Patent

Patent Agent Viva: Sense, Sensibility and Constitutionality


I’ve received emails from several candidates who took the patent agent exam earlier on this year, decrying interalia the viva (oral exam) process, its inherent biases and the lack of competent questioning by some examiners.
We did a few earlier posts elaborating on why the viva process is inherently flawed and why it has no reasonable co-relation to the conceptual soundness or otherwise of a proposed patent agent. When you’ve already addressed complicated patent queries in a written exam and demonstrated your understanding and appreciation for patent jurisprudence and drafting, why on earth should you have to orally explain the same thing to an examiner?

What purpose does it serve? Or are they testing your personality through this viva, given that there have been several complaints in the past that patent agents are terribly geeky and do not have the requisite social skills (I’m kidding of course)..

None of the leading IP jurisdictions (US, UK etc) mandate in person vivas…and by doing so, India, still a”developing” country in several aspects, is simply wasting enormous amounts of money and resources! Money that it can ill afford!

For those aggrieved by the viva (particularly if you passed the written component, but flunked the viva), we would urge you to immediately take this to court. Its not an open and shut case, but is an arguable one nonetheless. All the arguments that you can potentially advance in your favour have been clearly outlined on our CLAM platform.

In any case, bringing it to court will create some noise around this issue and at least force the DIPP to take action on this immediately by amending the rules that mandate the viva. For those not in the know, vivas are mandated by the patent rules: and all that is required is a simple government notification deleting this rule (as opposed to a complicated Parliamentary amendment).

Now that the only sane voice that existed in the patent leadership has been ousted from his office, I doubt very much if the DIPP is going to change this rule, unless there is some external noise, and big noise at that.

I wouldn’t bet on letters: I’ve sent a couple of letters addressed to the DIPP on several policy issues including the patent agent viva, but never so much as received a response. They’re clearly saving money on the postage, but wasting it on the pompous vivas that they religiously conduct at all major Indian metros, torturing students into endless waits, and offering examiners (at least some of them) their yearly dose of power play..

ps: Clarification on the use of the word “ousted”: PH Kurian’s move is no doubt a voluntary one, but anyone following the trials and tribulations of the Indian patent system in the recent past would immediately know that his exit has a lot to do with the kind of love that he received from his government bosses who were not too happy with his reformist policies and popularity…but I’ll save that for another day….

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.

23 comments.

  1. AvatarAnonymous

    Dear Shamnad,
    What deep rooted grudge do you hold against examiners?
    Can you name one examiner on the viva panel in recent years? Or do you find it convenient to use the term “examiner” synonymously to describe all officers? It’s only senior Controllers(senior ACs and DCs) who are asked to conduct viva.We expect facts to be brought out in blogs by a person of your calibre. Please do not disappoint us.

    Reply
  2. AvatarS

    Dear Prof,
    I partially agree with you. As you said that when a candidate proves his or her prowess in the written exam then why is it necessary to test him in viva? But I guess the problem here is not the viva. If the candidate is thorough with his understanding then i really wonder if viva-voce is a problem to him. The very problem here in patent agent exam is “who” takes the viva. Many questions came to my mind right from when I attempted it for the first time.
    First, is the committee not thinking about “conflict of interest” when they invite the patent attorneys of different law firms to form panels for interviewing the candidates? You had been a part of the committee during 2010.
    Second, isn’t it sufficient to have an interview panel of two persons, one: an examiner or other competent authority from IPO and second: someone from academics or policy making into IPRs?
    Third, If at all one has to take a practicing IP attorney in the panel then the panel should refrain from asking about the details of the employer, etc to the candidate.

    I do not think that the requirement of viva-voce is unconstitutional. If that is the case then most of the important exams (like conducted by UPSC etc) would not have them as a part of examination.

    More than the knowledge of patent law, one should judge the overall awareness about patent prosecution, provisions for international applications, current case laws, important verdicts in patent litigations, etc which are certainly not covered in written exams…during viva-voce.

    Thanks and regards,
    S

    Reply
  3. AvatarAnonymous

    its SENSELESS to include vested interest people in board for Viva exam. those agents who are having patent agent exam training institute are coming in the Viva exam board and passing their own students and consequently charging huge sum for coming batches and getting popularity.
    Mr Kurian failed or might be intentionally overseen this situation.

    Reply
  4. AvatarIPGuest

    Dear Anon:

    I think you misunderstood. The term “examiner” refers to “examiners” for the viva (practitioners, academics, patent officials etc).

    I have the deepest sympathies for the 70 odd examiners and various others at the IPO who are suffering intensely as a result of delayed non hiring of more examiners….and being forced to increase numbers blindly and meet untenable targets, at the cost of quality….

    Shamnad

    Reply
  5. AvatarIPGuest

    Dear S,

    you must read the arguments spelt out on CLAM platform…..and you’ll see the distinction between UPSC exams (IAS etc)….if you are being tested only orally for what you know through written, whats the point of wasting money?

    Reply
  6. AvatarIPGuest

    Dear S and Anon:

    the conflict of interest issue is a deep one….and will always arise since we have to include practitioners in the viva. you don’t have enough academics and policy makers and patent office officials with a deep enough knowledge of the intricacies to have all panels manned only by them…..perhaps one way out is to ensure that you don’t viva you’re own employees if you run a law firm and are on the interview panel…

    Reply
  7. AvatarAnonymous

    Dear Shamnad,
    Please accept my sincere apologies for the misunderstanding.We Examiners are so used to being trampled down upon that we tend to look at anybody with suspicion.
    -Anonymous of the 1st comment.

    Reply
  8. AvatarS

    Dear IP guest,
    I believe that you read the last paragraph in my comment given above. Viva voce is important. Instead of trashing it off for its short comings, one needs to improve it and make it better.

    Secondly, I do not understand the logic behind interviewing all of the candidates who are appearing for the exam. Yes, i know it is for the benefit of the applicant to finish all the required rounds of exam in one go. But i guess this is where the IPO should think. Instead of this, let the result of written exams be out.
    A provision can be made that the candidates can answer this written exam at convenient centers in his state instead of coming to the metro city. Example, for west zone, mumbai, ahmadabad, bhopal, panaji can be decided as centres for written exams. And it is quiet practical to do this, given the high number of applications each year and unsparing fees of 1000/- rs only. The successful candidates can be invited further for the viva voce at the respective metros of that zone.
    I guess this will surely reduce the unnecessary work.

    Reply
  9. AvatarShamnad Basheer

    Dear S:

    why should we improve something that is fundamentally flawed? why do you wish to retain the viva? what unique purpose does it serve? particularly when its so costly?

    Reply
  10. AvatarS

    Dear Prof. Basheer,
    If viva voce is fundamentally flawed then i guess it should be eliminated absolutely from any examination procedure in our country.
    And why it has to be costly? “1000rs only” per applicant is not a small amount I believe. Say, 100 applicants are applying which means 100,000 rs are collected “instantly”. Out of 100, say approximately 70 (being generous) cleared the written exam and are called for the viva. Two panels of interviewers are required to finish with these 70 candidates. If each panel takes on an average of 10min per candidate then two panels may need 6 hours a day….out of these interviewers the external persons should be maximum 4 in number. Is it difficult?

    Reply
  11. AvatarShamnad Basheer

    “If viva voce is fundamentally flawed then i guess it should be eliminated absolutely from any examination procedure in our country.”

    absolutely! wherever the viva is a mere redundancy, testing for nothing more than whatever has already been tested for in a written paper, it should go! two wrongs don’t make a right…..

    Reply
  12. AvatarShamnad Basheer

    Pratibha Singh. one of India’s leading IP attorneys writes in to inform us that a writ has just been filed on this very aspect! Congratulations to the candidate bold enough to file it and to the lawyers, Pratibha and Maninder Singh for taking up cudgels on her behalf. Hopefully, we’ll see the end of these idiotic vivas!

    “Shamnad

    We have already filed a writ in the Delhi high court for a candidate who passed the written very well and flunked the viva. Notice was issued. maninder Singh Senior Advocate appeared last week. She is an M.Sc from IIT Delhi and she scored only 40 in the viva and her percentage in written exams was 66.5%. We have challenged the constitutional validity of the Rule 110 itself on the ground that giving almost 50% weight age to the viva which becomes almost 100% in such cases is unconstitutional. A similar case in the Case of admission to AIIMS was relied upon by us. “

    Reply
  13. AvatarSindhu Krishnah

    I stand strongly in favor of the viva process in examination.This is a highly competitive exam and only the deserving candidates should come up..Basically due to the following reasons:A person with a good command over the law and language can beautifully bring out what he mugged up with out the proper understanding of the concept and basics. so in reality the score in the exam is no match for what u have understood. So in a properly conducted viva by a competent panel can be of great help in analysing the depth of knowledge of the candidate. I said a competent and impartial panel would serve the purpose..

    Reply
  14. AvatarAnonymous

    Dear Shamnad:

    Since the Viva Exam requirement comes from the Patent Rules – R.110 (not the Act), amending the Rules to ‘delete’ the Viva Exam is a possiblity that can be done at the Patent office level.

    Now, till that happens, we need to look at how best can the Viva be conducted.
    a) Lets NOT have people from training ‘Insitutes’ come on the panel when they have students appearing on the Exam – case in point – IIPS, Mumbai Chief on the VIVA panel at Mumbai when her students were giving exams from the Mumbai center;

    b) Let’s not have the Panel ‘asking’ the name of the Employer of the candidate. A simple solution would be to ask them – where do you – in a law firm/ Company or in academia. I realise that knowing the backgound is important for asking questions and hence this ‘semi blind’ test of only general background should be asked. Even then, I believe that removing full bias/ conflict is not easy – you know that the industry is small and its possible to quess the Employer- if a Panel member wants bias to creep in.

    c) Next- there should be a defined pattern in the Viva- I know some students who were asked 3 questions and exam over and another parallel panel which grilled students for 20 mins. There should be a minimum number of fixed technical/ law questions asked so that the students – referred above- do not feel that ‘kuch pucha hi nahi’ or vice versa.

    d) Coming to this ‘set pattern’, after the Candidate gives his background, he could be asked to pick a ‘chit’ from a basket of on going cases or decided cases. Then the Panel can ask him questions on that case and assess his answers. This way, the entire focus of how a prospective ‘agent’ is conducting himself can be assessed.

    e) I completely support breaking the exam in 2 parts – “S” suggestion. Already, the Viva exams spillover over 2-3 days. So, lets have a 2 stage exam – written first, declaration of those results and then oral for successful candidates. This – probably- does not require even amending the current Rules, since all parts are adhered to 😉

    Friend of “S”/ Freq. Anon.

    Reply
  15. AvatarS

    Dear Prof,
    In my opinion, viva- voce is an important aspect of any examination when it comes to a competitive exam and that too for professionals.
    I sympathize with the IITian who missed it. But then I have witnessed a couple of people during 2010 exam, who secured 70-80% percentage overall but secured 49 marks in paper I or II and thus were helpless. The IPO should think holistically about such deserving cases….
    Anyways, I do not defend any redundant step in this. But is it fair to presume that viva is a redundant one? What makes you feel that the candidate is going to be bombarded with the same things which he has faced during the written exam?
    I can show you many examples who have cleared the patent agent exam but do not know how to draft the embodiments into claims, or when to use ‘comprising’ or ‘consisting’ while phrasing the independent claim, etc. There are various practical aspects which can be tested through viva voce and which cannot be tested through any written exam as there are always some limitations to a written exam.
    And one can also see the brighter side of it. If a candidate is good enough in his work but fares barely in his written exam then he surely has a good chance during his viva.

    Just because the form of the present viva-voce of patent agent exam is chaotic, does not mean that we should nullify it completely. And just because it seems to be unfair for some candidates, does not mean that it is unconstitutional. At least this is what I feel.

    Thank you.

    PS: I am neither on gaining side nor on losing side. Being a regular reader of this blog, I thought I should register my opinion.

    Reply
  16. AvatarVS

    The latest Patent Agent Exam notification says “Viva-voce examination will be based only on domain knowledge”.

    I have attended three viva-voce exams held post-2006. I was not asked anything in my domain when I took the exam in 2010. Most of the questions asked were to do with patent laws.

    There is too much emphasis on things like “opposition” and “revocation” in the viva-voce, while there should be much more stress on patentability, how to analyze prior art and claim drafting, since a patent agent is going to be involved in preparing and filing applications most of the time. We have a long way to go in this area, since even the written exam does not deal with this topic adequately.

    Reply
  17. AvatarABC

    I beleive viva voce is an important and interactive session. The thing which needs to be imrpoved is the level of examination. We should not forget that PA exam is a qualifying exam not competitive. I have seen many candidates who do not have good practical knowledge but still they passed and that too with good marks. Many candidates have scored average in written but also average marks in viva. I think examiners should help the candidates in viva voce atleast at the time of giving marks to them. No body is assured about his or her performance in written exam. But viva can really help the candidates to qualify the exam. Moreover the aspect of tesing knowledge cannot be tested in few nminutes for any candidate and it is not possible for the examiners also.

    I do not find any logic in arguing against viva. I think that viva is an important aspect and that should not be removed from the examination panel. But the way of marking in viva should be improved.

    It seems from the intention of the examination board panel that they everytime affixed a average rate to give 60 or 65.

    I think every body should looked into every aspect of the exam. The candidates are not flunking in viva but majority of them are not able to seek good marks in written exam as well. So where the actual problem is?

    I would also request the examiners whoeever is involved in setting of the question paper to provide solutions of the PA exam.

    At least the candidates will be aware that what is expected and how much is expected to qualify the exam.

    I hope every body will look into the entire module of the PA exam and will try to conduct a fair exam without any bias and discrimination.

    The issue is very serious and we should not consider only one or two exceptional cases.

    We have to look into the system and we should screen out the various problems coming around the exam. I think IPO is best to help in this regard and take the decsion to conduct a good exam so that more and more candidates pass the exam and gets the oppertunity to work in the IP field.

    We should not forget that there are many good candidates from science background, joing the IP field. It is not the case that the candidates dont know anything. We should understand that the science and law are two different aspects and to bring both into a common platform, a proper understanding is required to maintain the balance and to understand the language of Patent law.

    I would request all senior members working in IP field to share their thoughts and views to encourage the candidates to do their best in the exam. I find that every year these discussions goes on but ultimately nothing happens.

    The ratio of pass/fail remains always the same and this ratio must be improved.

    Lets not argue against the examination board and the panel members. But let us try to change the system and make a good attempt.

    We really need good PAs not merely for signing the papers, but to do fair judgement with IP.

    We reside in deveoping countries and the things, systems should be in the developing stage.

    Please help the appearing candidates to prepare at the best level to qualify the PA exam.

    I would request Patent office as well Shamnath Sir to provide the solutions of the PA exam 2011. Please guide the candidates to do their best.

    Thanks and regards

    ABC

    Reply
  18. AvatarAnonymous

    Viva is compulsory in Japan if you want to become a Patent Agent. Viva in Japan is the last hurdle. You are invited to viva only if you have passed difficult writen tests. Some people fail in viva. They are tested for personality, behavior, atire, etc.

    Reply
  19. Avatarpatentsnmore

    Scrap Viva and introduce the system of articleship.

    Most jurisdictions require you to work with a patent attorney before you can take patent agent examination. Even when appearing for a solicitor’s exam or CA’s examination, you need a minimum three year articleship with a qualified Solicitor or CA. Why not for Patents?

    I agree that the Viva system is redundant but I also believe that one written exam is not enough to certify people who want to practice in this profession.

    Reply
  20. AvatarS

    What patentsnmore has said, it does make sense….I really wonder when responsible people talk about scrapping vivas but do not come up with any efficient methodology that would definitely yield better patent professionals….

    Reply
  21. Avatarxyz ltd

    Rahman Roshan, a student of one of the IITs came up with an invention which is a
    cylindrical slide which can be installed in the balcony of high rise apartments. In case of
    any emergency of fire or earthquake, the inmates roll the cylindrical slide to the ground
    floor and can slide to safety.
    He shared his views with his brother in a private conversation who is an editor of journal
    ‘Safe Houses’ in February 2010.
    He conducted a trial of his invention from the ninth floor of his hostel to assess the
    effectiveness in March 2010. He wanted to know the feedback of this invention and exhibited the same in an
    exhibition ‘New Millennium Designs’ at Raffles Centre in Singapore on July 2″d of 2010.
    In the meanwhile he learnt that his brother published the details he shared in “Safe
    Houses” journal issue dated August 2010.
    In September 2010 he filed a provisional application in the Indian Patent office and
    complete specification in January 2011.
    Rahman Roshan approaches you with the above facts and seeks your consultation on
    whether any of these events will impact the granting of the patent.
    Give your written statement with the relevant sections of the Patent Act to this
    client and explain the position of the issues stated that will have an impact on
    granting of the patent.

    Please suggest the most suitable answer for this question.

    Reply
  22. Avatarxxx

    Sumathy an R&D Scientist is married to Anand. After few years of marriage she found
    her husband snoring which disturbed her sleep.
    She found the anti-snoring devices in the market not very effective and convenient and
    came up with her own invention which is a mask which will transmit the noise to a small
    box kept under the bed, thereby reducing the snoring noise by about 90%. She filed a
    patent for the same and was granted in December 2007.
    Later, in July 2010 she came up with a new idea wherein the snoring noise is
    transmitted from the mask to the box which is now connected to a small electronic
    device with a key board which converts it as to soothing background music. She seeks
    your advice on to how best to protect this improvisation.

    Based on the relevant sections of the Indian Patent Act, prepare a brief on the
    best strategies available to protect the invention of this client.

    Reply
  23. AvatarAnand

    Hello To all…

    I am an aspirant of Patent Agent Exam and am waiting for the notification for the same by office of CGPDT office. In past notifications were generally out in Oct-Nov and exams used to be in January but it seems this time it is delayed.
    I would like to utilize the forum for any relevant discussions/ details also some tips for aspiring patent agents.

    Reply

Leave a Reply

Your email address will not be published.