Does the Madras High Court judgment on S. 126 allow advocates without science degrees to become patent agents?


A few posts ago, we had written about a judgment of the Madras High Court, when we had been informed that a part of S. 126 of the Patent Act, amended via a legislation in 2005 was struck down as unconstitutional. We had also concluded that this legislation would now “allow all advocates to practice before the patent office without giving the patent agent exam.” 


It appears that this initial reading of the judgment was wrong. It does not automatically allow all advocates to practice as patent agents. It allows only advocates with degrees in science, engineering and technology to qualify as patent agents directly without having to write an examination. In order to understand the impact of the amendment, it is necessary to discuss the history of the amendments to Section 126.


The legislative history of Section 126


The 1970 version:As originally drafted S. 126 of the Patents Act, 1970 used to allow advocates, enrolled with the Bar Council to practice as patent agents. Citizens, not advocates, could be registered as patent agents only after clearing the qualifying examination conducted by the DIPP provided that they were Indian, over the age of 21 and had a “degree from any university” in India. I reproduce the entire provision below (as available on the patent office website):


“126. Qualifications for registration as patent agents

(1) A person shall be qualified to have his name entered in the register of patent agents if he fulfils the following conditions, namely: –

  1. he is a citizen of India;

  2. he has completed the age of 21 years;

  3. he has obtained a degree from any University in the territory of India or possesses such other equivalent qualifications as the Central Government may specify in this behalf, and, in addition,-

(i) is an advocate within the meaning of the Advocates Act, 1961; or

(ii) has passed the qualifying examination prescribed for the purpose;”


The 2002 version:When the Patent (Amendment) Act, 2002 was enacted by Parliament, S. 53 of this legislation, it amended S. 126(1)(c), replacing the phrase “degree of any university” with “degree in science, engineering or technology”.


S. 126 (1)(c) would now read as follows:

c. he has obtained a degree [in science, engineering or technology] from any University in the territory of India or possesses such other equivalent qualifications as the Central Government may specify in this behalf, and, in addition,-

(i) is an advocate within the meaning of the Advocates Act, 1961; or

(ii) has passed the qualifying examination prescribed for the purpose;


This amendment now allowed for advocates to become patent agents directly without any additional requirements provided they met the new requirements i.e. a degree in science, engineering or technology. Advocates without science degrees could not sit for the patent agent qualifying examination.


The 2005 version: In 2005, when Parliament enacted the Patent (Amendment) Act, 2005, Section 67(a) of these amendments deleted S. 126 (1)(c)(i). The provision which was deleted allowed advocates to register as patent agents directly without the need to take any qualifying examination. Post this amendment, even those advocates with science and engineering degrees did not have a right to directly qualify as a patent agent. Instead all advocates would now be treated like any other citizen and would have to pass the qualifying examination conducted by the DIPP in order to register as a patent agent.


Section 126, post 2005 reads as follows:

S. 126 (1)(c):

he has obtained a degree [in science, engineering or technology] from any University in the territory of India or possesses such other equivalent qualifications as the Central Government may specify in this behalf, and, in addition,-

(i) is an advocate within the meaning of the Advocates Act, 1961; or

(ii) has passed the qualifying examination prescribed for the purpose;


Aggrieved by these amendments, Advocate Chockalingam filed a writ petition under Article 226 of the Constitution before the Madras High Court seeking a writ, declaring the deletion of the amendment introduced via Section 67(a) of the Patent (Amendment) Act, 2005 The Madras High Court granted this relief.


The exact words of the judgement are as follows:


“53. In the result, this writ petition is allowed, declaring that the impugned amendment introduced to Section 126 of the Patents Act 1970, by Section 67 (a) of the Patents (Amendment) Act, 2005 (Act 15 of 2005) as illegal, unconstitutional, ultra vires, void and unenforceable. No order as to costs.”


Please note that S. 53 of the 2002 Act, which inserted science, engineering or technology was not challenged. That provision remains on the books.  


Post the judgement I’m not sure whether the provision deleted via Section 67(a) of the 2005 Act is automatically restored. Presuming that the provision is restored, the exact text of the provision would now reads as follow:

“c. he has obtained a degree [in science, engineering or technology] from any University in the territory of India or possesses such other equivalent qualifications as the Central Government may specify in this behalf, and, in addition,

(i) is an advocate within the meaning of the Advocates Act, 1961; or

(ii) has passed the qualifying examination prescribed for the purpose;”


Basically this means that advocates with science, engineering and technologies degrees can automatically become patent agents but advocates without such degrees cannot qualify to sit for the patent agent examination.


From a plain reading of the judgement it appears that the Court wanted to hold even S. 53 of the 2002 Act as unconstitutional but probably failed to do so because the petitioner did not challenge the provision.


So as things stand today, advocates without science degrees cannot even sit for the qualifying examination conducted by the Patent Office.

Prashant Reddy

Prashant Reddy

T. Prashant Reddy graduated from the National Law School of India University, Bangalore, with a B.A.LLB (Hons.) degree in 2008. He later graduated with a LLM degree (Law, Science & Technology) from the Stanford Law School in 2013. Prashant has worked with law firms in Delhi and in academia in India and Singapore. He is also co-author of the book Create, Copy, Disrupt: India's Intellectual Property Dilemmas (OUP).

15 comments.

  1. AvatarAnonymous

    Hi ,
    I m MSc(Biotech) , LLB
    i want to ask wether i can register myself as a patent agent directly without writing this years PAE exam after this judgement ?

    Reply
  2. AvatarAnonymous

    So this decision is going to affect the current patent agent exam which is supposed to be conducted next month or it will take effect from next year?

    Reply
  3. Avataryunus

    the date impunged order come in effect is 15-03-2013. Now the previous law exist from the said date. if ministry willing to challenge then must take stay order before examination otherwise may be liabale for contempt proceedings. Even if some1 apply for enrollement, they can’t reject and if rejected go for contempt proceedings.

    Reply
  4. AvatarAnonymous

    thanks for yours clarification you are right.now what should an advocate with science background do to enrolled himself with the patent office, guide me

    Reply
  5. AvatarAnonymous

    thank u for ur clarificationnow what should an advocate with science background do to enrolled himself with the patent office, guide me

    Reply
  6. Avataryunus

    Now people qualified within earlier law which exist now, should send Form-22 along with relevant documents in support of eligiblity and statutory fee of Rs. 2000/-. I have asked clarification from cg office whether they are going in appeal or not.
    Please be noted this is not advice and no laibility arise if any1 act on this comment.its free comment on blogging site.

    Reply
  7. AvatarAnonymous

    Dear Yunus,

    There would probably be an official notification from the Patent office before eligible people can send out the forms ?

    Would you know if the patent office is going to appeal ? Thanks…

    Reply
  8. AvatarAnonymous

    In my opinion patent agent exam should be there even for advocates with science background. This will be good if we have to churn out patent agents with good drafting skills. Of course a single exam cannot test all parameters, but at least the aspirants will be forced to prepare for the exam. I doubt by having B.Sc. with LLB would enable a person to draft a patent spec justifying the invention. A person with LLB can now enroll for B.Sc. in distance mode and become patent agent now!! Let everyone qualify the exam and earn the eligibility of becoming patent agent.

    Reply
  9. AvatarAnonymous

    I have my doubts that the Indian Patent office will do away with the Patent Agents exam.

    It seems difficult that people who are not from science background will be allowed to register as Patent Agents without the exam.

    The Patents Act was amended with a purpose and the courts must achieve that object of the legislature.

    Reply
  10. Avataryunus

    i didn’t receive specific answer to my question from cg office. they simply said visit ip website for updates.
    this mean they don’t intend to answer and when I call they avoid questions. so wait n watch

    Reply
  11. AvatarAnonymous

    I have no idea why advocates with sci/tech degrees like to have exemption from patent agent exams. If they feel that they can draft the patent spec, they should have the confidence to clear the patent agent exam too.

    But fact of the matter is that patent agent exam is not like any other B.Sc./LLB exam. So, it seems that advocates like to have easy go at it by acquiring B.Sc. qualification from any open university.

    Applying the logic BCI exam should also be held unconstitutional as after obtaining LLB there appears to be no need for it. Moreover it is an open book exam, and I fail to understand what is the level of standard it tries to achieve.

    No malice intended to advocate friends.

    Reply
    1. AvatarAnil Kulkarni

      Dear Kalpana,
      I was also curious about the matter and request Patent office, the CG office for information. I did not get it at the first instance easily. Then I resorted to RTI for getting the information. Now I have received the information and reproducing the verbatim reply from the patent office for your information. I also asked whether Hon. Madras High Court gave stay to its decision. This part was kept silent in the answer but was answered only in RTI appeal. The replies are as follows:

      “With reference to your application under RTI as above it may be stated that the decision of Hon’ble High Court Madras has been appealed vide W A No 532 of 2014 in High Court Madras and same is under consideration in the court”

      “Report has been called from the concerned CPIO & information received that writ appeal has been admitted in the Madras High Court & further proceeding are going on. The court has not put any stay on the judgement which will be clear in a next few proceedings.”

      It is clear from the above that Hon. High Court has not stayed its decision in last two years and hence the original decision in the matter that the deletion of “(i) is an advocate within the meaning of the Advocates Act, 1961; or” as unconstitutional still stands and enforceable. This effectively means that CG is duty bound to enrol Advocates with science, engineering or technology degrees are eligible for registering as Patent Agent as and when applied by such advocates on following other rules and any of his action denying such registration shall be without authority. I feel those who have been denied registration on being and advocate and with science, engineering or technology degrees the after making application should take up the matter with Hon. Madras High Court and seek intervention in the matter.

      Reply

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