Friday, April 12, 2013

Non-Science Grads as Patent Agents and the Patent Agent Examination

In my last post, I had briefly discussed the Madras High Court’s decision striking down the amendment to Section 126 of the Patents Act as unconstitutional. According to the Court, the requirement of a science/engg. degree to appear for the patent agent exam is “unreasonable and irrational”.

The Court’s argument was essentially this: Non-science grads are in no way inferior to science grads when it comes to performing the duties of a patent agent. Therefore, non-science grads too must be allowed to appear for the patent agent examination.

After the last post, friends, law students and a few readers wanted me to state my views on the issue. Before I do so, a statement of fact is necessary- I failed to clear the patent agent examination. The reason I have to state this is that may be for some, this information is necessary in order for them to decide if my thoughts on the issue are worth reading.

Now, moving to the issue at hand, I have articulated my views on this issue to a limited extent elsewhere. But maybe it is time to reconsider previously held positions.

Although my core competence is litigation, with patent litigation being one of my strong areas, I have put considerable effort in understanding patent drafting and prosecution to lend more value and conviction to my practice as a litigator. This effort has only strengthened my rather non-novel and obvious belief that although litigation and patent prosecution are two very different animals and therefore comparisons/generalizations may not be entirely justified, a patent drafter/prosecutor’s work requires greater technical depth, diligence and foresight. After all, the patent document must withstand challenges and also be capable of effective enforcement.

In that sense, the drafter is figuratively building in the shield and the sword in the same document. Therefore, to me, he is the most valuable link in the patent value chain, after the inventor of course.

The drafter needs to understand the inventor’s point of view, and apply his mind to deliver optimum value to the client within the bounds of the law. This calls for an ability to grasp the nuances of the invention, and the subtleties of the law as well. Therefore, ideally it would help if the drafter is a lawyer too- this, according to me, would be the ideal package.

The next best option would be for the drafter to have access to a lawyer who can act as an intelligent sounding board.

But the question is, can we have drafters who are non-science grads, but who have cleared the patent agent examination? Is clearing the patent agent examination sufficient proof of the candidate’s technical skills to the extent that the requirement of a science/engg. degree is altogether done away with?

There could be two ways of going about the issue- either taking the call that a science degree is a must to guarantee a minimum level of expertise, or leaving it for the market to decide the quality and worth of a drafter regardless of his educational qualifications.

There is no doubt that there are a few outstanding patent drafters in India (who I personally have had the privilege of working with) who do not have a science/engg. degree and who could probably give the science/engg grads a run for their money thanks to the sheer number of hours they have put in, besides their innate ability to digest anything under the sun. 

That said, when we discuss the way forward, it is important to address the norm with greater clarity and purpose than the exception. Consequently, I think for an evolving patent regime like India, quality control is important, particularly if we are interested in creating a reliable ecosystem for patent drafting, where work is farmed out to Indians for our quality first and cost-effectiveness second.

Clearing the patent agent exam may at best vouch (and that too not always) for a minimum level of knowledge of the Act and Rules, and the established norms of drafting. But clearing the exam is certainly no metric or index by which to assess the technical skills of an individual. Therefore, I do believe that a science/engg degree must be a condition precedent to appear for the patent agent examination.

One of the suggestions made by a friend was that science/engg graduates, who have a law degree as well, must be exempt from writing the patent agent exam, and must be allowed to register directly as patent agents. Although this was the position between 2002 and 2005, I don’t think such an exemption was and would be justified because having science and law degrees does not necessarily translate to knowing the basics of patent drafting or being familiar with the minutiae of the Act and Rules. If the counter to this is that clearing the exam too is no guarantee of the same, then by that logic no exam is a guarantee of future potential, and therefore non-science non-lawyers too must be permitted to register as patent agents directly.

Simply put, my point is if the exam is here to stay, then it must apply equally to lawyers with a science background, and non-lawyers with a science background.

If the exam is sought to be done away with altogether, I think that would be catastrophic because the exam does serve the object of quality control, albeit to a limited extent. The only way to ensure that the exam selects a better pool of agents is to restructure the exam, and not to consign it to the wheelie bin altogether.

I had written on this issue in an earlier post drawing lessons from the Singaporean model. In that post, I had said thus:

To qualify in the examination, particularly the drafting part, one requires practice. I don’t think I am the first person to say that the art of patent drafting cannot be divinely acquired at the time of the examination; it needs consistent practice.

This being so, wouldn’t it help to have a mandatory provision in the law where a candidate who applies for the patent agent examination must have worked under a registered patent agent for at least a year or so?

This proposal isn’t new or radical; the Singaporean Patent law already envisages this. Rule 6 of the Patents (Patent Agents) Rules 2001 spells out the entitlements for registration as patent agent in Singapore. The said provision reads as follows:

6.  Subject to rules 7 and 8, an individual is entitled to be registered as a patent agent if he —
(a)  is resident in Singapore;
(b)  holds a university degree or equivalent qualification approved by the Registrar;
(c)  has passed the course specified in Part I of the Third Schedule;
(d)  has passed the examination specified in Part II of the Third Schedule; and
 (e)  has completed internship in patent agency work under the supervision of a registered patent agent, or an individual registered as a patent agent or its equivalent in a country or territory, or by a patent office, specified in the Fourth Schedule, for —
(i)  a continuous period of at least 12 months; or
(ii)  a total period of at least 12 months within a continuous period of 24 months.

The course referred to in clause (c) is the Graduate Certificate in Intellectual Property Law course conducted by the Faculty of Law, National University of Singapore. The examination referred to in clause (d) is the Patent Agents Qualifying Examinations conducted by the Registrar comprising 4 Papers. Clause (e) requires at least 12 months of continuous internship under a registered patent agent....

..........That said, what we could certainly take a leaf out of is the requirement of an internship. This way, we would know that a registered patent agent is not raw, but is at least semi-finished to handle patent applications and to advice clients with some degree of confidence, which is borne out of experience.

The other point to be noted is that there is no provision for a Viva Voce. The examination basically has 4 papers, the first relates to specification drafting, the second to amendment of a specification, the third relates to claim construction to determine validity and infringement and the fourth relates to knowledge of patent law and practice in Singapore.

Even the European Patent Office does not envisage a viva voce in the European Qualifying Examination. Of course, the exam is held over a marathon duration of 20.5 hours, which I think is a fairly rigorous way of filtering candidates!

Viva voce may or may not be an important issue, but the larger point in the big picture is that the quality of candidates who qualify for practice must not be sub-par.

Ultimately, patent jurisprudence is applied every time a claim or a specification is drafted, therefore it is imperative to ensure quality at the most fundamental level before we start asking for specialized IP benches.”

Comments and Corrections are welcome!


  1. Dear JSD:

    I am one of those non-science graduates who sat for the exam (a long time ago) and passed. So, I can state things from both sides :)

    I say this- should the non-science graduates (law/ now-law/ what have you) want to practice, pass the EXAM!

    The moment the Court moves on this track, the 'advocates' will run away ... the exam today (good or bad from a practice perspective) is fairly detailed/ tough and if the exam alone is mandatory, then too this 'hulla baazi' will stop!

    Freq. Anon.

    1. I agree FA. If non-science grads must be allowed to appear for the exam, I think it would to include another paper testing the technical aptitude of candidates. Alternatively, as a friend suggested, we could have specific papers for different branches of science/engg (but law is not science!) so that candidates may be tested only with respect to those branches in which they wish to practice. This way, a pharma grad who does not ever wish to handle mechanical or electronics-related inventions is not deemed unfit to practice as a patent agent. What do you think?


    2. I agree with F.A. Allow the lawyers to become Agents, but the exam must be mandatory for all.

      Sai, i am happy you picked the topic as this is causing a bit of confusion among people whether the lawyers can simply go and register as was the case between 2002 and 2005 or whether they need to sit for an exam!

      As regards subject specificity, the paper does have a choice between life sciences and engineering based drafting. And i feel, the drafting exercise as given in the paper is to assess whether a person understands the basics and is able to outline the specs well, rather than going deep into the technology part while giving the exam! Frankly, the information available is pretty feeble to prepare an actual complete specification during the exam.

      I concur with you that drafting/prosecution and litigation are different animals but they should respect one another as neither can work independently. I have often seen lawyers despising technologists since they find them unnecessary encroachers of what was once purely a lawyer centric domain. I think, we need to be reasonable and introspect as to who can do what best, rather than get into a 'law vs. science' debate. I can say this, despite a painful memory of having to go through the exam way back in 2004, even while having the highest degree in sciences and having heartburn whether i would clear it or not. This, versus many of my 'fresh out of law college' colleagues, who simply went to the Patent Office, filled up Form 22 and got registered as Patent Agents!! Thank God, I qualified, else i would keep cursing my being a scientist for the rest of my life.

    3. Dear Anon,
      Thanks for sharing your thoughts. I have been asked the same query on what the position of the law is as it stands today. I am working on it, and will share my views once I have clarity in my head.

      Apart from the drafting portion, if non-science grads are to become patent agents, I think another technical paper covering mathematics, physics and chemistry is necessary to ensure that their fundamentals in these subjects are in place. Probably, this paper could be made mandatory only for the non-science grads.

      I agree that there must be mutual respect between lawyers and technologists recognizing each others' strengths and expertise. The reason probably for simmering irritation is when someone shoots his or her mouth off on an topic or subject in which they are clearly not qualified or trained. This applies to both parties.

      Best Regards,

  2. Hi Sai Deepak Sir,

    Leaving aside the logic or reasoning by the Hon'ble Judge, what do you think would now happen to the Patent Agent Examination scheduled this year? The Delhi Case was on different grounds and a party within Delhi's Jurisdiction was affected and pending the decision, which had the power to alter the nature/pattern of the exam, I believe it was Patent Office who delayed the Exam themselves, without any direction of stay of Exam (Plz correct me if I am wrong).

    But here, it is to note that the respected Madras HC has struck down the provision itself of a Central Act. So going back to the basic principles of Powers of Courts and resolution of conflicts, what does the Judgment effectively mean? I envisage few possible scenarios:
    1. Patent Agent Exam or Rules stating only Patent Agents can file Patents is not effective in State of Tamil Nadu and hence, anyone (including the learned graduates of the science of law, also known as advocates) would be immediately applying to register as Patent Agent (u/s 125) and enforcing the rights (u/s 127) and start filing patents in Chennai Patent Office.
    2. Everyone who does not lives in Tamil Nadu (including Pondicherry) would be rushing to Chennai Patent Office to get him/her registered u/s 125 and since the register is National in nature, start filing patents in any of the Patent Offices only because of the reason that their names are present (u/s 125) in the 'Register'.
    3. An appeal to Hon'ble Supreme Court is preferred and the decision is stayed to come into force immediately.
    4. Patent Agent Exam continues to take place, but not in the state of Tamil Nadu where the High Court thinks otherwise.

    I hope I am correct in understanding of the simple rules of jurisdiction and that the decision of HC does not in effect, removes the operation of Section 126 (qualifications of a Patent Agent) on a National Basis.


    1. Dear Prashant,
      Thanks for the detailed comment. First I'd like to clarify a few assumptions which your comment seems to make. The issue of the binding nature of a High Court's decision with respect to a central legislation is actually not that "simple", which is clearly borne out from the quality of the debate that has taken place on this issue over the years.

      When a High Court is empowered to deal with constitutionality of Central Legislations(which was clarified even more by the repealing of Article 131A in 1977), the question that would need to be asked is- if central legislations are applicable all over India en masse (except for express savings), striking down the legislation as unconstitutional by a High Court can be said to have an all-India effect. Because if that isn't the case, the central law would then be unequally applied in India, resulting in violation of Article 14. Therefore, either the law is applied uniformly all over the country, or it must be struck down all over the country. But honestly, this is just one view point. The 136th report of the Law Commission of India has addressed this issue, which you may want to read.

      Therefore, whether situations 1, 2 and 4 are themselves correct is itself a question. As for the third situation, i think that is a fairly obvious step considering that a stay would be the most logical step to avoid confusion in the short term. This would of course be by way of an SLP, not "appeal".

      At this point, to avoid complicating the situation by getting into the territorial extent of the Madras HC's decision, the easier way out would be to rush to the SC and stay the decision. After all, if the original writ petition which was filed in 2006 can be decided in 2013, it follows that the decision on the issues raised by the petition can be deferred further, without there being a roadblock to the conduct of the patent agent examination this year.


    2. Just wanted to clarify why it would be an "SLP", and not an "appeal". The distinction between Article 134 and 136 is, the former provides for an appeal in criminal proceedings, whereas the latter provides for a "special leave to appeal", which is not a matter of right.


    3. Dear Prashant,
      Here's the 2004 judgment of the Supreme Court in Kusum Ingots v. Union of India, which says that "An order passed on writ petition questioning the constitutionality of a Parliamentary Act whether interim or final keeping in view the provisions contained in Clause (2) of Article 226 of the Constitution of India, will have effect throughout the territory of India subject of course to the applicability of the Act." Therefore, the judgment of the Madras High Court striking down Section 126 is valid all over India. Consequently, I think the Patent Office cannot conduct the exam until this issue is resolved. Therefore, securing a stay on the decision would be of critical consequence.


    4. Great Sir.. You are one of the very few people who can answer everything so convincingly Sir :)
      (and apologies for using the word appeal there)
      I would definitely look into the discussion in the 136th Law Commission Report as mentioned by you.

      Also, interesting to note, the Judgement though held that 'such' order will have effect throughout India yet dismisses the appeal of 'Petitioner' (the affected company) who challenged the High Court's Decision stating lack of jurisdiction to decide on any questioning on the 'vires of the Act'. I think I am little confused here, and the Delhi HC Judgment is something I should scout for.

      Further, it seems that the Kusum judgment has been mostly used ONLY to establish or reject the contention of 'partial cause of action' and rarely for questioning central laws by HCs (one of the few relevant Judgment seemed to me was Vishnu Security Services vs. Regional Provident Fund Commissioner, Delhi HC dated 17.02.2012).

      In any case, agreeing to your correct observation of the case, I can see all my extra hours of cramming up of the rules and forms, just for the Exam going down the drain !!

      More interestingly, the latest update on IPO site says:
      "PATENT AGENT EXAMINATION 2013 - The admit cards are being dispatched by speed post. Candidates are advised to regularly visit this site further updates (17 April, 2013)"..

      Wonder they even know about (both) the judgment or not....

      Best Regards,

  3. well articulated and this is as close as it gets to being free from bias!"There could be two ways of going about the issue- either taking the call that a science degree is a must to guarantee a minimum level of expertise, or leaving it for the market to decide the quality and worth of a drafter regardless of his educational qualifications."
    I couldn't agree more!

  4. On a separate note, I wish we would include a paper on the Patents Act while hiring Examiners. In the only exam conducted last when about 150 Examiners were hired, they were tested purely on their core technical subject. How come only the people who appear before the Patent Office have to have a complete knowledge of science as well as the Law, but the Examiners who examine, start reading the Act, only once they have been appointed as Examiners.

    This came to my mind while going through a recently received First Examination Report, which I was trying to report and explain to my client. Deeply frustrated while reading it as it is clear that a new Examiner has drafted the objections. Also frustrated that the well-trained Controllers who now sign these letters, do not care to check whether this new crop of Examiners have raised sensible objections or not.

    But hey! May be, the system is alright after all. We, the Patent Agents have another duty - to train and teach the new Examiners by responding to these vague and irrelevant objections by explaining the law to them!!


    1. Dear DT,
      You certainly have a point, but is it true that prospective examiners arent tested on the Act, Rules and drafting? Could you please direct me to the pattern of the examination for examiners, if there is one? Thanks!


  5. Dear DT
    Having found the "problem " why dont you become an Examiner.Be the change.

  6. Sai, i will try and send it to you. But, this is true! They are however, trained 'post recruitment' at the IPO's training centre at Nagpur before giving them live cases. And to put the record straight, this comment was only in context with the strict eligibility requirements and testing procedure to become a Patent Agent and not to criticize the Examiners as they are not to be blamed for the lacunae in policy.

    Dear Anon @2:13 PM - I choose to ignore your frivolous comment.


  7. Dear DT

    Not withstanding how you percieve, your latest position of not holding the concerned responsible is appreciable.I am glad that you have rightly understood /expressed the problem now.
    BTW is there any patent office(US ,EP) which tests aspiring Examiners in law? kindly let me know.

    Anon @2:13 PM

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