As quoted by Dr. Barry Gehm, “Any technology distinguishable from magic is insufficiently advanced” – for it is a forte of human beings to be gifted with a sense of conscious intelligence ! The advancements in technological endeavours over the last few centuries has unfurled a totally new perspective towards the nature of required work and employment opportunities all around the globe. One of these modern-day professions include the caucus of techno-legal experts and patent agents.
Though the meaning and role of a patent agent is varied with subtle differences across the globe, in general, patent agents are professionals entitled to practice before the patent office of a country with respect to preparing and filing patent documents and advising clients with regards to patentability of their invention. Each country has different ways to select the agent as per their statutory requirements. Section 2(n) of the Indian Patents Act, 1970 states that a patent agent is a person for the time being registered under the Act as a patent agent.
Patent Agent in India
Section 126(1) provides the qualification and requisites for a person to have his name entered in the register of patent agents. Following are the requisites.
- The person must be a citizen of India and be at least 21 years;
- The person must have 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. Moreover the person must have passed the patent agent exam conducted by the Office of The Controller General of Patents, Designs & TradeMarks. Alternatively, the person must have 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;
- The person must have paid the fees prescribed under the Patents Rule, 2003.
Rule 108 of the Patents Rule, 2003 states that the register of patent agents maintained under section 125 shall contain the name, nationality, address of the principal place of business, addresses of branch offices, if any, the qualifications, the date of registration of every registered patent agent and the details of their renewal of registration and any other particulars so specified by the Controller.
Role of a patent agent
According to Section 127, a patent agent is entitled to:
- Practice before the Controller; and
- Prepare all documents, transact all business and discharge such other functions as may be prescribed in connection with any proceeding before the Controller under the Act.
Moreover, Section 128(1) provides that all applications and communications to the Controller may be signed by a patent agent authorised in writing by the person concerned. If such a person is absent from India (foreign applicant), they may be signed and verified on his behalf by a patent agent authorised by him in writing on that behalf.
In general terms, a registered patent agent is entitled to perform various acts, such as
- Providing patent search and analysis support for FTO of projects;
- Performing patents searches and analysis using various scientific and commercial patent databases;
- Conducting prior art searches (patentability, FTO/EOU, invalidation, Landscape, Infringement, etc.);
- Drafting patent applications;
- Preparing response to office actions;
- Applying & obtaining industrial design registrations; and
- Patent prosecution.
Consequences to the practice by non-registered patent agents
To put a bar on practice by a non-registered patent agent, Section 129 provides certain restrictive measures on practice of non-registered patent agents. These conditions are as follows.
- A non-registered patent agent either alone or in partnership with any other person shall not practise describe or hold himself out as a patent agent, or permit himself to be so described or held out, unless he is registered as a patent agent or, as the case may be, unless he and all his partners are so registered; and
- No company or other body corporate shall practise, describe itself or hold itself out as patent agents or permit itself to be so described or held out.
Further, according to Section 131, the Controller may refuse to deal with certain agents in case of –
- Practice by an individual whose name has been removed from, and not restored to, the register of patent agents;
- Practice by any person who has been convicted of an offence under section 123;
- Practice by any person, not being registered as a patent agent, who in the opinion of the Controller is engaged wholly or mainly in acting as agent in applying for patents in India or elsewhere in the name or for the benefit of the person by whom he is employed;
- Practice by any company or firm, if any person whom the Controller could refuse to recognise as agent in respect of any business under this Act, is acting as a director or manager of the company or is a partner in the firm; and
- Practice by agent in respect of any business who neither resides nor has a place of business in India.
Disqualification of Registration as Patent Agent
Rule 114 of the Indian Patent Rules, 2003 provides the grounds for disqualification for registration as a patent agent. Following are the grounds –
- Declaration by a competent court of the registered patent agent being of unsound mind;
- In case if the registered patent agent is an undischarged insolvent;
- In case of a discharged Insolvent, the registered patent agent 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;
- Conviction of the registered patent agent by any court whether within or outside India to undergo a term of imprisonment unless, he is pardoned for the offence committed on an application made by him, the Central Government has, by order in this behalf, removed the disability;
- In case if being a legal practitioner the registered patent agent is found guilty of professional misconduct; or
- In case of being a chartered accountant, the registered patent agent has been guilty of negligence or misconduct.
As patent drafting and prosecution is a challenging task, a patent agent ought to be an important consideration for an inventor wanting to protect his/her patent rights in India. An experienced agent can efficiently navigate the applicant for obtaining a patent for the invention.