In the last post, I raised a couple of questions on the status of non-patent agent lawyers with respect to their eligibility to advise clients on issues of validity and infringement of patents. These questions were raised in light of the explanation of "practice" under Section 129 of the Patents Act, 1970.
In this post, I intend to read Section 129 of the Act along with Section 132. Section 132 of the Act is a “Savings Clause” in respect of other persons authorized to act as agents. The first obvious saving is the right of the applicant to draft and prosecute his own application and appear before the Controller.
The second saving is with respect to an advocate, who is not a patent agent, being permitted to “take part in any hearing before the Controller on behalf of a party who is taking part in any proceeding under this Act”.
If an advocate, who is not a patent agent, can appear before the Controller in any proceeding under the Act, it is but natural that he is expected to be duly instructed on the facts and issues in the proceeding, which pertain to science as well as the law.
If so, is the saving clause for advocates in Section 132 inconsistent with the explanation of practise under Section 129, which stipulates that only a patent agent can give advice, other than of a scientific or technical nature, as to the validity and infringement of patents?
An advocate, who can appear before the Controller in any proceeding, can appear in pre-grant and post-grant oppositions as well. These are proceedings which involve layered and complex scientific and legal issues, and they pertain to validity of the patent/application. Such being the case, would it make sense to say that a non-patent agent lawyer cannot advice on issues of validity and infringement of patents?
I think the sensible position to take would be that someone who is neither a patent agent under the Act nor an advocate cannot advice on legal issues/”practice” as a patent agent. This could be a plausible middle path. That said, let’s consider another situation to probe Section 132 further.
If an advocate can take part in any hearing before the Controller under any proceeding in the Act, although the savings clause in Section 132 expressly mentions only “hearing”, would it mean that an advocate’s entitlement under the Act is restricted to taking part in a “hearing”?
Can he communicate with the Controller with respect to issues which are related to the hearing? If yes, can he correspond with the Controller with respect to a hearing in a pre-grant opposition? If yes (apologies for sounding repetitive), let’s take this argument a step further.
A pre-grant opposition is a quasi-administrative process which basically aids the process of examination of an application (courtesy UCB Farchim v. Cipla and the WIPO Standing Committee Report on Opposition Systems, December 2009). This was the reason the Delhi High Court treated the rejection of a patent application as an order passed by the Controller under Section 15, which order was hence deemed appealable before the IPAB under Section 117A.
Such being the case, a pre-grant opposition too is part and parcel of the prosecution of the application. If a non-patent agent advocate can take part in a pre-grant opposition hearing, and if he can correspond with respect to issues related to the hearing or to which the hearing pertains to, he is basically prosecuting the application, in other words, he is “practising” as a patent agent.
Is this intended by the saving clause in Section 132? I would like to know the views of better-experienced practitioners.