Section 129 of the Patents Act deals with restrictions on practise as patent agents. It reads as follows:
(1) No person, either alone or in partnership with any other person, shall practise, describe or hold himself out as a patent agent or permit himself to be so described or held out, unless he is registered as patent agent or, as the case may be, unless he and all his partners are so registered.
(2) No company or other body corporate shall practise, describe itself or hold itself out as patent agents or permit itself to be so described or held out.
Explanation: For the purposes of this section, practise, as a patent agent includes any of the following acts, namely,—
(a) applying for or obtaining patents in India or elsewhere;
(b) preparing specifications or other documents for the purposes of this Act or of the patent law of any other country;
(c) giving advice other than of than of scientific or technical nature as to the validity of patents or their infringement.
Sub-section (1) is fairly clear in its import- unless in a partnership firm, all partners are registered as patent agents, the partners cannot collectively hold out the firm as patent agents. Sub-section (2) expressly prohibits any company to hold itself out as a patent agent. There is no leeway even if every employee of the company is a patent agent.
To the extent that a company cannot hold itself out as a patent agent (whereas a partnership firm can), the use of “person” in Section 126, which deals with patent agents, appears to be limited to natural persons alone.
The explanation to the provision is the more interesting aspect of the provision. It says that “practise” includes preparation of specification or documents even for the purposes of the patent law of a foreign country. Why does the Indian Act speak of preparation of patent application documents for a foreign patent regime? Why is the Indian legislature concerned about someone preparing a document for a foreign patent regime?
Does this mean the process of preparation of patent specifications for foreign regimes cannot be outsourced to someone who is not a patent agent within the meaning of the Act?
The other contentious aspect is that the explanation bars even “ giving advice other than of scientific or technical nature as to the validity of patents or their infringement.” Does this mean a lawyer who is not a patent agent cannot advice a client on issues of validity or infringement of patents?
Obviously these issues of validity (except for a post-grant opposition) and infringement of patents are not argued or agitated before the Patent Office. Such being the case, does the explanation of “practise” in the Act have the effect of barring all non-patent agent lawyers from tendering legal advice on validity and infringement of patents? If advice cannot be tendered, can such lawyers argue on these issues before the Court? Isn't this a question which is to be addressed under the Advocates Act?
Obviously these issues of validity (except for a post-grant opposition) and infringement of patents are not argued or agitated before the Patent Office. Such being the case, does the explanation of “practise” in the Act have the effect of barring all non-patent agent lawyers from tendering legal advice on validity and infringement of patents? If advice cannot be tendered, can such lawyers argue on these issues before the Court? Isn't this a question which is to be addressed under the Advocates Act?
I am sure senior practitioners have answers to these questions, I look forward to hearing from them.
There is one plausible explanation (or rather a shameful reasoning) for the existence of such provisions in the Act. This informal reasoning, however, doesn't obviate the applicability of the rules of interpretation of statute.
ReplyDeleteExplanation tends to identify the acts amounting to practice as a patent agent, which includes:
(a) applying for or obtaining patents in India or elsewhere;
This particular clause has been copied 'as is' from section 274 of the UK Patents Act, 1977, which reads as under:
274. (1) Any individual, partnership or body corporate may, subject to the following provisions of this Part[1], carry on the business of acting as agent for others for the purpose of -
(a) applying for or obtaining patents, in the United Kingdom or elsewhere, or...
Also, section 105(4)(a) of the Patents Act of Singapore, and the definition of the "Patent Agent" in section 2 of the Patent Act of Israel also use it verbatim. Perhaps patents Acts of Singapore and Israel came into effect after the Indian counterpart.
This is not just to demean the India legislature by citing it as a sheer copying from UK statute, but to see a possibility of finding the plausible reasoning behind this in the UK law. the same provision is taken verbatim by countries like Singapore and Israel strengthens the possibility of existence of some sound reasoning. One possible reasoning, for countries like Singapore, there are provisions under PATENTS (PATENT AGENTS) RULES 2001 that a patent agent from oter countries like Australia, Canada, US, UK etc. could practice there and there may be reciprocal arrangement among these countries. It must be there in UK, which is a member of EU. Thus, in such situation, this provision looks very reasonable. However, unfortunately this is not applicable in case of India (unless I am not aware of any such reciprocal arrangement of India with some other country).
The Explanation (a) to (c) are found verbatim in the section 2 (definition clause) of PATENTS (PATENT AGENTS) RULES 2001. (http://www.wipo.int/clea/docs_new/pdf/en/sg/sg034en.pdf)
I am not sure of the existence of (b) and (c) in UK Act.
All this is for the sake of seeking some reasoning behind finding such clause in the Act. None of these would be of any help or be considered if such clause is to be challenged in any court of law. Let's see how it goes..
Good one Sai.
One possible answer to this can be that for a patent application filed in India, corresponding patent applications may be required to be filed in foreign countries. Therefore, section 129 authorizes the Indian patent agent to prepare the foreign counterparts taking into the consideration the requirements of foreign patent laws. There can be many examples of such a situation where a patent application prepared in concordance with the Indian patent laws do not suit the requirements of foreign patent office, such as USPTO.
ReplyDeleteLooking forward to your thoughts.
Hi Kshitij,
ReplyDeleteThat certainly sounds like a plausible answer. That said, I am just wondering even if someone is a patent agent under Indian Law, how does the legislature, in a way, permit him to prepare documents for foreign filing, more so when the foreign regime could require him to be qualified as a patent agent under its law? And isn’t it strange that the legislature authorizes the Indian patent agent to prepare foreign applications taking their laws into account? I mean that is the mandate and prerogative of the foreign regime, even if the Indian law did not say so. What is even more interesting is the following situation:
A is an Indian citizen, who is a patent agent under foreign law, but is not a patent agent under Indian law. If the explanation to Section 129 where to be applied in this case, since A is not a patent agent within the meaning of the Indian Act, he is not entitled to “practice” in India i.e. prepare documents for foreign patent applications, even if he is a registered patent agent under the foreign regime. This appears unduly burdensome.
This gets bizarre unless we actually know the context of the proscription in Section 129. Unfortunately, I don’t know when this explanation was included in the provision or if it has always been there. Is there anything in the PCT on obligations on members with respect to rules of practice for patent agents? Let me check.
Best Regards,
Sai.
Thanks Ashwani! I hadnt considered this line of thought, but thanks for researching it up and sharing with us. So this provisions is another case of Cut/Copy-paste with no support structure. But in the absence of a support stucture such as rules of practice for patent agents, it could create unnecessary yet totally avoidable issues for practitioners. Let's see if this is raised as an issue before the Court.
ReplyDeleteBest Regards,
Sai.
Good set of Questions. I was looking for answers to same questions today and got to this blog.
ReplyDelete1) Applying for patent elsewhere: This was probably added because India is a PCT contracting state and Patent Agent of any contracting state can be a representative at IB.
Though, problem is in the language of the act. Indian Patent Act says practise includes filing elsewhere. Now, an Indian National who went to US and cleared US Patent Bar exam and registered as Patent Agent. Indian Act cannot block him to file a patent application in US. Thus, if you interpret the Indian Act to its exhaustiveness, this case scenario is not applicable as Indian Act is not an implementing legislation for US.
2) Other than Scientific and Technical: This is where I am stuck and can't find a case law on this. Invalidity search/opinion, Freedom-To-Operate, Drafting, Filing, Prosecution are prima facie punishable offences for a non-patent agent. But what about Prior Art Search, Landscape Analysis, Patent Portfolio Analysis, IP Valuation? Now, if someone argues that validity and infringement are required for valuation, counter-argument is that valuation experts in US don't know much of IP Law. They value patent damages on the hypothesis that patents are valid and infringed. Same for Landscape Analysis reports - comes with disclaimer that all patents are assumed to be valid.