Patent

DHC brings down the viva-voce cut off marks for patent agent exam


In a recent decision, (Ms. Anvita Singh v. Union of India and Another) the Delhi High Court (DHC), has directed the Patent Office to register a candidate as a patent agent who had passed the the written portion but failed in the viva-voce.  In particular, the DHC has struck down the rule prescribing minimum 50 per cent marks in the viva-voce part of the patent agent examination.  The patent office may now give less weightage to the viva voce examination by prescribing lesser minimum marks, but capped at a maximum of 25%.  Hat tip: Sushant Singh, lawyer for the candidate Anvita Singh.
This decision is an extremely welcome one for candidates wishing to appear for the patent agent examination.  We had on various occasions discussed about the viva portion of the examination and were of the opinion that the viva was not a true measure of the capability of a candidate.
For example, Shamnad in a previous post regarding the the legality of the patent agent examination had observed, “I personally think the viva [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.  In another post, regarding viva, he urged candidates, “[T]o immediately take this to court. Its not an open and shut case, but is an arguable one nonetheless.”
In another post, I had done a statistical analysis of the marks of candidates for the 2010 examination, and my observation was that the viva was subjective: “The standard deviation for viva is entirely a different matter for Mumbai, Chennai and Delhi. The standard deviation for viva should also be similar to that of paper-1 and paper-2. Statiscally, this is an anomaly and might reflect the subjectivity of the viva portion of the exam. The case of Kolkata highlights this portion-the stddev for viva and paper-1 and paper-2 is similar.  The parameter stddev is even more remarkable when considered for individual cases: it is seen that even though a candidates personal score in viva is the highest, they have failed overall (low marks in paper-1 and paper-2).”
It remains to be seen whether the decision would be applicable to other similarly situated candidates who took the 2011 examination or even previous ones.  These candidates (who had failed in viva but passed  in papers 1 and 2) may have the option of approaching the patent office to register them as patent agents according to the decision in Anvita’s case.
Background:  Petitioner Anvita Singh, applied for the January 2011 patent agent examination conducted by our patent office.  She secured 61 marks in Paper I, 72 marks in Paper-II, and 40 marks in the viva-voce.  Because the patent office rules prescribe a minimum of 50% in each paper and the vice voce, Anvita did not qualify to be registered as a patent agent.
In her writ before the High Court, Anvita challenged the rule, requiring a minimum of 50% in the viva voce because, according to her, the requirement of 50% minimum in viva is too high a prescription and gives arbitrary power to the interview board to fail a candidate even when she has done extraordinarily well in the written examination.
In an extremely lucid and clear decision, Justice A.K. Sikri and Justice Rajiv S. Endlaw ruled in favor of Anvita, striking down the requirement of minimum 50% marks in viva.
The Court after referring to multiple Supreme Court and High Court decisions held, “[I]n the present case neither we can apply the test applicable for admission to an academic course in an educational institution nor can we apply, stricto senso, the test laid down by the Supreme Court giving less  weightage  to viva voce examination for appointment to a post/service.  The case here is  of slightly different nature which does not fall either in the aforesaid category.  It is a case of self employment namely a person who gets registration as patent agent has to fend for himself/herself.  The registration qualifies such a person to act as patent agent and gives certain rights stipulated in Section 127 of the Act which include entitlement to practice before the Controller  as well  as to prepare all documents, transact all business  and discharge such other functions as may be prescribed  under the Patents Act.”

Conclusion:  “Prescribing minimum 50 per cent marks in the interview may not be appropriate …. when the rule mandates securing 60 per cent marks in aggregate in all three papers i.e. two written and one viva voce test.   This rule  is therefore  arbitrary  and becomes violative of Article 14 of the constitution.  To this extent namely prescribing minimum 50 per cent marks in the viva voce is struck down.  We, however, leave it to the rule making authority to either give less weightage by prescribing lesser minimum marks which should not be more than 25 per cent.”

Rajiv Kr. Choudhry

Rajiv Kr. Choudhry

Rajiv did his engineering from Nagpur University in 2000 in electronics design technology. He has completed his LL.B. from Delhi University, Law Center II in 2006, while working as an engineer at ST Microelectronics in NOIDA. After his LL.B., he went on to The George Washington Univeristy, Washington DC to do his LL.M. in 2007. After his LL.M., he has worked in the US at a prestigious IP law firm based out of Philadelphia. Till 2014, he was Of-Counsel to a Noida based IP law firm where he specialized in advising clients on wireless, telecommunication, and high technology. Rajiv is the founder of Tech Law Associates, a New Delhi based law firm specializing in IP law, with a focus on high - technology, and patent law. His core IP interest areas are the intersection of technology and IP, Indian IP policy, innovation, and telecommunications patents. He is also an inventor with pending applications in machine-to-machine communications domain (WO2015029061).

19 comments.

  1. AvatarRohit

    Undermining the importance of interview is not such a good step as the candidate should not be solely judged on the written exam. Viva-voce do have some merits over the written exam.

    A good alternative rather would have been a bit of change in the process. Instead of every candidate appearing the interview, it would make sense that the candidates who clear the written exam should only appear for the interview. In any case in the present scenario, too, an interview does not count (whether pass or fail) if you do not clear both the written exams. The suggested alternative will give an equal playing field to each and every candidate who clears the written exam. The interviewer will have more time for each interviewee as they will be required to interview less people (who have already passed the written examination). The current process of interview (which lasts from 2-5 minutes) does not give a candidate a fair chance to be assessed. However, undermining the importance of interview is not a good solution for providing knowledgeable patent agents.

    Reply
  2. AvatarKshitij

    I like the way honorable HC has sighted the difference between the “patent agent examination” and other examinations for appointment of public service or selection in an academic institution. I think this distinction is the moot point why viva-voce examination in its present form is arbitrary and violative of not only art. 14 but can be construed to violative of art 19 (1) (g) as well.

    Reply
  3. AvatarRajiv Kr. Choudhry

    @ Rohit: Viva system may be good if it is worked “properly”. We know that it does not. Rather than wait for it to get better, I think the Court has taken the right step and reduced it weightage.

    @Kshitij: Anvita had alleged violation of three grounds: Articles 14, 16, and 19. The DHC got it spot on. I liked the way the UoI put it across it across, and liked it even more when the Court brushed those arguments aside.

    Reply
  4. AvatarAnonymous

    I in fact had agreed with Shamnad and wanted this rule to be challenged. It has been challenged. But I am disappointed with the outcome in the manner that the judgment has the operative portion. I do not appreciate the court when it has stated as under:

    “We may clarify that the aforesaid approach is restricted to the case of the petitioner in order to find the solution of the case at hand. What course of action is to be adopted by the respondents in future would depend on the nature of amendment that shall be made to the Rule in question”.

    In a way this is the judgment in perosna and not a judgment in rem.

    Reply
  5. AvatarAnonymous

    The case had a merit but no doubt the case was not fought well or counter arguments were intentionally not properly placed well by department because the lady belongs to big firm house and influenced the people dealing with legal matters of IPO.Further a good judgment comes only when the advocates of both sides puts up all the merit before the Honorable judiciary.

    Reply
  6. AvatarAnonymous

    In fact the provisions of Section 126 should be challenged which require the degree of science, engineering or technology etc. This has been amended w.e.f 1/1/2005. Earlier the person registered as an Advocate by Bar Council was entitled to become a Patent Agent without any such exam.

    Now take the case of a person who is the child of a Patent agent/advocate and had joined 5 year Law degree course before 1/1/2005 with the hope that when he/she qualifies to become an advocate, would be entitled have himself/herself registered as a patent agent. HOWEVER, on account of the amendment in the law in the meantime, he/she is not able to appear for the examination to become a patent agent as the five year law degree course is not a degree in science, engineering or technology etc as per the requirement of Section 126. For this person in a way, the law has been retrospectively amended to his/her detriment.

    See the situation. Mr. Sushant Singh who is not a patent agent nor can he become in the present circumstances as he has complete 5 year Degree Law course from IP University, Delhi, has been able to challenge the Rules (in the case in hand of Aanvita Singh) being a practicing advocate, but himself cannot draft (read sign) a specification or appear before Controller and other officials of the Patent Office.
    See further, he can even file and defend a suit for the infringement of a patent, but himself cannot draft (read sign) a specification or appear before Controller and other officials of the Patent Office.
    See the situation of an Advocate who inadvertently did not pay the renewal fee for continuation as a patent agent, he had become patent agent only because he is a practicing advocate and does not a degree in science, engineering or technology, but has a good practice of IPR. He cannot now appear to become as patent agent because of change in law.
    Any comments?

    Reply
  7. AvatarRajiv Kr. Choudhry

    Anon @5:38PM: My opinion: Basic science degree is a must to register as a patent agent. How else would you write claims and interpret them.
    What happened earlier, happened. That period is gone.

    Anon @4:49PM: You are correct that it s a judgment in personam rather than in rem. However, as I had mentioned in the post, similarly situated others, may approach the patent office, and if they refuse
    the option of going to court is open.

    Reply
  8. AvatarAnonymous

    Judgment is in rem qua the constitutionality of the rule but an exception when it comes to calculation of the marks of the petitioner. Thus, it is a precedent and cannot be said to be devoid of the same.

    Reply
  9. AvatarAnonymous

    so does it mean that a person having same facts; i.e., having got more than 60% aggregate in the written exams and fails to clear the viva, approach the patent office with a copy of the order and the application for registration as a patent agent?

    in case the patent office refuse can the person file a writ in the court and use this case as a precedence?

    Reply
  10. AvatarKshitij

    Anon @8:13 PM – I second your views. I think you have got it correct.

    Anon @5:38 PM – IMHO, your views show the lack of understanding people are still having about the patent process. The patent process does not merely involve adhering to procedural formalities and maintaining compliance for getting a patent grant. It involves much more. There is an underlying philosophy about statutory creation of patent agents. There are powers given to patent agents to do some acts, a prime act being supporting the domestic industry and helping them in obtaining valuable patents in India and abroad. The practice of helping foreign patent applicants in obtaining patents in India was a fallout of the demand of the market rather than anything else.

    Now, please understand that the patent grant process is a technically intensive process. It starts with conducting a prior art search, which involves screening dense technical literature. How do you expect a non-technical person to screen technically rich matter without having any idea of the technical field of the invention?

    After a favourable prior art search, the role of a patent agent is to understand the scope of patent claims he can include in the patent application. As many practitioners believe, that an invention is not what the inventor says but instead is what the prior art does n’t. How do you expect a non-technical patent agent to expand the scope of the invention without knowing the state of the art and the technical implications of it? Restricting the scope of patent claims to what the inventors have invented creates valueless patents. I can give you examples where the value of patents have been determined by the quality of expansion the patent attorney writing the patent claims was able to provide. If you understand patents, please do refer to Yahoo’s patent portfolio on social networking websites, and please note how Yahoo if wants can sue any social networking website owing to expansive scope of their patent claims.

    Also, please note that even after preparation and possible filing of a patent application, the technical nature of the work does not end. Please answer how can a non-technical background patent agent write effective responses to FERs without understanding the technical nature of the cited prior art? Further, please explain how can he attend hearings when he can not argue on the technical aspects of the invention that distinguish from prior art? Will a non-technical patent agent be able to convince his technically competent adversory?

    I must praise with the well thought of situational examples you have come up with. However, I would like to humbly point out that the examples are merely interesting and have not merit in them. An Advocate who inadvertently did not pay the renewal fee for continuation as a patent agent should bear the consequences of his mistake. I have had examples where my clients patent has not been restored by the controller because he failed to maintain and move the application for restoration in allowable time. Applications have been abandoned by the controller due to non compliance with RFE requirements. Voluntary non-compliance to a statutory requirement of renewal can not be exempted.

    I will be happy to discuss this more.

    Reply
  11. AvatarAnonymous

    [email protected] writes:
    Khitij, You have not replied to the situation of an advocate who has no science, engineering or technology background graduate, challenging the Patent Rules and even arguing on behalf of patentee or alleged infringer, the suit for patent in a court. Also that each of the judges of the Hon’ble Courts are not science, engineering or technology background graduates, but can handle and decide a suit for infrignment of patent or order for invalidation of the patent.

    Reply
  12. AvatarAnonymous

    Yes one can approach court on the basis of the present case…. it is only the calculation by way of ignorance of viva voce which Division Bench itself has found to be arbitrary was excluded in the present case keeping it as an exception

    Reply
  13. AvatarAnonymous

    Well whatever Anvita has done, that may have negative impact on future course of actions in respect of PA exam too. The Patent Act does not allow to challenge the decisions and rules of Indian Patent Act. Anvita got less marks in viva, but she should remember that at the time of sitting for viva-voce, the panel doesn’t know the marks obtained in the written exam.

    This case is also true vice versa. If someone is just passed in written exam and got good marks in viva, but at the same time, one is not able to secure 60% marks in total, then what should he or she should do.

    One should think about this. Its a matter of competition. One who is able to compete will succeed.

    Reply
  14. AvatarKshitij

    Hello Anon @1:32 PM – Thanks for commenting. I thought my answer to any one of your situation riddle will help you extrapolate the answers for the rest.

    Firstly, I humbly request you to please appreciate the difference between a patent infringement suit and am opposition to procedural rules set up by an administrative action. The technical intricacies in a revocation of an administrative action is different from that of a typical patent infringement action.

    Now, I agree with you that most of the lawyers in the present patent adversarial system have non-technical backgrounds. There can be many reasons for this phenomena. One reason can be the overt presence of lawyers eminating from 5 year law programs, which are dominating the legal education scene these days. Another reason could be that these advocates are being ably supported by a good technical team. Having said that, I acknowledge that they are doing a great job. I have personally been part of a large patent litigation in DHC being led my a dynamic litigator, who has been very receptive to the technological intricacies of patents. However, this does not in anyways justify the underlying assumption that these lawyers can be equally capable of handling non-contentious patent work, such as patent drafting, searching, infringement opinions etc. If it would have been the case, section 126, which notably and particularly is a legislative action rather than an administrative action, would have been challenged and revoked.

    Also, please note that most of the patent infringement cases that are happening are being argued with the testimony or deposition of expert technical witness. Our procedural law (the CPC) allows appointment of technical experts in litigation, doesn’t it? Even the procedural rules of the IPAB allow appointment of “scientific advisors” to understand the technical issue at core. All this is an indication towards the need of the courts of having a technical understanding on the issues involved in patent litigation. Therefore, I do not see a “legislative action” mandating technical education as a minimum criteria to practice against the patent controller as unconstitutional.

    I hope this answers your queries. I also earnestly hope that you will now answer the many questions that I had for you in my last post. I await your answers to make this discussion a meaningful one.

    Warm Regards,
    K

    Reply
  15. AvatarAnonymous

    I think there is some conceptual lack of understanding…….. If the vires of the Act is to be questioned on the basis of violation of fundamental right…. No Act of parliament can restrict that challange….. This is due to the reason that Judicial Review is a basic structure of our constitution…. Plz see Keshavananda Bharati decision by Supreme Court…. I think there is a fundamental flaw in understanding if one says that there is a finalty to the decision of the patent office……… further, if a layman participates in an exam and faces an arbitrariness and argument is taken that he should be left remediless only due to the reason that the he or she has participated or interviewing board was not aware of the marks is not proper understanding of the law….. If there is an arbitrariness… there is…. whether any one participates or not is immaterial…. in the present case if one sees the stats in the present case and reads the order carefully… there are persons who have attained 50 marks in each written papers but given 90 marks in viva to make it 60 % overall and to make up the deficiency….. How can this be justifiable…. Is it not arbitrary or anomalous results where there is person is not found to be worthy in a written exam but has been found to be the first one in viva…. This cannot be achieved without conferring such uncontrolled powers and also without having knowledge about the marks of the student…. All this means that there is something rotten in patent office.

    Reply
  16. AvatarKshitij

    @ Anon @ 11:46 AM – I understand that one of the questions you are referring to is the question of estoppel that was raised by the learned counsel of the respondent. I don’t think so the court found any merit in this argument. If it did, it would have commented on the question.

    I agree with your observations on the finality of the order of the controller and the arbit nature of results. Don’t you think the court is in agreement with your observation as it has concluded that the procedure has some degree of arbitrariness and therefore is bad in law?

    Reply
  17. AvatarAnonymous

    Dear Rajiv:

    I agree with reduction in importance of marks from VIVA (at present) for following reasons:
    a) The Viva currently has no fixed format – some people are asked 10 Qs; some are asked 3.
    b) The Viva panel last year had people from Coaching institutes while their students were giving Viva exams- this conflict of interest was not disclosed at all – though discussed on SpicyIP comments.

    But rather than deestroying the importance of Viva, I would suggest that its structure be modified some thing along this format:
    a) Fixed (minimum) number of questions;
    b) No question on knowing ‘where’ you work (in specific, not generally).
    c) The Student/ examinee is assessed on how he conducts an discussion with the IPO staff – he should be asked questions that are objective and such that the examining panel does not have much leeway on marking – the Qs and suggested As be given to panel and marking be done on that line.

    Freq. Anon.

    Reply
  18. AvatarAnonymous

    Yes I agree with you Kshtij… I was just answering anonymous concerns that it is merely a competition….

    Reply
  19. AvatarAnonymous

    Kshitij,

    I do not agree with you when you equate the non renewal of the patent agent by an advocate with the non reply of RFE in time or so. An advocate has so many things to do. He forgot to pay the renewal fee. He has been practicing as patent agent for so many years successfully. He cannot now practice as a patent agent only because he forgot to pay the renewal fee to continue as patent agent.
    On the other hand, may be that the applicant was not interested in pursuing the patent application that is why he did not reply to the RFE in time. This often happens. It has happened with me. I am a patent agent for the past several years. Many applications are abandoned in between and we get the instructions not to incur any further expenditure. Many granted patents are allowed to lapse by non payment of renewal fee. BUT here it is not the grant of patent but to continue as a patent agent who had in any case been a patent agent.

    22/3/2012.

    Reply

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