Importance of IP Policy for Indian IT industry

Intellectual property (IP) is a term referring to creation of human mind in the form of a number of distinct types of expressions for which a set of rights are recognized under the corresponding regimes of law. We know very well that Indian software/IT industry is primarily based on services, though transition from service to product is increasing nowadays. However, in either case, innovation plays vital role in sustainable growth of the organization.

In case of Indian IT industry, whether it is into services or products or both, IP typically means patent, copyright, design, confidential information, trade secret, brand name and domain name etc., wherein handling confidential information or trade-secret needs lots of care for the reason that it is not registered and moreover, we don’t have adequate laws to protect them. Though there are several IP related issues, however, drawing line between proprietary IP and client’s IP may become a challenge at times, especially when the company is bound by stringent agreements.

IP policy in simple words, is a document that defines IP as per company’s business; provides guidelines for creation, protection, exploitation, disclosure, ownership of IP; sensitizes employees about aspects of IP and at the same time guides them regarding the precautions that need to be taken to safeguard company’s IP as well as prevent or minimize IP infringement risk. IP policy also provides guidelines and procedures for disclosure & non-disclosure of intellectual property whether protectable or not; and to develop and enhance environment of innovation and generate creative & novel IP compatible with business goals of the company. 

Coverage of policy

Typically an IP policy is applicable to the employees of the company; however, if company works with outside vendors, Freelancers or consultants etc, coverage of policy may be extended to them as well as they have be involved in the process of creating IP for which ownership and confidentiality issues need to be addressed clearly in the policy.

Meaning of IP

Defining meaning of IP, depending upon core area of business is essential. IP may include Patent, Copyright, Trademark & Domain name, Design, Confidential information or trade-secret that might be proprietary in nature or created by employees during course of employment or by the consultants as a part of contractual relationship with the company. The kind of IP that shall be included in the definition purely depends upon business area and strategies of the company.

Ownership

Since IP is created by the employees during the course of employment, company would prefer having ownership of such IP with itself. However, in case of patent, the application for a patent shall be filed by true & first inventor, its assignee or legal representative. Therefore, it is extremely important to list out the inventors whose names are going to appear on the patent application, right in the beginning of the project to avoid arising of  disputes later on. However, inventor may further assign rights to the company; so that ownership of the patent is with the company.

 Similarly in case of copyright, applicant is the company and the employee who creates the work is called as author). When company decides to file application for copyright registration, the author (s) is required to give NOC (No Objection Certificate) to the Copyright Registry stating that he/she has created the work during course of employment and he/she has no objections if the work gets registered in the name of the company. However, proprietary IP, confidential information is exclusive property of the company unless company specifically authorises employee to disclose, use or own it.

 

Security and confidentiality

Even though most of the IT/software firms have implemented multiple security measures to prevent the loss, misuse and alteration of any confidential information under its control, employees must strictly follow the security measures, which are extremely crucial to secure technical and business information of the company. First of all identification of trade-secrets is very important and it can be best protected by segregating it into low, moderate and high confidentiality type and further by limiting access to it. Employment and non -disclosure or confidentiality agreement may further be used as tools to safeguard confidential information of the company. Labelling documents as “Confidential” is an appropriate way of communicating information as Confidential and serves as an express notice to indicate nature of the document.

Sensitization of the employees on confidential information and consequences of misappropriating is necessary from time to time.  Whom to disclose, when to disclose, how to disclose such information shall be made clear in the policy. Liability of the employee during course of employment or even after termination or resignation must be dealt with c

Record of work

Systematic & periodicrecord of work, research, ideas is extremely critical to serve as an evidence to establish ownership (copyright) or inventorship (patent or design) and date on which intellectual property was created or developed by employee. It could also be helpful to find out infringement of intellectual property, if performed by an employee. Record book shall not be permitted to be taken outside the premises of the company and crucial data or descriptions should be signed and dated by the creator, supervisor, or coordinator of the project.

Liability of employee

Before expecting employees follow the IP policy, they shall be explained essential clauses of NDA and employment agreement that they sign at the time of joining. This will sensitise them about their duties as well as liabilities towards the company. At the time of termination or resignation, exit interview must be conducted and copy of agreements signed at the time of joining must be handed over to the employee to remind him his responsibilities as well as liabilities. Getting confidential or any sensitive information from prior employer and incorporating such information in the work may land up in a very undesirable condition and any such practice must be strictly discouraged by the company.

Idea Disclosure

As far as patents are concerned, the process starts with conception and disclosure of idea. Here again, the activities such as whom to reveal the idea, how to take idea forward, effort needed to convert idea to executable invention, defining inventors, royalty percentage or reward upon commercialization of the idea, are few of the critical issues that must be addressed in the IP Policy. However, maintaining confidentiality of idea, documentation, assessment of novelty and business relevance of idea and discussion with patent attorney, filing for patent in India or foreign country requires documentation of the process so that there is coordination between date of filing a patent application and disclosure in the form of product launch. Moreover, in the process of patenting, there are several critical timelines and fee that need to marked and updated from time to time.

Copyright Registration: Is it required?

-by Anita Kalia

MSc, LLB, PGDIPR (NLSIU)

IP Attorney, Origiin IP Solutions LLP

The status of copyright registered software is much better than that of an unregistered one...What could be the consequences and risk if you developed software application and launched it in the market without any Intellectual Property protection. If the software is free or paid one, and another company claims to be the owner of such software, what will be the course of action? In such case you will be asked to produce the evidence to prove the originality and ownership or valid title of the work, in the absence of which it becomes difficult to safeguard the interests of your own work. However, if you have registered the work with the registrar of copyrights, the certificate of registration is a valid proof of ownership that can be produced as evidence. In another situation, you want to raise capital by taking loan for the business against the software developed by you, the bank may refuse to grant a loan without having any intellectual property protection on the software. 

Why copyright, not patent? 

Now the question arises as to why to go for copyright protection when we have a strong patent regime in India. Patents generally protect inventions which are new/novel, inventive and have an industrial application. Moreover, the subject matter should not fall under any of the categories defined under Section 3 [Inventions not patentable] and 4 [Inventions relating to atomic energy] of the Indian Patents Act 1970. Section 3(k) of Indian Patents Act, 1970 clearly states that “computer program per se is not patentable”. This, however, does not include those software programs that control the hardware in some or the other form such as embedded system software and more. However, pure software applications, such as a banking software, railways software system, software for general everyday use, web browsers, word processors, and spreadsheet, specialized software such as computer aided design software, accountancy software and others, come within the purview of non-patentable inventions under Indian Patent Law. For such software application, the only recourse for intellectual property protection is under copyright law, which does not protect the basic idea or concept behind the software program, but only the form and the manner in which it is expressed. 

The basic difference between patents and copyright is that patents protect the Idea or the concept behind an invention whereas a copyright protects the expression of that Idea. There is another good reason to go for copyright rather than a patent is that generally the software patent applications should be limited to inventions having significant present and future commercial value. If the commercial life of software is only a few years, patent protection may not make much sense because it will take at least three to four years for the software patent to be granted and that too is not sure thing to happen due to strict patent laws in India. The period for patent registration is a long one in the light of technology boom where a latest technology becomes obsolete in few months. 

Extent of copyright protection

Since copyright protects the expression of Idea, now the meaning of the term “expression” has to be understood well before any further discussion. We all know that one idea can be expressed in a number of different ways by different people. A person who expresses an idea can first claim copyright individually on such expression of the idea. A person who writes such a software program first, gets a copyright only in the manner it is written and not the methods and algorithms behind it. Copyright protection subsists in both source code and object code that are protected against literal copying. However, look and feel of the software gets protection as artistic work. 

Registration of the copyright

Copyright is a form of intellectual property protection granted under Indian Copyright Act 1956, to the creators of original works of authorship such as literary works, dramatic, musical and artistic works, cinematographic films and sound recordings. 

Registration of the copyright creates a public record of the claim of copyright ownership with the statutory authorities that index the records on the copyright register which contains work’s title and the author’s name. The copyright register is accessible to anyone and helps people find out the owners of copyright whom they can get licenses from to use a copyright work and helps to prevent fraudulent transfers of copyright ownership. 

The purpose of copyright is to promote learning and progress in intellectual pursuits by encouraging authors to make their works available to the public. Since the copyright protection for abstract ideas would undermine that goal by permitting one author to have a monopoly on the idea itself, the idea is left in the public domain while leaving various expressions to the exclusive exploitation by the authors. 

Copyright Protection worldwide

It is interesting to note that even though copyrights operate territorially, it is recognized virtually worldwide under the Berne Convention and is applicable uniformly to its 184 member states that include countries such as India, U.S., UK, China, Japan and more. This basically means that a copyright registration in one of the member states will have the same effect, in terms of copyright protection, in the rest of the member states from the date of its registration. Conventions and bilateral agreements address the availability of protection for foreign authors and grant protection to foreign authors under the principles of national treatment or formal reciprocity. 

Is registration really needed?

The most interesting fact about copyright is that the copyright protection arises automatically and is inherent when an author fixes an original work on any tangible medium of expression. Under the Indian Copyright Act, the owner of a copyright may register his or her copyright claim with the Copyright Office, but no formal registration is required to create the rights of copyright. Registration is, however, a prerequisite to initiating an action for copyright infringement as it establishes prima facie proof of rights. As per the Indian Copyright Act, the Registers of Copyrights shall be prima facie evidence of the particulars entered therein and documents purporting to be copies of any entries therein, or extracts there from certified by the Registrar of Copyrights and sealed with the seal of the Copyright Office shall be admissible in evidence in all courts without proof or production of the original. Copyright registration is compulsory in case the owner wants to raise a loan from a bank based upon the copyright work. In order to qualify for copyright registration, the work should be original, without any strict prerequisite to novelty or uniqueness as is required under Indian Patent Law. To be original, a work should be created independently rather than being copied from someone else’s work. In other words, the work should be the personal expression of the author. This factor must be distinguished from the concept of novelty, which usually is not required. Independent development is valid defense to a claim of copyright infringement. Copyright protection is conferred automatically the moment the software code is embodied in some medium like ROM, Magnetic Tape, diskette, paper or any other tangible medium. One point worth noting here is that even though the copyright protection arises automatically upon it fixation on a tangible medium, the real problem arises when someone copies an unregistered work. In such a case the protection is no longer automatic and even being an owner, one can not file lawsuit without registering the work. One can not stop infringement without copyright registration. Apart from that there is one more reason to file for copyright registration as soon as possible, is that one can save a decent amount of money that may be wasted in a lawsuit for copyright infringement which includes lawyer fees and litigation costs. 

Even if not registered, a copyright notice can be affixed on the work and generally consists of the following four elements: 

* The symbol © (the letter C in a circle) or the word "Copyright"

* The year of first publication of the work; and

* The name of the owner of copyright.

* “All rights reserved” at the end. 

Conclusion

A prompt copyright registration of software is necessary to prevent unauthorized claiming and copying by others. It also greatly benefits in extracting maximum benefits by way of assigning, licensing and raising capital. It is also true that not all the works are worth registering but in most situations, a work is valuable enough to be registered.

PATENTALK:          Dr. Swaranjit Singh Cameotra Deputy Director in Institute of Microbial Technology, Chandigarh

On deposition of micro organisms under Budapest Treaty               

Please tell us something about Budapest treaty. What is purpose of this treaty? 

The Budapest Treaty on the international recognition of the deposit of microorganisms for the purpose of patent procedure. It is recognizes “International Depositary Authorities (IDA) for microorganism, sets out the minimum standards for such collecting authorities, and also sets out the guidelines for the deposit of microorganisms. It started on August 9, 1980. The treaty was amended on September 26, 1980. Budapest treaty is administered by the World Intellectual Property Organization (WIPO). The purpose of this treaty is to deposit the microorganism in order to satisfy the terms required for the patenting the modified microbes/processes/products. Deposit of the biological material is needed only at one recognized institution, and this deposit is acceptable and recognized in all the countries that follow the Budapest Treaty.

As micro organisms are living organisms, are they patentable in India? 

The answer is no, in their native or original form. However, if the microbe is genetically modified it is ready to be accepted as a Patent deposit, it may be patentable. Even though one has to patent a microbial process or a product, the respective microbe has to be deposited in a Patent depository. 

What is the procedure of deposition of micro organism?

The procedure for the deposition of cultures can be made in four categories;

1. General Deposits: There is no fee for deposit of cultures in the general category. The details of the culture need to fill in a culture data sheet.

2. Safe Deposits: These cultures are handled with confidentiality and are kept under security. Only the depositor has access to these cultures. There is an annual fee for such a deposit. An agreement needs to be signed between the depositor and the Collection.

3. Patent Deposits: These cultures are not listed in the catalogue / database. Since a depositor needs to declare accession number in the patent application, the information about the culture is also in public domain. These cultures are handled with confidentiality and kept under security and are given to the depositors or authorized persons as per patent regulations. There is one time fee for such a deposit.

4. The Patent Deposits under the Budapest Treaty (IDA): One can deposit cultures under the Budapest Treaty (IDA) for filing international patents or for filing patents in India. 

Is the applicant required to deposit samples in hand or there are other modes of delivery? 

After getting the go ahead signal from the Collection, the samples can be deposited by hand or through Registered Post/Courier.

How much time does it take to get accession number after microbial sample is submitted?

About 4-6 weeks.

What are the security requirements of a Patent depository?

 As the strains are of very high value, care must be taken that the strains are not misused. Only authorized people can enter the Patent depository by punch cards/thumb impressions. The location is under strict electronic surveillance with CCTV etc.

Patentability of Micro-organisms

Dr. Swaranjit Singh Cameotra Deputy Director in Institute of Microbial Technology, Chandigarh Email: ssc@imtech.res.in

Bindu Sharma Founder and CEO Origiin IP Solutions LLP, Bangalore Email: bindu@origiin.com

 A patent is a form of intellectual property, consisting of a set of exclusive rights granted by a Government to an inventor or its assignee for a limited period of time in exchange for the public disclosure of an invention. In order to get patent rights, the invention shall fulfil three fundamental statutory conditions of patentability, such as, novelty, inventiveness and industrially usefulness. Often, subject matter of a patent, that is claimed is either a product or a process to prepare a product or both. However, more precisely, as per Indian Patents Act, 1970, the invention means a new product or process involving an inventive step and capable of industrial application. Further, the inventive step means a feature of an invention that involves technical advance as compared to the existing knowledge or having economic significance or both and that makes the invention non-obvious to a person skilled in the art.

The micro organisms as a subject matter of a patent have always been fascinating, primarily for their being a living form. Conventionally a micro-organism is considered as an organism that is microscopic or too small to be seen by the naked human eye though there are various algae and fungi that are visible by naked eye. Micro-organisms include bacteria, fungi, virus, protists and other prokaryotes as well as some microscopic plants (phytoplankton) and animals (zooplankton).

In order to understand patentability of micro organism, it is important to know that Article 27(3) (b) of TRIPS Agreement, that allows member states to exclude from patentability “plants and animals, other than micro-organisms, and essentially biological processes for the production of plants or animals other than non-biological and microbiological processes.” This clearly indicates that TRIPS makes it obligatory for all its member states to extend patents for micro-organisms, non-biological, and microbiological processes. However, the plant and animals have clearly been indicated to be not patentable.

As far as Indian patent laws are concerned, in order to be compliant with TRIPS agreement, the third amendment to the Patents Act, 1970 was introduced through the Patents (Amendment) Ordinance, 2004 w.e.f. 1st January, 2005 that extended product patents to all fields of technology including food, drugs, chemicals and micro organisms provided such inventions fulfil statutory conditions of patentability. It is worth noting here that micro organism that exists in nature is products of nature and mere identification of micro organisms cannot amount to invention but a discovery which is not patentable. Therefore, a naturally occurring micro organism fails to fulfil the critical conditions of patentability, i.e., novelty and inventive step.

What differentiates an invention from a discovery is human intervention, thereby, the most critical issue regarding patentability of micro organisms is assessment of human intervention that draws line between discovery and invention. However, Genetically Modified Micro organisms (GEMs), creation of which involves human effort, resulting in enhancement of its known efficacies compared to state of the art, are patentable. Section 3 j of Indian patent act 1970 states that micro organisms are patentable but it doesn’t categorically mention that only GEMs are patentable. However, relating patentability of micro organism to the statutory definition of an invention depicts that micro organism shall be a new product that involves an inventive step and is capable of industrial application.

The most discussed and landmark case on micro organism is Diamond vs Chakrabarty. A genetic engineer Ananda Mohan Chakrabarty, working for General Electric, developed a bacterium (derived from the Pseudomonas genus) that is capable of breaking down crude oil and hence was used in treating oil spills. Chakrabarty filed for a patent for the bacterium in the United States.. There were three main claims in the patent specification that related to inoculums, bacterium itself and the process to prepare the genetically modied bacterium. Examiner had no problems granting rights over claims related to inoculums and the process but as the law dictated that living things were not patentable, rights were refused for the bacterium as a product. The Board of Patent Appeals and Interferences agreed with the original decision of patent examiner. However, the United States Court of Customs and Patent Appeals overturned the case in Chakrabarty's favor, stating that "the fact that micro organisms are alive is without legal significance for purposes of the patent law." Sidney A. Diamond, Commissioner of Patents and Trademarks, appealed to the Supreme Court. The Supreme Court case was argued on March 17, 1980 and decided on June 16, 1980.

Drawing line between discovery and invention is extremely critical to assess patentability in case of micro organisms. Extent of human intervention is one of the most critical factors to determine patentability. In Dimminaco A.G v. Controller of Patents & Designs, the issue was the patenting of the process for preparation of infectious bursitis vaccine, which was invented for protecting poultry against infectious bursitis. The Controller held that the process of separation of the vaccine which has living entity cannot be considered a manufacture and hence not patentable. He also held that since the vaccine contains living organism it cannot be patented. The court held that the matter involved is of a new process of preparation of vaccine under specific scientific conditions and the said vaccine is useful for protecting poultry against contagious bursitis infection and there is no statuary bar to accept a manner of manufacture as a patentable even if the end products contain living organism.

Apart from basic criteria of patentability, i.e., novelty, inventiveness and industrial use, sufficiency of disclosure of the invention is extremely important and the subject-matter of the invention shall be described in a manner sufficiently clear and complete to be carried out by the person skilled in the art. In case of an invention, claiming micro organism as a product, completely describing the invention in the description to enable a person skilled in the art to carry it out is usually impossible. This is why, in the particular case of inventions involving micro-organisms, where such micro organism is not available in public, a deposition of such micro organism material has been made necessary in the institute recognised by Budapest Treaty.

In India, an essential requirement for filing an application for patent wherein the invention is based on a microorganism, deposition of microbial sample is necessary in the International Depository Authorities (Institute of Microbial Technology, Chandigarh) formed under Article-7 of the Budapest Treaty and accessibility of that micro-organism from the depositories. As per section 10(4) (d) (ii) of the Indian Patent Act, 1970, the micro-organism if not being described fully and is not available to public, it to be deposited before the IDA under the Budapest Treaty before filing of application in India. All the characteristics of the micro-organisms and details of depositary institutions along with accession number shall be mentioned in specification for correctly identifying the same.

Due to short life cycle, rapid growth, easy to culture, micro organisms have been used widely in industry today for producing high value compounds such as enzymes, hormones, polymers, organic acids etc. Various industries like brewery, dairy products are primarily based on various micro organisms. However, microbes are also well known for their vital role in degradation of toxic compounds by transforming them into less toxic forms. It is interesting to note that more than half of the world’s oxygen is produced by the activity of the micro-organisms. Many algae and cyanobacterial strains produce and release oxygen in the atmosphere by means of oxygenic photosynthesis.

Thus, there is a changing trend in the research on the microbial world around the globe and many more new ways to use the power of the single celled micro-organisms will come up in different fields like medicine, drugs, high value compounds production and in removal of toxic pollutants from the environment. In India, we have an IDA in IMTECH, Chandigarh and good progress is made in the conservation of microbial diversity. The IDA also has a Patent Depository where the facility can be availed as per the norms. In India there are two ‘Hotspots’ of Biodiversity, the Western Ghats and the seven states in the Indo-Burma Region. Thus, it is all the more important to have a well defined system for the conservation of the important biodiversity. In Pune a culture collection and an IDA (MCC: Microbial Culture Collection) has been set up so that the rich and new microbial diversity that is isolated is properly maintained. The strains are identified for supply to users in academic institutes and industries. The MCC was recognized by the World Intellectual Property Organization (WIPO), Geneva, Switzerland as an International Depository Authority (IDA) on April, 2011. Setting up of two IDAs in India demonstrates that conservation of microbial diversity isolated from different environmental niches and its detailed study for products and processes is a very important activity.

Further reading:

1 Indian Patent Act 1970

2 Manual of Indian Patent Office, 2008

3 Preservation of micro-organisms as deposits in Patent Applications. Swaranjit Singh Cameotra. BBRC 353(4): 849-850, 2007.

4  Can Microbes be patented. Swaranjit Singh Cameotra. BBRC, Online November 2012.

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 20^th 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 20^th 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.

Know the power of the State-of-the-Art

In this technological progressive era, huge amount of data gets generated and added in the prior art every day. Where on one hand keeping pace with technical progress in present times is a challenge and on the other hand, innovation has to happen to ensure sustainable growth. Till the time, you foresee the innovation in a given area of technology, it is impossible to create significantly creative and valuable products. Another issue in technologies such as electronics or software is that innovation cycle is too short, meaning that in no time after you market or commercialise the product, you may see next versions of the product floating around. Considering high cost of R&D and resources, output often is not that meaningful and sustainable.

In most of the companies, before designing R&D in a given area of technology, one important parameter is often missed out, i.e. assessment of “state of the art”. Even though by means of product surveys, competitors products or otherwise, the products available in market are often watched carefully but the wealth of technical information lying in the form of patents is largely ignored. It is important to note that few of the patented technologies actually come in the market, meaning that, there is huge amount of information, in the form of patents, which is not seen in the market. However, assessment of this wealth may help in various ways, such as:

1. It helps you to assess quality of your product and may be after knowing state of the art, you can further fine tune your product or add more value to it.

2. ‘State-of-the-Art’ may reveal many interesting ways of performing an invention, which you would have never thought about and this actually can add lots of value to existing product/process.

3. Assessment of patentability of the invention compared to state of the art becomes clear and easy.

4. The best thing about the information available in the form of a patent is the best mode of performing invention, known to the inventor. In most of the countries, patent law expects inventor to disclose the best mode of working the invention which means that from patent documents you actually get complete technical working of the invention, most of the times with illustrations, drawing and examples. 

“Even though by means of product surveys, competitors products or otherwise, the products available in market are often watched carefully but the wealth of technical information lying in the form of patents is largely ignored.”

5. Based upon State-of-the-Art, if you feel that your invention is significantly better than existing patents, you might consider filing for a patent yourself.

6. Infringement of patent happens when one makes, sells, offers to sale, import patented product or a product made from a patented process without permission of a patent holder. As a result of state-of-the-art search, you might come across a few patents or patent application (not been granted), that are very close to your invention. In such a case, it is worth looking at such patents in details and check for their validity (whether they are legally enforceable) or to see if they have been filed or granted in the country (ies), where you intend to market your product. If there are any such patents, you need to be careful as there are chances that you might be infringing such patents.

7. State of art data can take various forms and interpretation of such data into various graphs can provide you valuable information in terms of key players, active areas of technology, patent filing, publication and grant trends, favorable jurisdictions, international classification etc. This data may play a vital role in formulating patent strategies for the organization.

State-of-the-art is a wealth of knowledge, infact a powerful tool that is important not only to prepare a strong base to formulate your R&D strategies but also assists in multiple ways. It is worth investing time to unfold state-of-art to create innovative, commercially viable and meaningful products to obtain competitive edge in market.