Tag Archives: Patent Act

Advocate as a Patent Agent, without passing the exam?

Gaurav Jit Singh, an intern at Khurana and Khurana talks regarding a recent judgement about case of declaring any advocate as Patent Agent without passing the Patent Agent Examination and the judgement from the court.

The judgment, dated March 15, 2013, declares amendment introduced via Section 67 (a) of the Patents (Amendment) Act of 2005 for Section 126 of the Patent Act, 1970 as illegal, unconstitutional, ultra vires and void.

Any advocate holding degree in science, engineering or technology would be eligible to file, appear and undertake all responsibilities of a patent agent. He is not required to qualify any exam to practice as a patent agent.

Tracing legislative history of Section 126:

The original Section 126 read as follows:

“Section 126. 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 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;

(d) he has paid such fee as may be prescribed.

(2) Notwithstanding anything contained in sub-section (1), a person who has been practicing as a patent agent before the 1st day of November, 1966 and has filed not less than five complete specifications before the said day, shall, on payment of prescribed fee, be qualified to have his name entered in the register of patent agents.”

Under the original provision, the requirement was to have “a degree from any university” in addition to being an Advocate or passing the patent agent examination. Two categories of individuals could act as patent agents the first category was composed of advocates, the second of those who possessed a degree in “science, engineering and technology” and who had cleared a qualifying exam.

The first amendment of 2002 replaced the phrase “degree of any university” with “degree in science, engineering or technology” in section 126(1)(c)(i). This amendment allowed advocates to become patent agents directly without any additional requirements provided they meet the new requirements i.e. a degree in science, engineering or technology.

In 2005, the Act was amended again and section 67(a) of the Patent (Amendment) Act, 2005 deleted section 126(1)(c)(i). The provision which allowed advocates to register as patent agents directly, as a “matter of right” without the need to take any qualifying examination was removed. Pursuant to this amendment, even those advocates with science and engineering degrees did not have a right to directly qualify as a patent agent. Instead all advocates would now be treated like any other citizen and would have to pass the qualifying examination in order to register as a patent agent.

Case/Contentions of the case:

The writ petition filed in 2006 by an advocate, Mr.SP.Chockalingam , after he was deemed ineligible by the patent office to appear for the patent agent examination in accordance with Section 126 of the Patents Act, as it stands today since 2005. The Petitioner challenged the 2005 Amendment and filed the writ petition to declare it illegal, unconstitutional, ultra vires and void.

The first contention was that, the amendment was discriminatory in nature and violative of the fundamental right guaranteed under Article 14, 19 (1) (g) and 21 of the Constitution is also not beneficial to the interest of the common people and the country. It was contended that, amendment to the Act prevented advocates who are more qualified in preparing documents, drafting, transact business before the Controller of Patent, instead it permitted only the degree holders in science, engineering or technology, who have passed the departmental examination conducted by the respondents to be presented as patent agent; curtailing the profession of legal practitioners against the Advocates Act, 1961, such an amendment could not be deemed as a reasonable classification within the purview of Article 14 or as an reasonable restriction under fundamental rights guaranteed under Article 19 (1) (g).

It was argued by the petitioner, that advocates being law graduates of recognized law college or university are entitled to practice as per Section 30 of the Advocates Act, however, after the unreasonable amendment, an advocate has to depend on the other category of patent agent for drafting, filing and appearing before the Controller of Patterns, hence, the amendment is violating Article 21 of the Constitution.

It was argued by the petitioner, that advocates being law graduates of recognized law college or university are entitled to practice before the Supreme Court of India, but are barred from practicing before the controller unless they clears the patent exam; forcing an advocate to depend on a patent agent for drafting, filing and appearing before the Controller, violating an advocates to right practice as listed in Section 30 of The Advocates Act, 1961.

Furthermore, right of patent agents under Section 127 and section 132 (b) of the patent act, itself makes it clear that the same is nothing but the normal duty of any advocate relating to drafting, presenting, filing papers and arguing cases before the Court or Tribunal or other authority, though the nomenclature is patent agents, for which, qualification has been prescribed under Section 126 of the Act, to register as patent agent.

It was noted that the respondents conducts two written papers (as prescribed by them), to qualify to become patent agent, the first test your knowledge about the Act and the Rules there under, and other one is drafting and interpretation of patent specifications. On the other hand to become an advocate, one should have passed BL or LL.B through a recognized university and such degree should have been approved by Bar Council. The Respondents cannot say that in imparting legal education or conducting law examinations, by a recognized law college or university would be inferior to that of the respondents, by conducting these qualifying departmental examination, respondents are unreasonably claiming supremacy over the law degree given by universities and law colleges.

The petitioner urged the High Court to consider whether the 2005 Amendment had been made in public interest, based on reasonable classification or unreasonable class legislation, which would create only a monopoly of certain group of persons, who are amenable to the authorities in the name of patent agents under the Act.

Judgement/Conclusion:

The High Court not only struck down the 2005 Amendment but also criticized the fact that the qualifying exam conducted by Respondents was placed over a law degree in terms of qualifications. Selecting certain group of persons to register as patent agents, deleting advocates, more qualified persons, held to be unreasonable and against the larger interest of the general public. The 2005 Amendment was held to be based on an unreasonable restriction.

Consequent to this judgment, any advocate holding degree in science, engineering or technology would be eligible to file, appear and undertake all responsibilities of a patent agent. He is not required to qualify any exam to practice as a patent agent.

The petitioner expects an appeal to be filed soon believing respondents would be unlikely to let go of the monopoly they had been enjoying for such a long period of time.

Advertisements

Form 3 – Some Reflections

Lately, we have been receiving a number of queries from our International clients related to the submission of Form 3 at the Indian Patent Office. The queries range from timing, frequency, content and information included in the Form 3. The aim of this article is to quickly put forth salient features of the Section 8, bring some light on the procedure and formulate some general guidelines which should be adhered to.

Form 3 is a Statement and Undertaking regarding Foreign Applications which is required to be submitted to the Indian Patent Office under Section 8. Section 8 is defined as:

8 (1) Where an applicant for a patent under this Act is prosecuting either alone or jointly with any other person an application for a patent in any country outside India in respect of the same or substantially the same invention, or where to his knowledge such an application is being prosecuted by some person through whom he claims or by some person deriving title from him, he shall file along with his application-

(a) a statement setting out the name of the country where the application is being prosecuted, the serial number and date of filing of the application and such other particulars as may be prescribed; and

(b) an undertaking that, up to the date of the acceptance of his complete specification filed in India, he would keep the Controller informed in writing, from time to time, of details of the nature referred to in clause (a) in respect of every other application relating to the same or substantially the same invention, if any, filed in any country outside India subsequently to the filing of the statement referred to in the aforesaid clause, within the prescribed time.

8 (2) The Controller may also require the applicant to furnish, as far as may be available to the applicant, details relating to the objections, if any, taken to any such application as is referred to in sub-section (1) on the ground that the invention is lacking in novelty or patentability, the amendments effected in the specifications, the claims allowed in respect thereof and such other particulars as he may require.

In simple words Form 3 is submitted to furnish information/actions/status relating to the patent applications filed in other countries for a particular Indian Patent Application. Further, Section 8 requires that the Applicant will keep the patent office informed (in Form 3) up to the date of grant of patent in India in writing the details regarding corresponding applications for patents filed outside India from time to time.

The Proper and timely submission of the Form 3 has gained all the more importance following a famous Chemtura Case when interim injunction was revoked against Chemtura Corporation by a Division Bench of Delhi High Court in a patent infringement suit involving one reason as the Non–compliance with Section 8(1) and 8 (2). In brief, Chemtura Corporation filed first Form 3 while filing Indian National Phase Application on 21st June 2001. After that, in spite of the changes in the status of the Applications in other countries particularly in US and Europe where Rejection Letters were issued and claims were narrowed down, no further Form 3 updating the status was submitted in accordance with Section 8(1). Further in accordance with Section 8(2), the Controller asked to furnish the details of the Examination Reports of countries like US, EP and JP, which Chemtura failed to comply with.

Though Indian Patent Act has defined the Section 8 mentioning the details regarding the submission of Form, the utmost clarity on the frequency, timing and the content/information relating to the subsequent Form 3 is required. We, at our Firm Khurana & Khurana, typically follow the general guidelines to adhere to the requirements of Section 8(1) and 8(2) as follows:

Timing, Frequency and Content of Form 3

  • First Form 3 is filed along with Filing the Application in India mentioning the countries, Application Nos., Publication nos. (if applicable) and the current status of the Application in respective countries.
  • Next within six months of filing the Application, the second and updated Form 3 mentioning the changes in the status if any is filed.  The status can be “Published”, “Awaiting Publication”, “Undergoing Examination”, “First Examination Report Received”, “Withdrawal of Application”, “Granted” etc and the same is updated from time to time up to the date of grant. Writing “Pending” as the Status of an application should be avoided as the decision of the Chemtura Case holds that “status” does not mean “pending” or “dismissed”. “
  • Then, we advise our clients to inform us the updated status of the Application in any country within six months of that status change. If desired, we also follow up with clients six months after their previous Form 3 submission date.
  • We also strongly advise our clients to submit the copies of the Examination Reports, Responses to the Objections, Amendments etc.

Information of which Countries

  • We submit information of all Foreign Applications whether they are PCT National Phase Applications or the Convention Applications based on Paris Convention taking priority within 12 months.

In conclusion, submission of Form 3 should not be held lightly as little delay or any missing status can cost the patent rights in India, as one of the grounds of the Revocation, Pre- & Post- Opposition of the Patent/Patent Application is non-compliance with the Section 8 of the Indian Patent Act.

About the Author: Ms. Gopanjali Singh, Patent Associate at Khurana & Khurana and can be reached at: Gopanjali@khuranaandkhurana.com