We had, earlier this year, brought to you a guest post by Dinesh Parmar, one of the candidates who wrote the Patent Agent Exam 2016, wherein he had argued that answers to two of the Paper-I Set C questions as provided in the answer key published by the Patent Office were incorrect. While answer to one of the two questions (i.e. Q. 49) was rectified by the Patent Office on February 2, there has been no clarification issued for answer to Q. 27. Aggrieved by Patent Office’s answer to this question (that carries 2 marks), Dinesh (who has failed the exam by only 2 marks) has recently filed a writ petition before the Bombay High Court challenging the correctness of the answer.
The petition (numbered WPL/915/2017), which is yet to be admitted, seeks a declaration from the court that the correct answer to Q. 27 is option (b) and not option (d) as stated in the Answer Key. It further seeks a direction to the Patent Office to accordingly correct the answer key, award marks to candidates who had marked option (b) as the answer and publish the reevaluated result within one week from the date of the order. Those of you, who are similarly aggrieved with the Patent Office’s answer and wish to join Dinesh in the petition, may contact him at 9825051147 or [email protected].
Question 27, that forms the subject matter of this petition, reads as follows:
Q. 27 As per the Indian Patents Act, a resident in India:
(a) Is free to file an application for patent in a foreign country without first filing an application for patent for the same invention in India.
(b) Can file an application for patent in a foreign country without first filing an application for patent for the same invention in India, only under certain special circumstances.
(c) Can file an application for patent in a foreign country only after filing a PCT application on same Subject matter.
(d) None of the above
The answer as per the answer key published by the Patent Office is option (d). However, Dinesh and many others argue that the correct answer is option (b). I am reproducing below the explanation provided by Dinesh in his guest post that we had published here.
“Section 39(1) of the Patents Act, 1970 reads as follows:
Section 39: Residents not to apply for patents outside India without prior permission. –
(1) No person resident in India shall, except under the authority of a written permit sought in the manner prescribed and granted by or on behalf of the Controller, make or cause to be made any application outside India for the grant of a patent for an invention unless–
(a) an application for a patent for the same invention has been made in India, not less than six weeks before the application outside India; and
(b) either no direction has been given under sub-section (1) of section 35 in relation to the application in India, or all such directions have been revoked.
The answer to Q. 27 should be option ‘b’ in light of the words “except under the authority of a written permit sought in the manner prescribed and granted by or on behalf of the Controller” in Section 39(1). The question seeks to ask if and when an Indian resident can file a foreign application without first filing an application for the same invention in India and Section 39(1) makes it clear that such application can be filed in cases where written permit has been granted by or on behalf of the Controller. This, in my opinion, qualifies as a special circumstance and thus the correct answer to Q. 27 is option ‘b’ and not option ‘d’ as stated in IPO’s official answer key.
Further, Q. 27 was asked in Patent Agent Exam 2010 as Q. 8 in Part A of Paper 1. Answer to the said question has been provided by two books: Patent Agent Examination by Sheetal Chopra – Registered Patent Agent, M.Sc, MBA and Dr. Akash Taneja – M.Sc, MBA, PG Diploma in IPR Law, Master Diploma in IP, Ph.D. and other one by Nitin Sharma – BE, MBA and LLB. Both of these books are very popular and known among IP professionals. In both books, the answer to Q. 8 is mentioned as option ‘B’ (PAE Book by Sheetal Chopra and Dr. Akash Taneja at Page 249 and PAE Book by Nitin Sharma at Page 241). Nitin Sharma has also provided explanation why the correct answer must be option ‘B’.
So, how can option ‘b’ be considered as incorrect answer to Q. 27? Option ‘b’ must be considered as correct and marks must be awarded to the candidates who marked ‘b’ as the correct answer to Q. 27.”
In the petition, Dinesh also relies upon the answer keys prepared by Muthu Sentilkumar and Roshan John (Research Associate under the IPR Chair at IIT Madras) & Dr. Sudarshan Rajagopal (one of the candidates who wrote this exam) that we had published on SpicyIP here and here. Both the answer keys state option (b) as the correct answer to Q. 27. The petition further refers to answers to Q. 50 and 51 in the FAQs published on the DIPP website here and the answer to Q. 24 in the FAQs published by the IPR Cell of NIIT Rourkela here, in support of the correctness of option (b) as the answer.
One hopes that the High Court admits the writ petition filed by Dinesh soon and directs the Patent Office to award 2 marks to candidates who have marked option (b) as the answer to Q. 27. This would enable the candidates who have failed the exam by only 2 marks on account of Patent Office’s incorrect answer, to qualify the exam and register as Patent Agents.