Qualifications and rights of the patent agent in India

Qualifications and rights of the patent agent in India

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Patent Agent- Meaning and Significance 

A patent agent is a person who is registered and authorized by law to practice before an Indian Patent Office and deal with patent applications. The expertise of a patent agent is used to protect intellectual property and prevent infringement. In order to become a patent agent, one has to qualify the Indian Patent Agent Exam conducted by the Department for Promotion of Industry and Internal Trade. 

Chapter XXI of the Patents Act, 1970 prescribes the provisions dealing with patent agents. Section 2(1)(n) of the Patents Act, 1970 defines a patent agent as “a person for the time being registered under the Act as a patent agent”.Therefore, a patent agent is qualified to deal with all the legal aspects associated with a patent application for eg. drafting technical applications, filing of patent applications, etc. 

A patent agent is required to have both legal as well as specific technical knowledge to be able to effectively deal with patent applications and prosecute the same. Thus, only a registered Indian patent agent can prosecute, prepare, and file patent applications on behalf of a client.

A register is maintained by the Controller known as the register of patent agents in which the names, addresses and other relevant details of persons who are qualified to be a patent agent are entered. The Controller can keep the register of patent agents in any electronic form including floppies, diskettes etc. 

The register maintained by the Controller under section 125 must contain the name, nationality, address of the principal place of business, address of branch offices, the qualifications, the date of registration of every registered patent agent and details of their renewal of registration. Furthermore, every branch office must maintain copies of the register of patent agents and the register should also contain specimen signatures and photographs of those who are registered as patent agents. 

Qualification for Registration as Patent Agents

The statutory requirements or qualifications of a person to be registered as a patent agent and have his/her name entered in the register of patent agents are as follows:

  • he should be a citizen of India;
  • he should have completed the age of 21 years;
  • he should have a degree in science, engineering or technology from any university in India or have other equivalent qualifications which the Central Government may prescribe;
  • in addition to the above criteria he should also have passed the qualifying examination;
  • has functioned either as an examiner or discharged the function of the Controller or both for a period of not less than 10 years. However, at the time of making the registration application he must have ceased to hold any such position;
  • has paid the requisite fee. 

Thus, to become a patent agent, a degree in law is not mandatory but a degree in science, engineering or technology is essential. However, prior to the 2005 amendment to the Patents Act, it was mandatory for a person to possess a degree in law along with holding a degree specified under clause (c). Therefore, a person with a degree in law does not automatically qualify to become a patent agent unless he has satisfied the conditions prescribed above. 

Registration of Patent Agents 

Rule 109 of the Patents Rules, 2003 prescribes that any person who wants to be registered as a patent agent should make an application in Form 22 and must furnish any information which may be required by the Controller. Any person who wants to appear in the qualifying examination should make a request to the Controller along with the prescribed fee after the examination has been announced. 

After the qualifying exam has been passed by the candidate and after the Controller has obtained further information which he considers necessary, he shall on receipt of the requisite fee, enter the name of the candidate in the register of patent agents and issue a certificate of registration to him as a patent agent. For a person’s name to be continued in the register of patent agents he/she must pay the requisite fee. 

Disqualifications for Registration as a Patent Agent

The various grounds for disqualification of a person from being registered as a patent agent are:

  • he has been adjudged by a competent court to be of unsound mind;
  • is an undischarged insolvent;
  • Being a discharged solvent has not obtained a certificate from the court stating that his insolvency was caused by misfortune without any misconduct on his part;
  • has been convicted of an offence by a court to undergo a term of imprisonment, unless he has been pardoned or on an application made by him the Central Government by an order removed his disability;
  • in case of a legal practitioner has been guilty of professional misconduct;
  • in case of a chartered accountant, has been guilty of negligence or misconduct. 

Rights and Restrictions on Practice as Patent Agents

A patent agent is entitled to:

  • practice before the Controller; and 
  • prepare all documents, transact all business and discharge other functions in connection with any proceeding before the Controller under the Act. 
  • apply for or obtain patents in India or elsewhere;
  • prepare specifications or other documents required under the Act or of the patent law of any other country;
  • giving advice related to the validity of patents and their infringement.

However, the rights of a patent agent are not absolute and are subject to certain restrictions. The various restrictions on the practice as a patent agent are as follows:

  • No person can practise, describe or hold himself out as a patent agent whether alone or in partnership nor permit himself to be so described unless he or his partners are registered as a patent agent;
  • No company or body corporate can practise, describe or hold itself out as a patent agent nor allow itself to be so described.    

Removal of Patent Agents from Register 

The Controller can remove the name of any person who is registered as a patent agent from the register after giving that person a reasonable opportunity of being heard, where the Controller is satisfied and after further inquiry which the Controller thinks fit to make. The name of a person may be removed from the register under the following circumstances:

  • where the name has been entered in the register by error due to misrepresentation or suppression of material fact;
  • where the person has been convicted of any offence and sentenced to a term of imprisonment or has been guilty of misconduct in his professional capacity which renders him unfit to be kept in the register in the opinion of the Controller. 

However, a person whose name had been removed from the register can be restored to the register of patent agents on an application and on sufficient cause being to the Controller. Therefore, the power lies with the Controller to restore the name of the person in the register of patent agents where there is a sufficient cause and on an application to the Controller. 

Furthermore, the Controller can delete the name of any patent agent from the register of patent agents:

  • on a request received in that effect; or
  • when the person has died; or
  • when the Controller has removed the name of a person under section 130 (1); or
  • when the person has defaulted in the payment of fees, for more than 3 months from the date it was due, or
  • if he ceases to be a citizen of India.  

Except when a request for removal has been received or when the person has died the person whose name is sought to be removed from the register of patent agents should be given a reasonable opportunity of being heard. This removal of the name from the register of patent agents must be published and also communicated to the concerned person. 

The restoration of the name of a person removed from the register of patent agents under section 130 (2) can be done by filing an application within 2 months from the date of such removal. Once the name of a person is restored to the register of patent agents, his name shall continue in the register of patent agents for a period of 1 year from the date on which the last annual fee  was due. Moreover, it should be communicated to the patent agent that his name has been restored to the register of patent agents and also published on the official website. 

Refusal to Deal with certain Patent Agents

The Controller has been given the power to refuse from recognizing a person as a patent agent in respect of any business under the following circumstances: 

  • where a person’s name has been removed from the register of patent agents and has not been restored to the register;
  • where a person has been convicted of any offence under section 123;
  • where a person who is not registered as a patent agent, is in the opinion of the Controller engaged in acting as an agent in applying for patents in India or elsewhere in the name or for the benefit of the person by whom he is employed, wholly or mainly;
  • where the Controller refuses to recognise any person, company or firm who is acting as a director or manager of the company or is a partner in the firm, as an agent with respect to any business under the Act;
  • where a person neither resides nor has a place of business under the Act, in India. 

Thus, where the Controller is of an opinion that a person should not be recognized as a patent agent in relation to any business under the Act, the reasons for such refusal should be communicated to that person and also be directed to show cause as to why the Controller should not refuse to recognize him as an agent. The Controller may pass such orders which he deems fit after considering the reply of the person and giving him an opportunity of being heard.


Anusuya Mukherjee-DU

Anasuya Mukherjee

Author

Anasuya hails from Delhi University and she spends most of her time in Reading, Practising Yoga and Working towards community animal welfare. Her Interest area lies in Intellectual Property Law. For any clarifications, feedback, and advice, you can reach her at anasuyamukherjee86@gmail.com

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