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This article is written by Aishwarya S M, pursuing a Diploma in Intellectual Property, Media and Entertainment Laws from LawSikho.com. Here she discusses “What do patent agents do and how can you become a patent agent in India?”

Meaning of the term Patent Agent

Patent agent as defined under Section 2(n) of the India Patent Act, 1970 is a person who is registered under the patent act as a patent agent. The definition under the act defines as to who is a patent agent. In order to understand the meaning of the term ‘Patent agent’ in simple terms, it can be defined as “a person who files the patent application” The process involved in the preparation of a patent application is taken care of by the patent agent. That is, he helps in the preparation of the documents, including drafting, filing and prosecution of an application before the controller on behalf of any person who wishes to obtain a patent.

To carry out the said procedure, such a Patent agent should be registered to practice by submitting an application under Form 22 as specified under the Patent Rules, 2003[1] before the Indian Patent Office.  Thereafter, upon acceptance of the application, the details of the registered patent agents are added into the patent register maintained by the Controller. The register shall include in it, all the information that is, the name, address, and other relevant particulars related to the person registering himself as a patent agent in accordance with the Patent Rules.

Chapter XXI of the Indian Patent Act, 1970 (the ‘’Act’’) along with Chapter of the Indian Patent Rules, 2003(the ‘’Rules’’) speaks about Patent Agents. 

Qualification required for being a patent agent

For a person to qualify to get his name registered in the Patent register he shall meet the criteria specified under Section 126 of the act. As per which, the qualifications required to be a patent agent are as follows:

  1. He should be a citizen of India;
  2. Should have completed 21 years of age;
  3. He should have completed a degree in either Science, Engineering or Technology from any university established under law for the time being in force in the territory of India or should possess such other equivalent qualifications as specified by the Central Government; In this regard, final year students can also apply as long as they can produce their degree certificate with all the marks card within 2 months from the date of announcement of patent agent examination results.
  4. He should have either passed the qualifying examination prescribed for the purpose or should have functioned either as an examiner or discharged the functions of the Controller under section 73 or both, for a total period not less than 10 years provided that, at time of making the application for registration he has ceased to hold any such capacity;
  5. He should have paid the prescribed fees.

Prior to the 2005 amendment to the act, along with holding a degree specified in one of the field mentioned under clause (c), the person should also have had a degree in law. This requirement was removed through the 2005 amendment.

Procedure for registering as a Patent Agent

Rule 109, 110, and 111 of the Rules provides the procedure to become a patent agent. In this regard, a person intending to register as a patent agent shall comply with the following procedure:

1. Application for examination

A person shall make a request to the Controller and pay the requisite fee as provided in the First Schedule[2], as per which if the person intends to apply online then he shall pay an amount of Rupees 3,200 and in case of the offline mode of application payment of Rs. 3500 is prescribed. After making the payment, the details of the said payment shall be provided to the Controller, in order to appear for the required qualifying examination.

In this regard the request is made in the form of a letter addressed to the Controller and is submitted at nearest patent office along with other required documents such as age proof, citizenship proof, Character Certificate along with Self-attested copy of proof of degree as per section 126(1)(c) are to be provided. All the details in relation to the same is provided under www.ipindia.nic.in. The fees for the examination shall be paid only after the announcement of the examination on the website of the Office of Controller General of Patents, Ministry of commerce and industry[3] and within the period specified in the announcement. There is no restriction regarding the number of times one can apply for the examination, therefore, one can apply for examination as many times as he wishes.

2. Particulars of examination

Only a person meeting the qualification provided under Section 126[4] of the Act shall apply for the patent examination. The applicant should select the center of his convenience to write the exam. The examination is usually conducted in 5 cities that is, Mumbai, Delhi, Nagpur, Chennai and Kolkata. The Indian patent examination is conducted once every year. The examination shall consist of:

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  1. A written test considered as the qualifying exam, which shall be conducted by the office of the Controller. It comprises of Paper I and Paper II for 100 marks each. The Paper I will have both Objective and Descriptive type questions. The marks division in relation to the same varies each year. The first paper is based on the Patent Act and Rules while the second paper is more practical in nature relating to the drafting, interpretation of patent specifications and other descriptive questions. A candidate is required to score a minimum of 50 marks in each paper to pass the examination. Therefore, to qualify, the person should be thorough with the acts, rules, practice and procedures of patenting. The time period granted to complete the paper and format of the question paper varies every year.
  2. A viva voce is conducted for 50 marks. The questions that are generally asked is based on the knowledge about the field. For a person to qualify as a patent agent he should secure an overall 60% aggregate of the total marks. That is out of the total 250 marks he/she should in order to qualify to secure an aggregate of 150 marks or more. The amendment in relation to the scores requires to be qualified were made after 2012, Delhi High court decision in the case of, Anvitha Singh v. Union of India[5] wherein the rule prescribing a minimum 50 per cent marks in the viva-voce part of the patent agent examination was struck down thereby giving less weight to it.

The result of the examination is usually announced after two months after conducting the examination. The results are announced on the ministry website of Office of Controller General of Patents. The samples of the previous year question papers in relation to the patent examination is made available on the website mentioned above. The notification related to the exam is usually provided 2 months prior to the date of the exam on their website.

3. Registration

The person shall first submit a Form 22 application provided under the rules. He shall also furnish with it any other information as required by the controller. After a person has cleared the exam and furnished any other necessary and relevant details required by the controller such as age proof, citizenship proof, character certificate in original by gazette officer along with self-attested copy of proof of degree, admit card signed by the candidate along with invigilator’s signature, passport size photograph along with specimen signature. He shall then in accordance with Rule 111, pay the fees as specified under the First Schedule and submit the receipt of the same to the controller. The controller shall upon verifying the same, enter the candidate’s name in the register of Patent agents and issue a certificate of registration as a patent agent to the candidate. The certificate so issued is valid only within India that is, it is recognized only by the Indian Patent office and by Patent Cooperation Treaty.

Register of Patent Agents

The register of Patent agents shall be maintained by the Controller in accordance with Section 125 of the Act read with Rule 108 of the Rules. The particulars to be contained in the register include:

  1. Name
  2. Nationality
  3. Address of the principal place of business and the addresses of branch offices
  4. Qualification and the date of registration of every patent agent
  5. Details of their renewal of registration and any other particulars which the Controller deems fit and is required are to be included. The fee has to be paid at the end of every financial year to continue with the registration. The date for fee for continuation is generally considered from the date of registration as a patent agent. A notification is issued on the official website every year providing details about the mode of payment of the fees prescribed and other details including the helpline number to approach in case of problems with regard to payment of fees or any such other procedural issues. That is the registration is renewed every year after the first registration. However, at the time of first registration the person can pay the fee for continuation of registration for next 1 year at the time of registration.
  6. Specimen signatures and photographs of the persons registered as patent agents

Further, the copy of the Register of patent agents is to be maintained in every branch office. Also, such details can be maintained by the Controller in computer floppies, diskettes or any other electronic form subject to such safeguards as may be prescribed in this regard. That is, it shall be, accessed only by the person who is duly authorized by the Controller and no entry or alteration of any entry or rectification of any entry in the said register shall be made by any person who is not so authorized by the Controller.

Role of Patent Agent

Every patent agent whose name is entered in the register is entitled to the following rights as per Section 127 read with Section 129 of the act:

  1. To practice before the controller;
    – applying for or obtaining patents in India or elsewhere;
    – preparing specifications or other documents for the purposes of the Act or of the patent law of any other country;
    – giving advice other than of a scientific or technical nature as to the validity of patents or their infringement.
  2. To prepare all documents, transact all business and discharge any other function as prescribed under the provisions of the act, in relation to, any proceeding before the Controller.

There are two main restrictions imposed under Section 129 of the act, on a patent agent. They are:

  1. He shall not without registering himself as a patent agent, that is unless he and all his partners are so registered as patent agents, cannot either alone or in partnership with any other patent agent or person practice, describe or hold himself as a patent agent or permit himself to be described so or held out.
  2. Also, no company or other body corporate shall practice, describe itself or hold itself out as patent agents or permit itself to be so described or held out

Further, as per Rule 123, if any person contravenes the provisions of section 129, he shall be punishable with fine which may extend to one lakh rupees in the case of a first offence and five lakh rupees in the case of a second or subsequent offence.

Disqualification of Registration as Patent Agent

Rule 114 of the Rules provides the grounds for disqualification for registration as a patent agent, which are as follows:

  1. If he is declared by a competent court to be of unsound mind
  2. If he is an undischarged insolvent
  3. In case of a discharged Insolvent, he has failed to obtain from the court a certificate to the effect that his insolvency was caused by misfortune and not due to any misconduct on his part
  4. If he is convicted by any court whether within or outside India to undergo a term of imprisonment unless,
  5. He is pardoned for the offence committed
  6. On an application made by him, the Central Government has, by order in this behalf, removed the disability;
  7. If being a legal practitioner he is found guilty of professional misconduct; or
  8. If being a chartered accountant, he has been guilty of negligence or misconduct. In all such cases, he shall be disqualified from being registered.

This article is an attempt to provide a brief idea as to how can one become a patent agent in India. For any other further details, individuals can contact the concerned patent office on their respective helpline numbers provided on the official website.

Endnotes

[1] Section 109, Application for registration of patent agents, Patent Rules, 2003

[2] Sl. No. 32, First Schedule

[3] http://www.ipindia.nic.in/

[4] Section 126: Qualifications for registration as patent agents, Patent Act, 1970 < http://www.ipindia.nic.in/writereaddata/Portal/IPOAct/1_31_1_patent-act-1970-11march2015.pdf>

[5] WP (C) No.4376/2011


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