Patent

Advocates v. Patent Agents: A new case before the Madras High Court


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The ToI recently reported that Madras based advocate Sanjay Gandhi has sued the Controller General of Patents before the Madras High on the grounds despite being “entitled to appear before the statutory body [Patent Office] and advance arguments in his capacity as a qualified advocate, he was disallowed from doing so.” Advocates qualified under the Advocates Act, 1961 have been claiming for some time that they are entitled to practice before the Patent Office without qualifying as a patent agent because the Advocates Act entitles them to practices in all forums.

Section 132 of the Patents Act specifically clarifies that advocates not qualified as a patent agent cannot be prohibited “from taking part in any hearing before the Controller on behalf of a party who is taking part in any proceeding under the Act”. Hearings are however only one aspect of proceedings before the Patent Office – the more lucrative aspect of the patent office practice is the filing of patent applications and it is not clear whether Advocates are allowed to file patent applications under the present law because it seems absurd to allow advocates to take part in hearings but prohibit them from filing patent applications.

It appears that Gandhi is basing his argument on an earlier judgment of the Madras High Court in the case of Chockalingam v. Controller of Patents (2013), a judgment which in my opinion is on a very sticky wicket. In that case, the petitioner had challenged the validity of Section 67(a) of the Patents (Amendment) Act, 2005. The sticking point that led to the litigation in question was an amendment that deleted a provision of law that allowed advocates with degrees in science and technology to get registered as patent agents without taking the qualifying examination. The basis of the legal challenge was quite weak in my opinion but let’s not get into that issue right now. Suffice it to say that the court allowed the legal challenge and basically declared unconstitutional an amendment that deleted the provision that allowed advocates with degrees in science and technology to enrol as patent agents, without the requirement to take the patent agent qualifying examination.

This challenge was rather strange because the petitioner had in effect challenged the deletion of a provision from the law. I can understand a constitutional challenge to a provision that has been added to the law but is it legally permissible to challenge a provision that deletes a provision rendering it non-est? I am not sure. The question that we now have to answer is whether a deleted provision can be revived in law because a court has declared the deleting provision to be unconstitutional? I am certain that this question is confusing and I think it will help to briefly reproduce different versions of Section 126 from 1970 in order to understand the sequence of events.

(a) Patents Act, 1970 as originally enacted

  1. 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: –

(a) he is a citizen of India;

(b) he has completed the age of 21 years;

(c) 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;”

(b) Patents (Amendment) Act, 2002

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”.

  1. 126 (1)(c) would now read as follows:
  2. 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

(c) Patents (Amendment) Act, 2005

Section 126 was amended once again in 2005 to delete the first sub-clause allowing advocates with science and technology degrees to become patent agents directly without writing the patent agent examination.

Section 67(a) of the Patents (Amendment) Act, 2005 reads as follows:

“In section 126 of the principal Act,-

in sub-section(1), in clause (c), sub-clause (i) shall be omitted”

Post this amendment, the provision reads as follows (with the provision deleted being struck out):

  1. 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;”

In other words, the amendment in 2005 required all advocates, even those with degrees in science and technology to take the qualifying patent agent examination.

The Madras High Court judgment in Chockalingam v. Union of India  

The Madras High Court judgment struck down Section 67(a) of the Patents (Amendment) Act, 2005 in its judgment in 2013. The relevant extract of the judgment is 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.”

I am not sure on how exactly to interpret this holding because the court has struck down an amendment which basically deleted a provision of statutory law. Does this mean that the deleted provision will be automatically restored to the law? Does it now mean that the provision “(i) an advocate within the meaning of the Advocates Act, 1961” is now part of the law? This is a rather unique situation because most constitutional challenges are aimed at striking down a provision existing in the law and are not targeted at provisions deleted from the law.

Can you challenge a provision that does not exist in the law? I don’t think so. But presuming such a challenge is valid and the deleted provision is restored in the law as a result of the High Court’s declaratory judgment then in that case only advocates with a degree in science or technology should be able to enrol as a patent agent without take an examination. It doesn’t mean all advocates can be enrolled as patent agents.

In any event, this new petition by Sanjay Gandhi should hopefully offer some clarity on Section 126 and even Section 132 which is a provision that wasn’t really considered in the Chockalingam case.

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).

14 comments.

  1. Adv. Anil Kulkarni

    Dear Prashant, as per my knowledge the Choklingam decision has been challenged by Controller in SC. This was revealed to me by the office of CG. However as per that information it was not clear whether the Madras HC decision has been stayed or not. The answer was ambiguous. Now if the decision is stayed then we must await the decision of Sc. If it is not stayed then, the judgement of HC is enforceable and An advocate having a degree in science technology or engineering should be register as Patent without any examinationby Patent office. I have learnt that (I am subject to correction) many eligible Advocates have applied for registration as Patent Agent after Choklingam decision but Patent office has not taken any decision on those applications even probably without any stay by SC on said decision. I am not aware about state of challenge in SC and Dr. Naahit or concerned with the subject many throw light on the matter.

    Reply
    1. Anonymous

      The said case is not challenged before the Scheduled but rather challenged under the Writ Appeal to the divisional bench of the Madras High Court

      Reply
  2. Aditya Gupta

    Hi Prashant, one can challenge the provision which amends another law, even if the amendment deletes or “omits” an existing provision. The Chockalingam case challenged Section 67(a) of the the 2005 Amendment Act and since the said Section was struck down, that amendment will have no effect. This would mean that the law as it stood pre – amendment would continue to operate. In effect, as per the Chockalingam decision, advocates with a degree in science, engineering or technology can register as patent agents without taking the patent agent examination. Of course, an appeal is currently pending before the Madras High Court.

    Reply
    1. Prashant ReddyPrashant Reddy

      THanks Aditya – is the appeal before the SC or the HC?

      Regarding the validity of such actions – are you aware of any other judgments where a provision deleted from the law has been restored by striking down an amendment ? It seems strange to me that a provision that is non-existent for all practical purposes, can be revived in this manner – how can something that doesn’t exist in the law violate a fundamental right?

      Regards,
      Prashant

      Reply
      1. Aditya Gupta

        Thanks, the appeal is before the HC. Notice has been issued but no stay has been granted.

        I am not aware of any judgments on this aspect specifically; but somehow I don’t see a problem at all. If a deletion of a provision arbitrarily takes away a benefit or treats unequals as equals, then it creates an Article 14 issue.

        Full disclosure – I have recently filed a writ petition before the Delhi High Court in my own name challenging the same provision.

        Best regards,

        Aditya

        Reply
      2. Aditya Gupta

        Thanks, the appeal is before the HC. Notice has been issued but no stay has been granted.

        I am not aware of any judgments on this aspect specifically; but somehow I don’t see a problem at all. If a deletion of a provision arbitrarily takes away a benefit or treats unequals as equals, then it creates an Article 14 issue.

        As a matter of disclosure, would like to tell you that I have recently filed a writ petition before the Delhi High Court in my own name challenging the same provision.

        Best regards,

        Aditya

        Reply
  3. Prashant ReddyPrashant Reddy

    I wasn’t aware that you had challenged the provision – what are the grounds of your challenge? Please feel free to send us a guest post on your challenge.

    Regards,
    Prashant

    Reply
    1. Aditya Gupta

      Hi Prashant, thanks. Since I am a Petitioner in the petition and the matter is sub-judice , I will not be in a position to write about it. I am happy to share a copy of the petition (which captures all my arguments) with you and the readers.

      Reply
      1. Prashant ReddyPrashant Reddy

        Please share a copy with us Aditya – I think you have my email ID and we can carry it on the blog.

        Thanks,
        Prashant

        Reply
  4. Wg Cdr T R Mohan

    Mr. Prashanth,

    The writ appeal WA 532 of 2014 filed by the Controller of Patents, Chennai challenging the order given in WP 8472 of 2006 in 2013 is before Madras High Court and was last heard in April 2017. Mr. SP Chokalingam has further challenged the 2002 amendment to Sec 126 in WP 949 of 2017.

    I had filed a WP 27681 in 2016 praying to Hon’ble Madras High Court to instruct CGPDTM, Mumbai to grant registration to me since no stay has been granted till now in WA 532 of 2014 and a mere filing of an appeal cannot operate as a stay as per Order 41 Rule 5 of CPC and also decided cases of Hon’ble Supreme Court of India and various other High Courts.

    The Hon’ble Judge on 10 Jan 2018 did not take a independent decision on grant of registration to me but instead has ordered my WP 27681 of 2016 to be tagged to the WA 572 of 2014 which is before the Division Bench of Madras High Court.
    I am now making my efforts to hasten hearing in my WP and also in WA in order to get a clear direction on the matter and also to rest this issue finally here in Madras High Court.

    WP 34010 of 2013 filed by Sanjay Gandhi has come up for hearing now. I don’t know if its outcome will be any different from what was it in my WP.

    This is the current status on the matter in Madras High Court. I am not aware of the WP filed before Delhi High Court and also if any appeal is pending before Hon’ble Supreme Court.

    Mr. Aditya, you may write to me on my mail id [email protected] and we can share further details and also references to decided cases on appeal and stay.

    Effectively Advocates have been denied registration since 2005 by CGPDTM following the amendment to Sec 126 to Patent Act.

    Regards
    Wg Cdr T R Mohan
    Advocate
    Chennai
    9444751387

    Reply
  5. Jagdish Sagar

    Suppose the amending Act were to be set aside: the amendment made to the principal Act, whether by way of insertion or deletion of a section, would stand. Even repeal of the amending Act (as Prashant explained to us all quite recently) has no effect on the principal Act, precisely for this reason. Admittedly, the omission of a provision in the principal Act might conceivably render the amended Act itself unconstitutional for some reason, e.g. by creating a form of discrimination that the repealed provision had obviated, or omitting some vital procedural safeguard, or whatever, but that is a different question.

    Reply

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