The Madras High Court in it’s decision today has struck down the requirements for agents filing patent applications before the patent office. Hat Tip: Our regular reader, SP Chocaklingam, and the petitioner in the case. The case was filed in the year 2006 and a decision came out today. The crux of the judgment / order is that all Advocates as a matter of right can file patent applications for their clients, and they do not have to register themselves as patent agent with the patent office. This basically ensures that the requirement of science, engineering, or technology from any university is done away with.
Interestingly, the government argued that the science, technology background was mandated under TRIPS requirements. This is a strange paradox: Elsewhere the government is trying to stretch TRIPS requirement or argue that something is not mandated by TRIPS – however in this case they argue requirements to be TRIPS compliant!!!
The petitioner argued that the amendment to section 126 omitting “advocates” from it’s ambit was unconstitutional. Reference was made to Section 30 of the Advocates Act, read with Articles 19(1)(g), and 21 of the Constitution of India. It was also pointed out that the patents act does not provide any qualifications for being an inventor. And if no qualification was attached to being an inventor – how could there be a qualification for an inventor’s scribe – and there was no application of mind while omitting the word advocates. The petitioner also mentioned that under the current scheme of patents act, advocates were allowed to argue (patent matters) before the Controller, the IPAB, and the High Courts – but were not allowed to draft patent applications for their clients.
The impact of this decision would be huge – as any advocate would be eligible to practice before the patent office. It seems that the patent office may appeal this decision – and we hope to keep our readers abreast of the developments re this issue.
P.S: This post will be edited with our detailed analysis as soon as we receive copies of the judgment / orders.
i dont understand how come an advocate could draft the pharma patent…what he knows about chemical structures… please leave it to science pundits, otherwise companys should close their r&d depts…
This is preposterous! This reminds of Julius Robert Oppenheimer who regretted having invented the Atom bomb! Indian patent system has gone to the dogs!It is very sad day in the Indian patent constitution today!With all due respect to GOOD lawyers,now we will have our own affidavit/NOC guy draft and file patent intricate patent applications!!Bravo!!
Does this also mean that any person can file on behalf of inventor???
Judgment should be revoked. Else I will go to supreme court
Judgment should be revoked. Else I will go to supreme court
I think before making extreme comments one should wait for the entire judgment to be available, which I think Rajiv will make available at the shortest possible time on this blog.
Is there a body of Patent agents in this country or IP boutique law firms who will come forward and challenge this. This will have long term consequences on IP system of this country…..
We had a plan to form a All India patent Agents Association, We are getting very poor response from the Agents.
This has to be challenged.
If lawyer without technical knowledge can draft and file a patent, then why not a Technical Person be allowed to do so.
He knows technology well.
PA exam has to be abolished in that case.
Any way I am ready to flight, I we can join hand.
Sunit,
I am yet to see a copy of the judgment but I am guessing that patent agents can still file patent applications. I doubt whether the High Court has barred them. My guess is that only the qualification criteria requiring science and technology qualification has been done away with. But, lets wait for the judgment in any case.
Prashant
Prashant,
I guess not, they cannot stop Patent Agents from doing so.
I am trying to say, if lawyers are allowed then why not technical graduates who are not qualified patent agents are restricted from drafting and filing patent application.
So there is no sense on qualifying Patent Agent exam.
i think patent agent exam should be in place…. only they are widening the criteria in which law graduate can also file the applications but only afer clearing the Patent agent exam
No one, either a registered patent agent or an advocate with or without science/tech degree can supersede an inventor, since an inventor is always on top from technical perspective. As per the patent law, a patent agent is required to give only legal advice to their client other than the of a scientific or nature as to the validity or infringement of the patent [Please refer (US 129 (2) (c))]. Further, an agent/advocate is not expert in technologies he is filing patent for, even he cannot be considered the “Person skilled in the Art” ( even if he/she has degree in the subject domain of the invention) unless he/she is doing R & D in the area/domain of the invention. Moreover, patent agents are practicing only Patent Law not the technology research, therefore, patent agents are only required to understand the invention first from inventor point of view and then they should be able to capture exactly what an inventor wants to protect?
Therefore, I think any person who has ability to understand the invention and have knowledge of the Indian patent law should be allowed to practice before the controller.
It is high time that this profession was thrown open. At least it would ensure that all applicants get a level playing area. Today, their are some IP firms who desperately hire people from the Patent Office, or their relatives. This practice should also be looked into by the Courts. If I am not wrong, a judge cannot hear a matter where the law firm employs one of his relatives or one of his relatives is a lawyer. Why should this be any different for IP firms. Why should IP firms which proudly use the term “Attorneys at law” be allowed to recruit earlier Examiners or Controllers or their sons, daughters, cousins, etc. Is this not an attempt to use undue influence.
Anonyumous
Dear Rajkumar sir…
With due respect, I would like to ask a question.
Where do you think the ability to understand the invention comes from??
Imagine a commerce/arts graduate with a degree in law trying to understand “codon optimization of a gene construct for high level expression of a protein in a particular cell line”
I find your arguments far away from practical realities of the profession.
Anonymous @ 9:39 PM
you are mixing up issues. IP firms recruiting earlier examiners/controllers or their relatives is a completely different matter. I would love to hear your arguments on how an advocate with non-technical background understands the invention, advises inventor on various aspects of it, assess the invention vis-a-vis the prior art and be able to claim it in a manner so as not to compromise the interest of his client.
patent office has the qualifying exam. It can handle through that
It will be interesting to see the order of MHC, and to the extent to which it goes against what DHC has to say in Anvita Singh V. UOI.
In re Anvita Singh, the DHC had acknowledged the importance of technical qualification for registration as a patent agent. As far as I remember, the court equated the job of a patent to a lawyer and explained the importance of technical qualification in presenting a case in front of the controller.
Though the DHC, in Anvita Singh did not emphasize on the extent to which Advocates can dispose in front of a patent controller, the acknowledgment of the court about the importance of technical qualification has lot to say regarding the validity of such qualification to practice in front of a controller.
why not BCI qualifying exam be open to everyone and qualified persons be registered as advocate even without law degree if the threshold is qualifying exam alone.
A technical graduate might be able to understand law more easier with little efforts than a non-technical law graduate trying to understand scientific inventions (eg:chemical structures, markush claims…….)
I have to be very candid. I am a science background who worked with an Advocate who got registered as a Patent Agent before 2005 (or sometime before that) when there was no such rule mandating a Pat Agent Exam or a Science background to register as Pat Agents with the IPO. This person still proudly boasts/flaunts as a very proudish Pat Agent to all bakras(clients). This person still is enormously dependent on his/her employees who are scientific/engineering background to let him/her understand what the inventor/IP guy from the client’s side is explaining about an invention during every inventor interview.
Come on man, an Advocate does not even know what is stud, what is a pitch, how to reduce the claim in the light of the information in the spec, how to compare the invention with the MOST relevant prior art and even identify the most relevant prior art even before that to be able to go to that step. All of these things are entirely bound to be burdened on a guy who is better synchronized with the inventor who is always a TECHNICAL GUY. According to this judgement, these persons (the unwelcome Advocates who don’t know what is science/engg)are bestowed with the right to signatory and fakely flaunt the efforts of the actual person’s who do that job each and everytime for them. This is a humiliating judgement and MUST be slashed. Otherwise I will got to APPEAL with all rightful grounds
dear anonymous @11:03 pm
if a lawyer can argue in front of the court about inventive step involved in a patent related to “codon optimization of a gene construct for high level expression of a protein in a particular cell line” or explain to the judges how it is different from prior art then why cant he draft the patent application.
The technological part can always be verified by the inventors.
Dear anonymous @ 3:59 pm
Arguing before a court is different from what goes into preparing the patent specification, for example interviewing inventor, challenging the inventor about its inventive concept, analyzing scientific data, taking a decision whether data is sufficient or more experimental proof is required etc ….etc….. Contrast this before a court – a lot of info is available at the disposal of lawyer…the examination reports, the prosecution history from other jurisdictions and above all a battery of technical guys who feed him with scientific info and technical nuances. Anonymous at 2:43 pm has given some flavour (a true story…….)
I would love to see the order before making any comments. Right now, the first thing that comes to my mind is that as it is, the technical persons working in IP law firms are treated as second grade members even though they would have studied hard to earn an additional Law degree. Nobody is willing to expose them to the real litigation. If this is true, the lives of such technical people have suddenly turned more miserable. So much for encouraging science in our country. Anon techlawyer
“”if a lawyer can argue in front of the court about inventive step involved in a patent related to “codon optimization of a gene construct for high level expression of a protein in a particular cell line” or explain to the judges how it is different from prior art “” — you must know a long team of scientist backs such lawyers. I am from non-legal background but I find law pretty easy, I think courts should also allow non-LLBs to sit for qualifying exams. If most technical/scientific people can clear toughest of exams like CAT, IAS/UPSC etc. I see no reason why an exam as easy as one by BCI would not be cracked by us. Seriously, it needs preparation only.And anyways, lawyers all the time refer to some or the other case law with various bare acts handy in their office, not that they remember all laws by heart etc. so, a non-legal person should also be allowed to advocate for others, in courts, not only for himself. If I do not find any lawyer to take up my case, I can defend myself in court, so can I do with other people. No big difference. And most of the legal work, petition etc. is done in some “templates” like agreement, contract, affidavit, petition etc. which have been set through years of practice by other lawyers. A LLB shouldn’t be and IS NOT criteria of being an advocate, but qualifying BCI alone should be criteria of being an advocate,llb or not.
YAYYAYAYAYAAYAYAYAYAYAYYAYAYAY.This is great news for lawyers who don’t have a science/technology degree. 🙂
If a lawyer cannot file patent on behalf of his client, then a patent agent who does not have a law degree should not also file a trademark application, since he is not a basic Law degree holder. Just getting through in patent agent exam will not render any legal knowledge. Filing both patent and trademark applications has legal implications.
The discussion is going away from the post. Lawyers, technical experts everyone has their own role in the society. Since what we are talking about is patents an intellectual property right in simple a right. You have a right we lawyers argue to protect your rights. Over the time we have seen lawyers argue for many subjects which are not related to arts or commerce but lawyers have argued it so well that many rights were further established. So lawyers can handle any subject well because we study a subject from history to its future before we open our mouth !!!
Since a lawyer can file all the other IPR’s, law must permit lawyers to file patents. And if science degree is must !!! A lawyer with a science degree may be permitted to file patents without having to give patent agent exam.
Annon @ 2:18
what makes you believe that a patent agent is eligible to file trademark application???????????????????? God save IP profession in this country!!!!
Anon@2:18
Only a lawyer or a trademark agent can file a trademark application for a client. Just by clearing the patent agent exam, one cannot become a trademark agent. There is separate Trademark Agent exam which does not need science degree as a qualification requirement.
Looks like you are a lawyer, maybe you should just read the trademark act before you make a comment and not make a fool out of yourself.
I will agree completely with Anonymous 10:53 AM and Rahul. Time has come when the job of drafting a patent specification needs to be seen with a lot of respect. Since the person who is drafting has to do it with a lot of futuristic issues in minds, possible litigation being one of them.Patent practitioners who with a technical background has actually gone ahead and studied law should be given their due. It needs to be recognized widely that patents are one of the most important and strongest form of Intellectual Property Rights. Hence, the ones who draft and prepare the prime document to be awarded as a registered patent, needs to be armed with technical knowledge and proper understanding of Patent Law. In my understanding, this job can be done best by a Patent Agent. An advocate with NO knowledge of the arae of technology, will have nothing to contribute here and has to take help from a technical expert. So what is the point here of all this? Moreover, the regulatory authority of Patent Agents is the Patent Office. How will the Advocate who wishes to draft and prosecute patent application be regulated? Its time techno-legal professionals like in the US and EP be given their due. Patent Practise cannot be generalized among common legal practitioners.
Well going by this logic, a lawyer should also be allowed to certify books of accounts and balance sheets no, since he can anyway argue a tax matters in court (off-course with little help). Why have only CA’s to do that job?
Unfortunately we do not have a system of articleship unlike EP where even before taking up the patent agent examination, one has to work under a qualified patent attorney for a few years. Bring that provision in and lets see how many advocates (wihtout science qualification) still want to practice as patent agents?
it is preposterous and pathetic to know the ruling of HC stashing away the Degree qualification mandate. It is a very normal and logical question that pops up in anyone’s mind…How can a lawyer draft a scientific claim without understanding the invention atlaeast to the extent of identifying the key essentials of the invention????
@Anonymous 2:18A wehere are you Sir? As per Rule 150 of the Trade Marks Rules, only an advocate can represent his client for the filing of a trademark application.If a Patent Agent with a Law degree files a trademark application, this is not technically wrong.If a patent agent without a law degree does so, then it is complete violation, but the said issue has no bearing over the instant debate at hand. Further, a patent agent exam, let whatever the great detractors say, is a serious qualifying exam which deals with Patent law and drafting techniques. Filing both Patent and TM Applications with the legitimate qualifications is perfectly possible. What is not possible is an advocate with NO technical knowledge drafting a patent specification and risking the Inventor’s / Clients chances of securing a right. Further, foreign filers, like from US and EPO, will be heavily discouraged to let an non tech advocate draft or advise them for drafting & filing, where they are used to super specialized patent services back in their countries.
Dear Anonymous @3:59 PM
If the technological part is drafted by the inventor/s, what business does an overwhelming lawyer who can do nothing with the
invention have to do with the drafting part in that place ? Just wasting client’s money, his valuable time, trust and energy ? The client will not tolerate it for more than 2 rounds of business. I have been seeing non-tech patent agents who ruin the lives of innocent clients by making hopeless drafts just for the INITIAL MONEY and later ditch them at the prosecution stage coz of their own activity. Please wake up. Drafting is not a so much legal stuff like you are obsessed with. It is predominantly a technological text and mildly a legal text which has got no need to invite an overwhelming lawyer to do that part.
IT TAKES 4 DAYS OF INSTRUCTION FOR ANYBODY TO LEARN THE LEGAL PART. IT TAKES YEARS/DECADES OF STUDIES/EXPERIENCE TO LEARN
TECHNOLOGY.
Prior to 2005 amendment, Advocates as a matter of right were filing Patent Applications, and this right they had for several decades. High Court by its recent judgment had only reestablished the right which the lawyers earlier had.
The Act did not prescribe any qualification for an inventor. (Thomas Alva Edison did not graduate from any Science/Engineering college, but he had more 1000 Patents to his credit.) Further, the Act did not insist that the Judge who hears a Patent infringement suit should have Science or Engineering background.
It is not expected that a judge handling criminal cases should be competent in the field of ballistics, explosives, firearms, forensic medicine,etc., nevertheless he hears the cases and adjudicates it. How? with the help of lawyers. Cases of all nature are being entrusted to lawyers. Lawyers are dealing with books of accounts; medical jurisprudence; counterfeiting of coins; shipping; telecommunication; software piracy. If they can handle wide variety of case, why not Patents?
Section 30 of Patents Act permits a lawyers to practice before any court;forum or tribunal in the country.
If a lawyer can represent in an Opposition proceeding before the Controller; argue an appeal before the IPAB or contest an infringement suit in the High Court or Supreme Court, why can’t he file a specification. Advocates can argue an appeal involving the intricacies of an invention, but cannot prepare and file a Patent. what rational is this?
If graduation in Science is set as a criteria for a person to become a Patent Agent, then students graduated in B.Sc – Biology, Mathematics, Statistics, Nursing, etc are also eligible to become Patent Agents, after all they are also science graduates.
There is no justification in keeping Science as the basic qualification for a person to become a Patent Agent. Science is vast subject and it has got several branches. Going by the logic of the previous comments, how con a person competent in one branch of science prepare specification in another branch of science which he is not qualified. If a graduate in biochemistry can prepare a specification for an invention related to aeronautical engineering, why not an Advocate.
And what does the Patent Agent Exam tests? Does it tests the candidate’s ability in the branch of science which he is qualified. The examination are more related to Patents Act and procedure. It is the understanding of the Patent Law which is more more looked into than the credentials in a particular branch of science.
Ultimately, leave it to the client, he knows better whom to engage.
Looking at some of the comments, what is apparent is that some of our non-science/non-tech lawyer friends have exposed themselves……their understanding of patent issues is abysmal. Imagine what will happen if they begin to draft patent and prosecute them, if the decision of MHC is not challenged.
In fact, I want a higher threshold of scientific qualification to appear for patent agent exam – minimum master degree, except BTech/MBBS/BDS or equivalent degrees. I can tell out of my experience that it will be extremely difficult for a B.Sc. guy to fully appreciate the invention (there may however be few exceptions). I fear drafting a patent on chemical arts which is closer to my area biotechnology, forget about thinking of mech/elec arts. We have some of our non-science/non-tech lawyer friends wanting to draft patent and prosecute them. What an irony.
Lets put it this way and the way it is..LLB or not.. If one wishes to draft patents and prosecute them too..might as well earn a Science Degree and qualify the Patent Exam..the defence rests here!
It’s difficult to explain to non tech lawyers the meaning of science.. All these years I believed Science ensconced natural sciences like Biology etc.. And applied Sciences like Nursing etc..Aghast to know the abysmal ignorance of the essence of Science..there should be a mandatory elective of “Sciences ” in LLB .. Law graduates should not be this ignorant of Science also !!
I’m putting an end to this comments threads. All future comments will not be released. After the judgment is out and we have done a post on it, we can have another discussion on civilized terms.
Prashant
Drawing analogy from this will they allow a patent agent to represent his client in front of court. Isn’t disallowing patent agent to represent his client in front of court unconstitutional.
Well, if a lawyer can argue a case to uphold or reverse a patent granted by going in to the finer aspects of that invention, why wont he/she be able to draft a patent application?
Is anybody implying that the Learned Judges of High Courts and the Supreme Court (have the same background in law) will not be able to appreciate the aspects going into the merit/de-merit of a patent because the Judge does not have a science background?
Hello All,
The said comments all end up to a deadlock rather getting a solution. Firstly, does a patent examiner do examine the invention being a subject matter expert, similarly does an agent understand the case right from the scratch to prosecute properly????. Secondly, a researcher could draft but a technical documentation but not a patent appliccation and the “NUN” parameters broadly to claim. Hence, as in US it is better to select a lawyer who has technical background with a legal mentality. Hence, I support the court’s decision but it is all in the game of the respective companies to hire their lawyers.
I would like to bring it to your notice on the below points
1) Who defends a case against doctor for Medical Negligence??
2) Who defends a case against Pharma Company for a Patent case??
3) Who defends a case against Patent Infringement case??
It is not about the knowledge of science or technology.. Patent Registration is a just first step / one of the process based on Patents Act, 1970 as amended in 2005…
Patent Commercialization – Definitely a Advocate is well equipped to get this done along with a well drafted contract & strategy.
Patent Enforcement – Ofcourse Advocate knows how to tackle this.
Patent Litigation – Ofcourse Advocate know it better to handle.
There is a recent trend so many people from Science background are doing LL.B along with their full time jobs… What can we say for this??
It is all about Specialization.. If a lawyer is registered as Patent Agent.. it does not mean he will bring down the quality of the drafting or technology… he / she will definitely take best care of it having a specialized person to work on it..
Basically an Advocate is well equipped to deal with all the matters related to patent..
I wa
The main fact of the matter is the below points..
22. It is an undisputed fact that science is like a ocean. A Science degree may be relating to physics, chemistry, zoology, botany, statistics, Biotechnology, Bio-chemistry, veterinary science, nursing etc., Similarly, engineering or technology is also a vast subject. Hence, it cannot be presumed that a B.Sc., Graduate in statistics, Zoology or Nursing shall be well versed in cases relating to Engineering and Technology under the Patents Act. Similarly, it cannot be decided that a degree holder in physics, chemistry, engineering or technology could be an expert in forensic science, biology or zoology. Merely by prescribing qualification, as degree holder in science, engineering or technology and passing a Departmental Examination on Patents Act and drafting, the respondents cannot monopolise such category of persons and say that Advocates are not competent to be patent agents and similarly the right that was available to advocates under Section 126 (1) (c) (i) of the Act, could not be taken away against the Constitutional safeguards, by way of the impugned amendment. It is also brought to the notice of this Court that advocates having basic degree in Arts or Commerce are not even eligible to appear for the Examination conducted by the respondents, on the ground that they are not degree holders of Science, Engineering or Technology. Similarly, advocate, who had already registered as patent agents, prior to the amendment are eligible, however the other Advocates, who are yet to be registered as patent agents are not permitted, which is also a discrimination and anomaly in taking such a stand, there is no ‘rationalia’ available to support the case of the respondents, to justify the impugned amendment.
If you carefully go through the TRIPS agreement
Agreement between the World Intellectual Property Organization and the World Trade Organization
Being a WTO member India signed the agreement on 1994, took 10 years for a transitions
I strongly feel that IP Office cannot revoke Patent Agents enrolled before 2005 (There are very strong names), they would be compelled to amend the act to include Advocate’s enrolled as per Bar Council. Because, Bar council or Indian law ministry will be not be in any mood to amend the Advocate’s Act… If you have carefully gone through TRIPS or WIPO, It is very mugh silent on any qualification related to become Patent Agent.
After Reading the comments, I can only conclude that Advocate clear all examinations which are required to practice in any tribunal, Courts or Quasi Judicial as per Government of India so how a department can restrict it just by amending Patent Act.
Jitendra Sharma
I appreciate the comments, it is put in a gentle manner…Our engineering and technology friends think, just becoming patent agents.. they can wonders in the area of technology patents.. end of the day, patent profession is to support the invention and inventors…
I agree specialization is the most important factor in any profession, however in India, it has very less significance… Consultants / Agents can do any job, irrespective of their jobs..
If we want to take our technology to next level, our R&D activities, universities, government should come up and support invention..lot of incentives should be given.. people can do research and come up with innovative technology…
The main fact is becoming a patent agent or patent professional will not help to improve the technology innovation.. Inventor is the Subject Matter Expert, he / she would be knowing the subject better than anybody else.. Patent Agent will certainly help to draft & comply with Patent Act.. It should not really matter whether you are Science or Engg. Graduate…
Let us come to the other things..
Patent Registration is just a part of it.. Definitely, need to be legal background to understand all the matters related to Patent Act…
Enforcement is the major challenge
Commercialization & strategy to do business…
Litigation
If you look at overall life cycle of Patent.. Smart Legal Counsel is most required in all the areas…
Dear Nagaraj,
Nobody is disputing the role of a lawyer in technology commercialization, contracts, licensing, business strategy etc… Patent agents very well know about it and they have their feet well grounded. They are only focused on assessing invention, drafting and prosecuting aspects.
The central question is would a lawyer without science or engg background be able to justifiably write a patent spec? My answer is NO. If someone has worked with inventors, analyzed the scientific data, and written a patent spec….he knows it very well that non-tech lawyer would not be able to justifiably claim the invention. I must tell you that all commercialization, licensing, business strategy hinge on how well the patent spec is written. I will not license a patent which I know will be prone to challenges, or easily circumvented…just because it has not been drafted and prosecuted well.
You seem to be giving an emphasis on the Inventor as subject matter expert…..it’s true….inventor can only write a technical draft….not a patent spec…there is hardly much of legal skills in drafting a hugely technical patent spec. Becoming a patent agent will not help improve the technical innovation, but at least it will help polishing the innovation. And being a non-tech lawyer drafting a patent spec achieves neither!!!!!
It is important that lawyer fraternity understands the nature of job. If they feel that they are capable, please acquire a regular scientific degree, qualify patent agent exam and enter the profession; but not taking rescue under some mundane arguments of unconstitutionality of the requirement of scientific qualification.
All the comments makes an interesting read.
Hi,
I do not get the point at all. The objective of the Patent Agent Examination appears to test the skills of a person and consider if the person is competent to proceed before the Patent Office. Now clearly there are two skill sets required here; One that of the technical subject and the Second that of law. The Patent Agent Examination does not test the technical knowledge otherwise they would have come up with some technical (technological/science) questions as well – some GATE sort of questions. Now the point is if the Patent Agent Examination is not to test the technical knowledge, then there arises two points – Firstly, that they are considering that all the persons having the prescribed science/technical degree from the prescribed universities are beyond the need of testing on their technical/scientific knowledge (as they have been already tested by the concerned universities before giving the degrees); and Secondly it is only the knowledge of law that needs to be tested as a science/technology graduate would generally not know the legal concepts and therefore the Patent Agent Examination has the present format.
Now, what is to be questioned is whether an advocate who is a law graduate and who has been tested by a relevant university for legal knowledge and also by The BCI by way of AIBE, could be considered equally competent for not the scientific/technical but the legal skills. If so then an Advocate need not be tested on the legal aspect of the Patent Agent Examination and the examination for an Advocate, iff any, should be based for technical/scientific knowledge only. Going by this logic, a person who is having a science/technology degree and is an advocate should be considered at par with a patent agent as they have been tested by the concerned universities before being granted the degrees both for scientific/technical as well as legal knowledge and skills.
I do not understand why there is such an unreasonable classification between universities granting science/technical and universities granting law degrees. If the universities granting science/technical degrees are considered to have a system of evaluation such that it overrule the requirement of testing the applicants on the scientific/technical knowledge then why is it not the same with law universities in respect of law degrees. It is quite clear that knowledge of both science and law is required, what I fail to understand is if a degree by a prescribed university in science/technology does away with the requirement of testing the knowledge of science/technology then why this unreasonable distinction in case of law graduates.
Also with respect to some comments above where they question the fact that how can an advocate draft a chemical or pharmaceutical patent…I completely agree to it but what I again fail to understand is how can a biology graduate can draft a purely mechanical or physical patent specification!!
Cheers!!
some thoughts in response to anonymous comment @ 5:37 pm:
1. We must understand the fact that drafting and prosecution is largely technical than legal (let us not get into the quality of patent specifications written by Indian agents. we need to improve this profession and everyone who intends to practice should have a certain standard, and why not that be qualifying patent agent exam).
2. Yes, patent agent exam does not test the technical knowledge, but it does test the technical understanding of the candidates to comprehend the invention (without tech knowledge you might not be able to fully understand the invention and reduce it in a patent specification).
3. Why should a sci/tech lawyer be afraid of clearing patent agent exam, when he has cleared univ exams (both sci and law, including AIBE). It just requires one month of effort to crack this exam. Please for heaven’s sake do not bring unconstitutionality argument…….
4. Patent agent exam should be there even for sci/tech lawyer as drafting a patent spec is entirely different from legal drafting which is taught at law school. Just because of this exam the candidate will be forced to learn how to properly draft the specification and claims with appropriate grammar.
5. A biology graduate will not be able to draft patent spec in mech/elec fields. That is the reason patent agent exam has questions from engineering and pharma/life sciences fields. Annonymous @ 11:01 pm has appropriately explained this point. He appears to advocate a higher threshold of scientific qualification. There can be exceptions – one of my friend who is a US patent attorney is a PhD in bio sciences and is drafting patents in electronic engineering (he learnt it before attempting to draft and doing exceedingly well). I am not averse to restricting the practice to only those subject in which the agent has basic qualification (two categories viz., engg and pharma/life sci). The only caveat is that science is increasingly becoming inter disciplinary, but the agent may opt the field he is more comfortable with to practice before the patent office.
To conclude it is my firm believe that patent agent exam should be there for both sci graduates (fortunately this is not disputed at all~!!!) as well as lawyers with sci degree. As to lawyers with non sci degrees, if they have interest they should acquire a sci degree, clear the patent agent exam and practice the profession. Absolutely no exemptions to anyone.
If Engineer can draft a pharma related specification, then a lawyer also can draft it. All science graduation degrees differs in their content i.e. engineering, pharma, computer sciences etc. It has nothing to do with patent Agent’s graduation and actual drafting. Inventor only guides in that. A lawyer deals with every types of cases, so, specification drafting also can be done by lawyers
well by the same logic the AOR and Bar exam should also be scrapped. One should at least understand what one is drafting and there should be certain standards. And for the lawyers who deal with all sorts of cases, i will personally find it very amusing to find a lawyer who deals with competition law, patent law, trade mark law, environment law, divorce law, service law, labour law, mergers, mining matters and does all of them with the same level of ease and accuracy!!!