January 21, 2010

The Curious Case of Patent Agents

The above article appeared in today's The Hindu, Science and Technology section. The full- artilce is reproduced below:

Patent Agents are `hybrid' professionals whose area of practice is at the intersection of law and science. The nature of their work, which involves preparing patent specification (a document which embodies the rights in a patent) and prosecuting them at the Patent Office leading to the grant of a patent, requires them to have some expertise in both the law and the science.

In India, the Patent Office conducts Patent Agent Examination every year to select patent agents who alone are qualified to practice before it. The examination comprises two papers: Paper I deals with patents act and rules and paper II deals with drafting of specification and claims. The written exams are followed by viva-voce.

If successful, the candidates will join a unique band of professionals who are qualified to look into matters pertaining to the law and the science. But does the two-paper examination test competence in either the law or the science?

To begin with the examination is not an examination to test the calibre of a candidate in the sciences. The questions posed in Paper I pertain to only the Patent Acts and the Rules.

There is nothing scientific there. Paper II involves drafting exercises such as giving a model specification and requiring the candidate to draft claims out of it or requiring the candidate to recreate a specification from a set of given claims. The drafting exercise involves a legal way of putting scientific facts where the science in an invention is described to demarcate a private legal right in the invention which the inventor can exclude others from doing. Paper II also does not test scientific proficiency of a candidate.

It ascertains whether a candidate can compile scientific material in a particular manner so that it can qualify for a patent. The exam does not test proficiency in science.

Even if it does, the question arises: in which discipline of science. The practice of patent law spreads across diverse fields of science. It will be impossible to have competent examinations to test a candidate's proficiency in these areas.

Thus, these exams are not geared towards testing scientific knowledge. If anyone is still in doubt with regard to the scientific nature of the tasks done by a patent agent, one only needs to look into section 129 of the Patents Act 1970. It unambiguously prohibits a patent agent from giving any advice of a scientific or technical nature.

What, then, can a patent agent advice on a patent, if it is neither scientific nor technical?

Legal, one may say, as patent specifications are technolegal documents. Then, the Patent Agent Examination should be designed to test proficiency in the law. If it does, it is indeed an unfortunate way of testing legal proficiency. The principles of statutory interpretation, legal drafting and legal writing, legal research etc are not covered in these papers.

By clearing this examination, a person without a professional degree in law is often found duelling with a practising advocate in hearings before the Patent Office and the Appellate Board. Despite the lack of formal legal training, some of these patent agents will eventually become Controllers at the Patent Office.

The Patents Act empowers the Controllers with the powers of a civil court. This means the Controllers can summon persons, examine them on oath, require discovery of documents, receive evidence on affidavits, issue commissions etc and do a host of activities enumerated in section 77 of the Patents Act, 1970. One instance where the Controller is expected to exercise these powers is in hearing and disposing opposition proceedings.

Called to question

The variety of differing opposition decisions that the Controllers have given interpreting the scope of section 3(d) of the Patent Act, which was called to question in the Novartis Gleevec Case, illustrates the challenge faced by them in following legal precedents.

These are some of the questions that will weigh in the minds of the hundreds of candidates who take the Patent Agent Examination on 23rd January 2010. As an interdisciplinary field which requires the expertise from two unrelated areas, it is time the Government looked at the practice and regulation of patent agents more seriously.

1 comment:

  1. Patent agent should be hired at the onset of a patent application, as it is advisable to seek professional assistance from a patent agent who is trained to draft patent specifications. The drafting of the patent specifications should be performed by the patent agent to cover both the legal and technical aspects before obtaining a date of filing. Thanks...
    Patent And Trademark Attorney