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!