Advocates as Patent Agents

In a landmark (and in a way divisive) judgment, Justice S. Tamilvanan of the Madras High Court, on 15th March 2013, allowed the writ petition filed by Mr. S.P. Chockalingam (W.P.No.8472 of 2006) and declared the amendments introduced to Section 126 of the Patents Act 1970, by Section 67 (a) of the Patents (Amendment) Act, 2005 (Act 15 of 2005) as illegal, unconstitutional, ultra vires, void and unenforceable. Thereby restoring the status quo on the patent agent qualification under the Indian Patent Act, 1970 as was in existence before the Patents (Amendment) Act of 2005.

Now in order to comprehend the impact of the Madras High Court judgment and to know as to why this judgment is important, we need to get into the genesis of Section 126 and the legislative history of its amendments.

The original 1970 draft of Section 126 clearly said that Citizens (and not Advocates), who are Indians, over the age of 21 and had a ‘degree from any university’ in India could be registered as Patent Agents provided they clear the qualification exam conducted by DIPP. And as far as Advocates, those enrolled with the Bar Council had the prospect of getting registered and practice as a Patent Agent.

The 2002 Patent (Amendment) Act brought with it a slight change in Section 126, changing the words ‘degree from any university’ to ‘degree in science, technology or engineering’ and other than that everything else remained the same as the original 1970 version.

And then came the 2005 Patent (Amendment) Act, which in the course of amending Section 67(a), deleted Section 126 (1)(c)(i), due to which the Advocates with Science and Engineering backgrounds also, now no longer had the liberty as a ‘matter of right’ to be qualified directly as Patent Agents. Instead, they were now required to clear the qualifying examination just as other citizens had to.

Pained by the amendments (though I am not completely sure whether the anguish was for the amendment of 2005, or for both 2002 and 2005 amendments!), Advocate Chockalingam in 2006, filed a Writ Petition under Article 226 of the Constitution before the Madras High Court in quest of a writ declaring the deletion of the amendment of 2005. What the petitioner contended was that the amendment of 2005 which omitted ‘advocates’ from Section 126’s domain was unconstitutional with reference to Section 30 of the Advocates Act, read with Articles 14, 19(1)(g), and 21 of the Constitution of India. It was also very correctly pointed out by the Petitioner that when the Patents Act does not provide any qualifications for being an inventor, then how is it that there could be a qualification for an inventor’s inscribe. The present system meant that wherein one hand Advocates are allowed to argue Patent Matters, on the other hand, they cannot file patents for his/her clients. Thus proving his point that there was no application of mind while omitting the word ‘advocates’ from Section 126.

The Judge, after listening to the contentions of the Petitioner, met the ends of justice by finding it equitable to allow the writ petition and declare that the impugned amendment as illegal, unconstitutional, ultra vires, void, and unenforceable.

Now there are certain humble observations that I would like to make, which tells me that this decision passed by the Madras High Court is actually not completely correct.

I identify with the point that asking Advocates with Science backgrounds to clear qualifying examination to be registered as a Patents Agent is unfair towards them when other citizens with just the Science background can go ahead and get registered as Patent Agents by clearing the same qualification exam. But the fact of the matter is that Patents being a field very different from other fields of law makes it hard for ‘social engineers’ to file Specifications (complete or provisional) as explained in the Patents Act. A registered Patent Agent, in this case, being a ‘social engineer’ with no knowledge of how to file a Specification (and trust me when I opine this that an ordinary case draft filed by an Advocate which he is taught during his LLB or BL degrees is poles apart and much less complex if compared to a Patent Specification, explained in the Patents Act) will eventually prove to be a grave matter of concern to an inventor who will probably have to lose out on his hard-worked and hard thought invention, just because now according to the Madras High Court every ‘social engineer’ who has a Science Background, has with him/her, “as a matter of right” the liberty to file a Specification.

Also in addition to the above point, what is observed by me is the fact that from a bare reading of the judgment, it can also be concluded that the Madras High Court even wanted to hold Section 53 of the 2002 (Amendment) Act as unconstitutional, but perhaps failed just because there was no challenge made for the said provision by the Petitioner.

And now after several months have passed since the Judgment by Honorable Madras High Court, the IPO has neither Implemented the decision nor has it Appealed against it. And on the other hand, there are several Advocates who are getting inquisitive to know as to how they can get registered as Patent Agents. Meanwhile, the only development regarding the case being an RTI filed by Mr. S. Venkatesh to the IPO, to which he was given the reply by IPO that the decision has been appealed for and since it is pending, nothing can yet be operationalized. This comes at a time when Advocates around the nation are wondering as to how they would be getting a ‘Patent Agent Number’ for themselves and as to why there is no information regarding the appeal filed by IPO (no information is coming from the Petitioner either regarding receiving of appeal papers!). Whoever is pursuing this matter and is contacting IPO for the same is being given a similar reply as was given to Mr. S. Venkatesh.

So basically as things stand today, Advocates with science backgrounds can automatically get registered as a Patent Agent. And the sheer absurdity in it is that they don’t even need to know how a Patent Specification is filed! But given the fact that the Respondents in the case are Controller of Patents and Union of India, the Petitioner can soon expect an appeal (actually it is just not the Petitioner who is expecting, but several other ‘curious’ Advocates too!) since it would highly be unlikely of the Respondents to let go of the monopoly they had been enjoying for such a long period of time!

About the Author: Mr. ABIN SAM, interns at Khurana and Khurana, Advocates and IP Attorneys.

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