Patent

More Advocates Challenge the Requirement of a Patent Agent Examination to Practice before the Patent Office


Image from here

Since I wrote about Sanjay Gandhi’s recent petition before the Madras High Court where he sued the Controller General of Patents on the issue of advocates requiring to take the patent agent examination, I have received information regarding two more petitions on similar points before the Madras High Court and the Delhi High Court.

The petition before the Madras High Court has been filed by Wing Commander (Retd.) T. R. Mohan. The gist of his petition as per a comment he left on our blog is as follows:

“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.”

WA 532 of 2014 is apparently the appeal filed by the government against the judgment in Chockalingam v. Union of India where a single judge of the Madras High Court struck down Section 67(a) of the Patents (Amendment) Act, 2005. I’ve discussed the ramifications and doubts regarding the striking down of Section 67(a) in an earlier post. Apparently, that challenge has been pending for the last 4 years and the appeals bench has not stayed the judgment of the Single Judge.

The petition before the Delhi High Court has been filed by Delhi based advocate Aditya Gupta. Aditya has challenged the constitutionality of Section 67(a), which has already been struck down by the Madras High Court and in addition has also challenged Rules 109-111 of the Patent Rules, 2003. These rules basically implement the mandate of Section 126(c)(ii), which is the provision inserted by Section 67(a) of the 2005 amending statute. The full text of his petition can be accessed here.

As I had mentioned in an earlier post, I am not quite convinced that it is possible to challenge the constitutionality of a provision deleting something from the law because you are in effect challenging something that doesn’t exist in the eyes of the law anymore.

Perhaps a more convincing line of argument, would be to simply challenge the constitutionality of the whole of Section 126(c). As it stands now, the provision reads as follows:

  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 fulfills 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 in science, engineering or technology from any university established under law for the time being in force in the territory of India or possesses such other equivalent qualifications as the Central Government may specify in this behalf, and, in addition,—

(i) [Omitted by the Patents (Amendment) Act, 2005]

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

(iii) has, for a total period of not less than ten years, functioned either as an examiner or discharged the functions of the Controller under section 73 or both, but ceased to hold any such capacity at the time of making the application for registration;

I remember having this conversation with Feroz Ali several years ago during a visit to the Madras High Court where he made the convincing argument that the entire provision violates the equal protection mandate of Article 14 of the Constitution. The equal protection clause of Article 14 allows the law to create different categories, provided there is a reasonable basis for creating such a classification and there is a rational nexus between such classification and the aim of the statute. For example, in the case of taxation, Parliament can tax different classes of people at different rates depending on their incomes. There is a reasonable basis to this classification, since the government has certain sound social and economic policies that substantiate progressive taxation.

In the context of qualification requirements that creates entry barriers to the profession, the qualifications laid down in the law, need to have some nexus to the aim of that profession.

For example, in the context of the patent agent examination, the government is likely to argue that degrees in science and technology are required to ensure high quality patent drafting. There are two possible opposing arguments. One is on the lines made by Aditya in his writ petition, wherein if advocates are allowed to argue patent infringement and patent validity matters before the judiciary, it follows that they can be trusted with patent drafting because the key to drafting a good patent application is to understand principles of patent law i.e. principles of claim drafting, claim interpretation etc. The second line of argument, which is loosely based on an argument made by Feroz Ali, is that the current system of qualifications basically allows somebody with a degree in zoology to draft patent specifications for space rockets. In other words, the law does not discriminate between different degrees in science and technology and presumes that a degree in any science and technology qualifies a person to draft any patent application for any technology – that is the definition of an absurd classification and one that will most certainly fall foul of Article 14’s equal protection mandate. It is irrational and has little nexus to the aim of the law, which is to ensure quality patent drafting.

If the government does want to save Section 126 it will need to narrow the scope to allow patent agents to practice only in that one technology field where they are qualified. I honestly doubt whether India has the need for such a high entry barrier to the profession because 90% of our patent applications are filed by foreigners, meaning that 90% of these applications are drafted outside the country, with Indian law firms basically being post offices. There are a few firms like Naren Thapetta’s IP Horizons which do cutting edge patent drafting work but such firms are few and far between

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). He has recently been appointed as an Assistant Professor at NALSAR, Hyderabad, starting September 1, 2017.

16 comments.

  1. poornima ganesh

    Please don’t publicly post statistics like “There are a few firms like Naren Thapetta’s IP Horizons which do cutting edge patent drafting work but such firms are few and far between” without knowing the reality. IF you are gaining something by publishing Naren’s firm well then ….

    Reply
  2. Anonymous

    Then why no do away with BCI exam. It makes no sense to qualify the exam after passing out LLB. BCI exam was re-introduced with an intention to improve quality of lawyers. If advocates with science degree are confident that they can draft and prosecute the patents, then where is the difficulty to qualify patent agent exam. Am I missing out something here????

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  3. Dr V Shankar

    Doing away with technical qualification for patent agents or attorneys to practice before the patent office is as absurd as allowing a non-technical person to examine and grant patents. One only has to look at other jurisdictions to understand that there needs to be this requirement of technical degree or qualification for entry into becoming a patent agent/practitioner. The onus of assessing technical competence of a patent practitioner to adequately understand and provide patent filing and prosecution services must lie with the client. The client should know that expecting a mechanical engineer to draft a pharma patent is futile. However, the caveat is that technical competence, apart from basic knowledge of science or engineering principles, can be gained by experience to some extent. Another confounding factor is that many inventions may be interdisciplinary, requiring knowledge of more then one engineering discipline or science.

    Regarding Mr Feroz Ali’s question, the counter question I would like to ask is how is the public assured of competency of a lawyer in a specified legal field, say tax law or labour law? People usually go by reputation and personal experience of others. Why shouldn’t patent agents be allowed the same consideration?

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  4. Anonymous

    Advocate must be allowed to practice a Patent Agent, in case of higher technical or technology reference are there to understand and explain, there is a provision of scientific advisor in Patent Law to help IPO. IPO should permit advocate to use services of scientific advisors.

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  5. Anonymous

    Don’t worry , we might soon have a Senior Controller from the Patent Office as the Technical Member of the IPAB, who will give his expert technical opinion from chemical/pharma cases to spaceships to complex software inventions. God help us when novel biotech inventions will be required to be turned into an ‘apparatus claim’!!

    You might want to include the above aspect in your piece!

    Reply
  6. Dkumar

    Patent is Techno-Legal document, which mean although it is drafted in technical language however such drafting ought to be legally assessed, evaluated, reviewed, vetted and finalised to do away with official objections and/or later on any such opposition(s) or litigation proceedings/claim(s) disputes. Am of sure view that practically no patent were filed before vetting from an Advocate specialized in the field, who could be from non-technical or non-engineering background. While said provision of dis-entitling Advocate ( Advocate can not appear for Patent Agent Exam and earlier provision were omitted/deleted by an Act of 2005) was introduced, am of view that it is sheer unconstitutional, absurd, discriminatory particularly what will happen if invention relates to non-scientific or non-technical or software entitle for patent as it happen in US and other parts of world. Will Indian Patent office refuse on reciprocal basis Foreign Attorney where no such qualification prescribed or exist? It is absurd and amused to expect science or engineering holder to draft specification particularly claims in its entirety. The whole section should be tested, interpreted, debated and questioned from substantive law point of view including definition of Patent, invention and Inventions which are not-patentable, which otherwise mean all rest of those inventions which are not listed in such section 3 & 4 are and can be subject matter of application for patent. Hence, where does role of Scientific or technical or engineering qualification matters come in to picture vis-a-vis Advocate as it is widely acknowledged undisputedly that patent is Techno-Legal. Further, interestingly, no where in the whole Act, the term ‘Patent Attorney’ is defined but still Patent agent they misrepresent themselves as Patent Attorney. If one endevour to understand term Patent Attorney, then first it needs to be dissected in to two expression i.e. ‘Patent’ and ‘Attorney’. As per Section 2(m) Definition ” A patent means a patent for any invention granted under this Act ” and general meaning of ‘Attorney’ means ‘ANY person lawfully appointed and authorised to act on behalf of the person who such appoints, since no specific definition of term Attorney in Patent Act nor any law in India. Thus, any person who claims to be inventor or assignee of invention or legal representative of such inventor can appoint ANY person, who may entitled to be NAMED himself or herself as Patent Attorney. Even otherwise ANY person who represent the estate of deceased inventors in law can apply and prosecute Patent application irrespective of his qualification as Legal Representative. Although Section 132 provides for such however, same is contradictory vis-vis Legal representative under section 2(1) (k) read with Section 6 (c) and deficient of provision as to appoint ANY person during his lifetime. Further Section 132 (3) seems to be illogically worded to Advocate to appear in any hearing but silent/ambiguous about Application. Surprisingly, one will not find any firm in whole of India of Patent Agents alone only without an Advocate. Petitioners may collect data in support. Further, even if they come across any Agent who also being an Advocate, then same is prohibited under Advocates Act. Similarly, An advocate need not be or can not be an Agent as list of Agents publicized, Which publication of specialization is prohibited for Advocates. When an Patent Agent can’t be allowed to argue in Court of Law, and an Advocate irrespective of his scientific, technical or engineering qualification background can argue the same matter at such stage, it is just futile & illogical of having such provision under section 126. Hence, said provision of section 126 is not only un-constitutional ( Article 14 Right to Equality, Discriminatory under Article 15) but also anti-competitive ( under Competition Act), intra-vires /contradictory of Patent Act itself, further, one may argue if for Patent Agent scientific,technical or engineering background is pre-requirement then why Trademark Agent exam is open for all, which by same logic though require commercial back ground, both the specie of IP are under one and single Controller General.

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  7. Dkumar

    Some Act’s provisions are influenced by their respective pre-notions draftsman in Law Commission. e,g, FERA Act,1971 turns out to be draconian law, encouraged more smuggling by Haji Mastan, Dawwod drafted by one such pro-notionalist. Similarly, IPC 1860 has tested time and water for more than 150 year in Indian Judicial history (have high regard for Lord Macaulay or who ever assisted him in suggesting & drafting IPC) , however few feminist influenced background notionalist incorporated amendment by way of Section 498a, misuse of which provision are rampant and widely known. Same can be attributed of section 126 of Patent Act.

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  8. Anonymous

    Looking at couple of comments above my belief is more strengthened why Patent Agent examination is a must. Patent drafting and prosecution is not any other drafting of pleadings and filings generally done before the court. I hope people understands this distinction.

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  9. Sumit Tiwari

    It cannot be said that a degree holder in science, engineering or technology, who has passed the examination conducted by the Respondents in the Act and drafting would be a better-qualified person to function as a patent agent, then an advocate, who passed various law papers in his examinations, including drafting and procedural laws. Advocates with a science degree can enter their names as patent agents in the register of patent agents but those without science degree have to sit in the qualifying examination conducted by the Patent Office to become a patent agent.

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  10. anuradha maheshwari

    I am of the strong view that s 126 of the Patent Act needs an immediate revisit and must be amended to allow advocates to practise as Patent Agents. I have been protesting against this absurd inclusion in our laws requiring all wanting to practise patent law to qualify as patent agents, which has been further narrowed to down to include only those ‘science’ graduates who have passed the qualifying exams, which again are not held regularly. Yet and absurdly, senior counsels who have little technical background are expected to argue and deliver on grave issues of patent infringement with absolute understanding of the finer nuances of the technology, be that in Pharma or space science. The Bench too, is often required to hear patent petitions, which maybe for the first time and without perhaps any prior technical background on the subject. Yet we expect good and sound judgements and which by the way have not been found wanting! Worse, advocates before the 2002 amendment with no ‘scientific’ qualifications enrolled as patent agents, drafted patent documents and continue to ably practice in the field. I find allowing those advocates to continue to practice as patent agents to be discriminatory and clearly not based on any reasonable classification as required by Art 14. The reasonableness was justified on the mere ground that one cannot revoke a right that was granted.

    And today, we have young and extremely capable law graduates who have completed their 5 year degree and who will never be able to practice as patent lawyers because they chose law over science.

    My limited take is that science and technology is not only the realm of qualified technical graduates/scientists. Patent filing is a procedure after all so let the onus for writing good patents be on the advocate who can deliver and the client who has to make choices on who can deliver. Besides the patent system allows for the process of rectifications and corrections so threats of clients losing out on poor drafts or advise are rare . So we really need to amend the law to make it more inclusive at least of the advocates in india.

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  11. -- bPk

    Let’s just have qualifying exams and let all, irrespective of science or law degrees pass the exam as a must.

    Let the best women and men become Patent Agent and bring order to the chaos!

    Reply
    1. Freq. Anon.

      Please don’t talk sense here, my dear friend. Some of the above commentors will be very annoyed with your suggestion. As you may have noted, MOST of the commentors above do NOT want to even talk of this route. They want the benefit of an earlier system (which had many flaws) to be continued for them.

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  12. Dr V Shankar

    Many patent offices stipulate the requirement of a science or engineering degree as prerequisite. Others, like the EPO, may allow experience in the area of expertise to count toward the science or engineering competence. One way forward in the direction of making “experience” or acquired knowledge count toward recognized competency is to gain such recognition. EP and Australia have apprenticeship based system for patent agents that facilitates a person without formal qualification but with experience to practice patent law in a field of technology.

    In India it would be necessary to form an organization of patent attorneys and patent agents who have to get together and present themselves to the Indian Patent Office, on the lines of IPTA in the UK or elsewhere. The demand for qualified people is set to increase enormously. If we do this soon, there will be a lot of opportunity.

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  13. Anon

    All mature jurisdictions of the world require science background professionals to work/draft their inventions. How would an advocate draft the invention? or would they outsource that to someone who understands science? So, the lawyer would take the brief later and argue before the Controller. And pray why? When they would still need a scientific person to brief them on the technical aspects. Patents are commercial stuff and people invest a lot to get the best protection for their hard work. In India, there is no way you can sue a lawyer who messed up a case. But there are umpteen cases (to the frustration of the applicants), where the lawyer has messed it up. We should raise the bar for patent agent rather than dilute it.

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  14. Dr.Vijay Kumar Himanshu

    Dear viewer and friends
    Much before Madras High Court has given Judgment I have protested how person with law background can be excluded from being Patent Agent or has to take exam for patent agent. First I may clarify that in this country it has been made to understand that IPR is not the sole preserve of law Person and any TOM,Dick and Harry from field of science, economics etc. can become expert .In majority of the policy decision they are in forefront and people from person from Law are far and few and those who are sitting at decision making process do not assert because they are expert on traditional field. I firmly believe person of science or economics background can provide assistance not the prime mover of IPR law

    Reply

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