subjective and entails significant administrative and other costs. Hence it should be done away with.

2. Alternatively, assuming that the viva is held legally valid in principle, the present structure of the viva is arbitrary and unconstitutional. And should therefore be changed.

We would be very grateful if as many of you (as possible) could participate in this initiative. For one, it helps us refine the proposal and strengthen the arguments (or perhaps appreciate that the arguments are weak and we are barking up the wrong tree). Once we have collective input of this nature, we can finalise the petition and send it to the government along with all our joint signatures.

We are also hoping to improve the CLAM platform through this process. As some of you are aware, CLAM is meant to engender a more “collective’ and participatory process in law making. The time is ripe for such a platform, as would enable one to present policy proposals and refine/strengthen it (or even discard it) after inputs from stakeholders and members of the public. The platform will initially start with some key IP policy proposals and then move on to cover other legal/policy areas.

The platform is not only meant for proposals originating from the SpicyIP team. Rather, anyone with a carefully thought out policy proposal (on any area of law, and not just IP) can use the platform by presenting the proposal therein and seeking public input and views. Once such views are received and the issues thoroughly debated on the platform, the mover of the proposal/motion could amend their proposal in the light of such views and forward the final proposal to the government for consideration and implementation.

Unfortunately, the current CLAM platform is far from optimal. If some of you who have strong views on the patent agent exam (or even those of you who are interested in participatory policy making more generally), can use these platforms and come back with your suggestions on how to better it, it would help us devise a far more optimal platform than the present one.

In fact, as I had mentioned in an earlier blog post, we are also thinking of opening this to competition and offering a prize (20-25,000 Rs) for the person who designs the most optimal CLAM platform for us. Such a platform should enable the following:

i) Any person should be able to formulate a policy proposal on any area of law and throw it open to public debate and participation.

ii ) Members of the public (or any other closed group) can edit the said proposal and/or offer comments on it.

iii) Members of the public (or a defined close group) can view the proposal and all the comments pertaining to it, as also the history of the edits and comments.

iv) Members of the public (or a closed group) have the ability to add more arguments to the proposal and debate them out (much like debatopedia).

v) A general flee flowing discussion board, where folks can comment more generally on the proposal and surrounding issues, without necessarily pegging it to actual wordings of the proposal.

vi) The building up of communities and networks of interested people around specific areas of law/policy

vii) The ability to collect signatures for the final public petition that comes out of this participatory process and is sent to the government for consideration and implementation.

If any of you are interested in this platform and structuring it or collaborating on this venture, please let me know (shamnad [at] gmail.com).

Before I sign off, I want to record my appreciation for Sai Vinod, a third year student at NUJS for working around the clock and helping us revive CLAM.

Shamnad Basheer

Shamnad Basheer

Prof. (Dr.) Shamnad Basheer founded SpicyIP in 2005. He's also the Founder of IDIA, a project to train underprivileged students for admissions to the leading law schools. He served for two years as an expert on the IP global advisory council (GAC) of the World Economic Forum (WEF). In 2015, he received the Infosys Prize in Humanities in 2015 for his work on legal education and on democratising the discourse around intellectual property law and policy. The jury was headed by Nobel laureate, Prof. Amartya Sen. Professional History: After graduating from the NLS, Bangalore Prof. Basheer joined Anand and Anand, one of India’s leading IP firms. He went on to head their telecommunication and technology practice and was rated by the IFLR as a leading technology lawyer. He left for the University of Oxford to pursue post-graduate studies, completing the BCL, MPhil and DPhil as a Wellcome Trust scholar. His first academic appointment was at the George Washington University Law School, where he served as the Frank H Marks Visiting Associate Professor of IP Law. He then relocated to India in 2008 to take up the MHRD Chaired Professorship in IP Law at WB NUJS, a leading Indian law school. Later, he was the Honorary Research Chair of IP Law at Nirma University and also a visiting professor of law at the National Law School (NLS), Bangalore. Prof. Basheer has published widely and his articles have won awards, including those instituted by ATRIP, the Stanford Technology Law Review and CREATe. He was consulted widely by the government, industry, international organisations and civil society on a variety of IP issues. He also served on several government committees.

15 comments.

  1. AvatarPriyadarshini

    Could you elaborate on how a viva voce is “unconstitutional”? Would italso apply to other oral examinations.. for example the civil services interview?

    Reply
  2. AvatarShamnad Basheer

    Anil Kulkarni writes:

    I have read your article on the subject matter and fully ageee with you that it is futile to conduct the exercise of viva at PAE. I am myself a registered patent agent who passed the examination in Nov. 2007. 

    I fully agree with you that the exercise is useless given the fact that the knowledge of the candidate about the law and practice of Patents Act is tested in two written papers. I fully support your endeavour to get this viva abolished.

    However I have failed to understand your conclsion as to how it is unconstitutional? can you please elaborate?

    Secondly if you are raising certain matters with the authorities about this examination I wish to give following suggestions.

    1. The aggregate requirement of 60% mark is cumbersome. I have personal knowledge of some candidates last year (you can verify as the marks are made public) that some of the candidates have failed to qualify just because they failed to get 60% aggregate just by defeciency of upto three marks.

    Thse persons are required to appear again even though they cleared all the subjects but fell short in aggregare by upto 3 marks. In most of the examinations including in Universities, one mark per 100 marks is given as grace for passing or acheiving class or even distinction. This is termed as Jaikar rule in Pune university.

    Can we request Controller to consider cases who clear all the subjects and fall short of the aggregate requirement by upto three marks sympathetically so that they could be declared pass by addition of these separate grace marks?

    2.In the examination passing is 50% Why not exemption be granted to those who have secured these qulifying marks in particular paper from appearing in the next attempt. A number of maximum attempt could be specificed, but this will reduce the burdon on prospecting patent agents from giving the entire examination afresh again.
    Hope you will consider these suggestions.
     

    Anil D. Kulkarni
    Principal Technical Officer
    NCL Innovation
    National Chemical Laboratory

    Reply
  3. AvatarShamnad Basheer

    Dear Anil,

    Thanks so much for your thoughtful response on this. I agree with you on the 60%. Lets just keep it as 50% in 2 papers…and that should be the end of it. And if the candidate secures 50% in one paper, I agree with you that the next year, they should simply take the paper they failed in. this is sensible.

    As for constitutionality, anything “arbitrary” can be struck down under Article 14. Since this exam has no reasonable nexus to the purpose of qualifying patent agents, it is arbitrary and therefore flouts Article 14.

    Thanks,

    Shamnad

    Reply
  4. AvatarMina

    Before going through with any of the contentious issues I would like to discuss first “Why we need a patent agent”?? There are two answers to this question one is the legal view and the other is the general view. Patent Act imposes certain restrictions on the persons appearing before the controller i.e. only the inventor/applicant or his legal assignee. Now legal assignee can’t be tom dick and harry, he should be from scientific background in order to understand the invention thoroughly and also discuss the invention verbally (in certain cases) with the Examiner/Controller.
    Question arises as who can be the legal assignee??
    He may either a science graduate with 5-10 year exp. or PhD holder.
    Since his job is of almost same caliber than that of the examiner but for examiners recruitment one has to come in merit list, but as such there is no fixed no. of seats for the patent agent. They have to only secure at least 60 percent marks overall and 50 percent in each paper.
    As far as Viva Voce is concerned, I think it is very well legal but I don’t know whether any section or rules mentioned in the Patent Act which opposes the viva or interview for the patent agent exam. In my view interview/viva provides one more opportunity to overcome the shortcomings of his performance (self evaluated) in the written exam. Article 14 is very clear in terms of the equality and the same substance is delivered in the Patent Act. Nobody can be Patent agent without passing the qualifying examination.

    Reply
  5. AvatarAnonymous

    This year for viva voce question will be ralated to only “domain knowledge”. I believe this was not the case in previous years exam….

    Reply
  6. AvatarKunal Agrawal

    I would like to bring to your notice the problem of lack of transparency in the written exam. A friend of mine (whom I wouldn’t want to name) wrote the exam in Delhi a few years ago. She has substantial knowledge of IP Laws & was working with Anand & Anand, the well known law firm, before leaving it to start her independent practice. She could not clear the 1st written paper (Paper-I – Patents Act and Rules) but was able to clear the 2nd paper & the viva voce & her aggregate was more than 220 out of 300. She filed an RTI application & took pains to pursue it all the way to Bombay, where she was shown her answer scripts & she as well as the person showing her the scripts (who was a senior officer of the Office of the Controller General of Patents & having knowledge of IP Laws) were not able to point out even 1 mistake. All answers were ticked as correct. When the officer was asked about it, the only thing he could say was that there seems to be nothing wrong with the answers & that if she wants to file an appeal, she can (she however did not file an appeal because of personal reasons).

    This incident really demoralized her & she hasn’t written the exam again. This may not be an isolated case & many may be affected because of this.

    Therefore, I request you to kindly look into the same & see if something can be done about it.

    Reply
  7. AvatarAnonymous

    Let me address the patent agent examination in a couple of different directions.

    The publication of marks of the qualifying examination is arbitrary and unconstitutional.

    I think publication of marks for an examination which is a QUALIFYING examination is usually not the practice. The results may be disclosed to the candidates on request for transparency and to enable better preparation. The present practice probably violates the privacy rights of the candidate who might not have done well in one exam and his marks being displayed all over the internet. The best practice in the US bar exams should be followed here as well.

    A misguided attempt at transparency is being used as CV enhancer by a number of candidates in their resumes for a “QUALIFYING” examination. Imagine how the reaction will be if and when a bar exam is conducted by the BCI and if the results of the exam were posted all over the internet and a person who got x% states that he is the best lawyer from 2010 ? I don’t think bar exams including patent bar exams should make such arbitrary “MARKS” judgement available to the public which can wrongly decide X agent is better than Y agent because he got 90 marks !!!

    If this is not the case, then the results of all the patent agent examinations conducted so far should also be placed permanently on display on the Indian patent office website.

    The percentage of marks in these exams posted on the patent office website are not “indicative” of the quality or lack there of the Agent. She/he may have entirely different ability when faced with a real patent and prosecuting the same.

    On the question of the person being allowed to take the exams again; maybe it is time we discarded the notion that a specification and claims drafting exercise can be properly conducted and evaluated in three hours. Patent drafting exercise in multi nationals departments takes three months and the typical targets are 12 to 20 patents a year. The US patent agent examination does not require a claim drafting exercise and the client will not hire you if you cannot draft claims. (Maybe we are being too paternal here with our system).

    The tests the candidates are subjected to should be limited to claim test of application of the patent act and the PCT.

    I believe the questions asked last year in viva included questions like, “What is the name of the bacteria in Diamond v. Chakrobarthy”. It’s quiet ludicrous that this question is asked by the Indian Patent office. I would have understood if the patent office wanted to test them on HMT case or some other supreme court case.

    On the whole good luck to those taking the exam this year.

    Reply
  8. AvatarAnonymous

    I have a simple argument to make. The most unconstitutional aspect of the patent agent examination is not the viva voice but the publication of marks of a qualifying examination.

    It’s arbitrary since the marks published are available only for the past couple of administrations and not for all candidates. The marks for lawyers who registered before the patent act was amended cannot be displayed. The patent office should upload the marks of all administrations or remove the mark sheets of all candidates.

    It’s violative of the privacy rights of an individual who may not have cleared the exam.

    And lastly most bar exam administrations in every corner of the globe declare whether the candidate passed and you don’t even get to see if someone failed. You have passed if your name is on the list. If you want you can view your grades on a private page.

    A patent agent is better than a second patent agent because he got 95%. This could affect the marketability of the agent. Do you have your SSLC grades with your name plastered all over the internet or those of an IAS officer inscribed next to his name on the website of GOI ? Misguided attempts at transparency are worse than lack of it.

    Reply
  9. AvatarShamnad Basheer

    thank you all for your comments. i see your point about not publishing the individual results online (with all details of marks and the names etc of individuals). a mere list of candidate numbers and pass should suffice . And i agree with you on this count.

    but not sure if the present practice violates the law or the constitution in some way. its just not good practice–but i wouldnt go to the extent of stating that there is a legal violation of privacy rights etc etc.

    some other issues to consider for reforming the exam:

    1. testing candidates on designs. since this very saem exam qualifies one to practice designs as well. yet there are no questions on designs…
    2. should we scrap paper 2 altogether? its again subjective. advantage however is that only those with some knowledge of drafting make it …this filter ensures that candidates would have spent some time studying drafting…or even ensures a de facto apprenticeship period prior to one qualifying to practice patent law.

    Reply
  10. AvatarShamnad Basheer

    Dear Kunal,

    I’m sorry to hear of your friends’ predicament. Though i personally think she should have fought this issue to its logical conclusion.

    In the interests of transparency, its perhaps best if the patent office begins following a policy where they release the answer keys to the public after the exam.

    Reply
  11. AvatarShamnad Basheer

    Dear Anon:

    You state:

    “n my view interview/viva provides one more opportunity to overcome the shortcomings of his performance (self evaluated) in the written exam.”

    what if we flip the coin the other way. somebody who does very well in the written flunks the viva, owing to not being to subjectively satisfy a panel that may not be entirely objective in its assessment.

    Also another anon stated that the viva this year relates only to “domain expertise”. even more problematic. what if the candidate is a software engineer. If there is no one on the panel with software expertise, how will they assess this expertise? more importantly, why do we need to test domain knowledge when the candidate already has been tested and cleared and has got a science degree attesting to their knowledge therein!

    Reply
  12. AvatarAnonymous

    @ Basheer
    To second your thoughts on “domain expertise”. What if a basic science graduate and has since moved onto say programming which is quiet common with the IT boom in India. He could be placed at a severe disadvantage with the “domain expertise”. Will he be tested on basic science or IT or both? Some of these issues are often not considered before they are tried out.

    With respect to design law I believe it should be part of the patent agent examination but design practice in itself is extremely simple and takes a week to literally master.

    With respect to a filter on the patent agent examination a better filter will be an Open book exam with a focus on application of PCT and Indian Patent Law. Prometric tests like the USPTO tests are a very good way of judging people. The only saving grace of the second paper according to me is it gauges if at all you can understand basic science and identify the elements of the invention. There are better ways of achieving this with only a test of claim elements or possible claims based on a given description or research article.

    Personally having appeared in an exam a very dated one and not the new one, I felt the second paper was cruel and probably reflects very poorly on people. Well there are certain tips which come in handy with respect to the second paper which I was lucky enough to figure out before my exam:

    1. Make sure you memorize all the section headers and reproduce them; eg the background, title Abstract etc etc. The patent office gives more emphasis to this aspect and far less on content.
    2. Make sure you include figures in your spec. Most practical way of doing this is to use the question paper figures and attach it to the answer script ! (I know it’s cheating but hey it’s a smart way of saving time for the claims.) Make sure you label the figures with numbers.
    3. Make sure you have al least 5 claims and they contain the proper claim language, with al least one independent claim and a few dependent claims. Identify the elements of the invention.

    4. Make sure you do the claims before you fill in the specification.

    5. Repeat the claims in your summary and other relevant places in the spec and remove the words comprising where necessary. Pretty standard practices and your exam will be a much better success story.

    And to those who did not make it earlier; trust me the exam reflects very poorly on what makes a good patent agent.

    Relating to the violation privacy rights. What if a search on an individual brings up the Indian Patent Office website with the tag failed next to his name ?
    I personally know of instances where the hiring decision went the other way just because of such a due diligence searchs. It’s very very unfair on the candidate who was otherwise a great hire.I have a very strong opinion on this issue after this incident with someone I was willing to hire who just could not cut it with the rest of the panel.

    Reply
  13. AvatarAnonymous

    Can someone shed some light on the minimum qualifications issue? I have an engineering degree from abroad. I have been issued the admit card for the exam but it says ‘provisionally admitted’ and ‘request to produce recognition of qualifications equivalence of Indian Degree’. What should I do about this?

    Reply
  14. AvatarAnonymous

    Looks like Patent office has taken your post into consideration. I think they have allowed three candidates to qualify as a patent agent. It would have been very painful for them, had they not allowed them to qualify. I think, there were similar situations in previous year exams. I remember at least a few candidates who were on border line (59.5). What should the patent office do for them?

    Reply

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