Is it necessary to be a
Patent Agent?
Anil Kulkarni, Bindu
Sharma
The role of a patent agent has been a source of curiosity
since enactment of the Patents Act 1970 (the Act). The provisions relating the
patent agents have been comprehensively amended in 2002 amendment enforced from
20th May 2003. One of the
most commonly asked questions is whether is it important to be patent agent
especially when there is huge scope for people who are expert in patent
searches, who may or may not be patent agent. In this article, lets analysis,
who can be a patent agent, what are advantages of the same and how are the job
prospects better if one is a patent agent?
Patent specification required to filed for obtaining a patent
is invariable termed as a techno-legal document as it is a combination of
technical description and the claim, which are purely legal in nature. The patent
specification discloses technical details of the invention and defines scope of
the invention by restricting legal rights to the claims. Since by nature, a
patent is a technical document, in order to draft patent specifications, one
needs excellent writing skills and expertise as well we deep understanding of
the subject matter and knowledge about the patent law. For a person to work in
the area of patent law, he has to have cocktail of all these attributes.
Who is a patent agent?
Technically/legally speaking the patent agent is a person so
registered under the Patent Act. However, in practice the Patent Agent is a
person, which is the link between the inventor and the patent authorities, such
as, the Controller, who facilitates the work of grant of patent by assisting
the inventor, the Controller or his subordinate officials. He has exclusive
right to do certain acts in the process for obtaining a patent and has
exclusive right to practice before the Controller. The Patent Agent is also
allowed to appear before patent office of other PCT member country in respect
of national phase of the corresponding application.
The patent agent should have thorough knowledge of the Patent
Act and rules, Patent Co-operation Treaty provision and prosecution therein and
also comparative knowledge of procedures in other important countries such as
US, EP, Japan and China.
Who can become a patent
agent?
A person for being eligible to register himself in the
register of the Patent Agents under the Act must have qualification prescribed
under section 126. These qualifications are as follows:
ü
The person shall be a Citizen of
India;
ü
He must have completed 21 years of
age;
ü
He shall possess a Degree in Science,
engineering or technology from recognized university or other equivalent qualification
as prescribed by the Government; and
ü
Should have passed the qualifying
examination conducted by the Patent Office or Should have worked as examiner or
discharged functions of Controller for not less than ten years.
Additionally,
he also must have paid such fee as prescribed. The Act does not define the
degree in science, technology or engineering, hence, these terms are open to
interpretation. The equivalence of qualification should be as per notification
made by the Government in this regard. For example there are graduations
awarded by Universities in certain subjects like Mathematics, Statistics,
Geography in both Science and Arts. The Diploma Holders in engineering or Bachelors’
degree in engineering from a foreign university, who are equally knowledgeable
as graduates are not allowed to appear. Their case needs to be considered
sympathetically by the Government. Prior to 2002 amendment, there was no such
restriction. The restriction though well intended must also take into
consideration of various diploma holders in science, technology and engineering
who may be equally learned in science, technology and engineering but might not
get opportunity to be a bachelor for various socio-economic reasons.
“However, one must understand that
being a patent agent is not everything. There are several proceedings under the
Act which take place in the courts and being an Advocate is always of great
advantage. Even if one does not wish to practice in courts, in addition to
patent law, sound knowledge of law of interpretation, contracts, Indian
Constitution is of great value to attain better hold on the subject”.
Those
Agents who are already registered before the amendment shall subject to payment
of renewal fees continue to be registered so irrespective of their
qualifications. Before 2002 amendment came into force any Advocate under the
Advocate’s Act could register himself as a patent agent, without appearing for
examination, however after the amendment came in to force on 20th
May 2003, even an Advocate also needs to be a science, and engineering or
technology graduate and is required to appear for the patent agent examination conducted
by the Patent Office.
What are the advantages
of becoming patent agent?
There are many advantages of being a patent agent, more so
after the 2002 amendment to the Act. Prior to 2002 amendment, Section 132(a),
nothing in the chapter XXI relating Patent Agents prohibited any person not
being a Patent Agent who was duly authorised by the applicant from drafting any
specification or appearing before the Controller and an Advocate from taking
part in any proceeding under the Act except drafting specification. The
situation has dramatically changed after the 2002 amendment. Now the Patent
Agents only have exclusive right to practice before the Controller as spelt out
in Section 129(2). Except the applicant himself, even advocate cannot appear in
general but can appear on behalf of the party in proceeding under the Act only
if the party is also taking part in the said proceedings. Thus the role of the
patent agent in the patent prosecution has been significantly enhanced by the
said amendment in 2002. Only patent agents can prepare all documents, transact
all business and discharge such other function as prescribed under the Act and
the role of other authorised persons and advocates has been considerably
limited.
A registered patent agent also gets added weightage and
advantage over others in securing jobs if he/she does not want to practice
independently. The Advocate firms will employ them as they only can appear
before the controller for prosecuting the patent applications filed by the
firm. The registered patent can also practice before the IPAB even if he is not
an Advocate. It is interesting to note that a registered patent agent can also
act as an agent for design registration under the Designs Act 2000.
However, one must understand that being a patent agent is not
everything. There are several proceeding under the Act which take place in the
courts and being an Advocate is always of great advantage. Even if one does not
wish to practice in courts, in addition to patent law, sound knowledge of law
of interpretation, contracts, Indian Constitution is of great value to attain
better hold on the subject.
Patent Agent
Examination
The qualifying patent agent examination is conducted by the
office of the Controller. The particulars of the examination, the curriculum
and qualifying marks are given in Rule 110. Upon passing the examination, the
successful candidates are required to follow a registration process as provided
in chapter XV of Patent Rules.
The examination consists of two written exams and viva. Paper
1 relates to Patent Act and Rules, Paper II relates to drafting and
interpretation of patent specifications and other documents. Each written paper
carries maximum 100 marks. The Viva carries 50 marks.
The Rule 110 (3) regarding qualifying marks has been amended
after the decision of the Delhi High Court in Anvita Singh V/s Union of India
and Others in 2012 and Renu Bala case. The amended rule 110(3) reads as follows:
110(3) A candidate shall be required to secure a minimum of
fifty marks in paper I and paper II and shall be declared to have passed the
examination only if he obtains an aggregate of sixty percent of total marks.
The amended rule has practically reduced the viva redundant
as one need to only have compulsory appearance in the viva. If a candidate
secures 150 marks in both the written papers and only appears for viva.
The detailed nature of the paper I and paper II is as follows:
Paper 1: Total 100 Marks
It is divided
into part A1, A2 and B.
Part A1 (30 Marks)
ü
15 multiple choice questions Each
question carries two marks;
ü
Candidate to answer all the questions
in this section; and
ü
To chose the right answers from
maximum six choices and maximum two correct choices.
Part A2 (10 marks)
ü
True or false, 10 questions one mark
each.
Part B (60 Marks)
ü
8 Subjective type questions.
Candidate to answer any 6 questions.
Paper 2: Total 100 Marks
It is divided
into part A, B1 and B2.
Part A (40 Marks)
ü
Consist of 6 questions of 10 marks each and the candidate to attempt any 4
questions. The questions will relate to drafting and interpretation of patent
specifications and other documents
Part B (60 marks)
It consist of parts B1 and B2.
ü
Part B1 is compulsory and will
consist of 1 question relating to drafting of claims and abstract from a given
description of an invention.
ü
Part B2 consists of 2 questions and
the candidates will be required to attempt any 1 question. Out of the two
questions, one question will relate to general engineering and the other
question will relate to field of chemistry/life sciences.
The prospecting patent agents may
refer to old papers available on the patent office website to understand nature
of questions asked in the examination.
Job opportunities for a
patent agent
A patent agent, being an expert in patent law as well as
technology shall have good opportunities not only in IP department of any
R&D oriented firm but also the law firm. Areas of work could be patent
specification drafting, filing, prosecution and performing patent searches of
various kinds. However, clearing the patent agent exam and registration as a
patent agent alone is no more than a certification. In the super specialised
area like patents, one need to work really hard and acquire skills and
expertise for long term and sustainable career growth. Career of a patent agent
can always extend to more specialised areas, such as, patent valuation,
technology commercialisation, IP management etc.
