PATENT AGENT

[Mr. M. GOVINDARAJAN]

Patent Agent

Section 2(1) (n) of the Patents Act, 1970 (‘Act’ for short) defines the term ‘patent agent’ as a person for the time being registered under this Act as ‘patent agent’.

Qualifications

Section 126 of the Act prescribes the qualifications for registration as patent agent.  According to this section a person shall be qualified to have his name entered in the register of patent agents if he fulfills the following conditions:

• He is a citizen of India;
• He has completed the age of 21 years;
• He has obtained a degree in science, engineering or technology from any University established under law for the time being in force in the territory of India or possesses such other equivalent qualifications as the Central Government may specify ikn this behalf and in addition-

• Has passed the qualifying examination prescribed for the purpose; or
• Has, for a total period of not less than 10 years, functioned either as an examiner or discharged the functions of the Controller under Section 73 or both, but ceased to hold any such capacity at the time of making the application for registration;

• He has paid such fee as may be prescribed.

Qualifying examination

Rule 110 of Patents Rules, 2003 provides the particulars for qualifying examination for patent agents.   According to this Rule the qualifying examination shall consist of a written test and a viva voce examination.  The qualifying examination shall consist of the following papers and marks:

Paper I	Patents Act and Rules	100 marks
Paper II	Drafting and interpretation pf patent specification And other documents	100 marks
	Viva Voce	50 marks

A candidate shall be required to secure a minimum of 50 marks in paper I and paper II and shall be declared to have passed the examination only, if he obtains an aggregate of 60% of the total marks.

A person desirous to appear in the qualifying examination shall make a request to the Controller along with the Fee of ₹ 1600/- in case of e-filing or ₹ 1760/- in case of physical filing.

Disqualifications

Rule 114 prescribes the disqualifications for registration as a patent agent.  A person shall not be eligible to be registered as a patent agent, if he-

• Has been adjudged by a competent court to be of unsound mind;
• Is an undischarged insolvent;
• Being a discharged insolvent, has not obtained from the Court a certificate to the effect that his insolvency was caused by misfortune without any misconduct on his part;
• Has been convicted by a competent court, whether within or outside India of an offence to undergo a term of imprisonment unless the offence of which he has been convicted has been pardoned or unless on an application made by him, the Central Government has, by order in this behalf, removed the disability;
• Being a legal practitioner has been guilty of professional misconduct; or
• Being a Chartered Accountant has been guilty of negligence or misconduct.

Registration as patent agent

Every person who desires to be registered as a patent agent shall make an application in Form 22.   The applicant shall furnish such other information as may be required by the Controller.   The applicant should pass the qualified examination of patent agent.  On receipt of the application the Controller is to verify all details contained in the application and after obtaining any further information as he considers necessary he shall on receipt of specified fee (Rs.3200/- in case of efiling or ₹ 3520/- in case of manual filing) enter the candidate’s name in the register of patent agents and issue to him a certificate of registration as a patent agent.

Duplicate certificate

The Controller may issue a duplicate certificate of registration as patent agent on a request made the registered person along with fee of ₹ 1600/- in case of e-filing or ₹ 1760/- in case of manual filing and contain a statement setting out the circumstances in which the original certificate issued was lost, destroyed and cannot be produced.

Register of patent agents

Section 125 of the Act imposes an obligation on the Controller to maintain a register to be called ‘Register of patent agents in which shall be entered the name, nationality, address of the principal place of business, addresses of branch offices, if any, the qualifications and the date of registration of every registered agent.

The Register of patent agents may be maintained electronically.  Where the register of patent agents is in computer floppies, diskettes or any other electronic form, it shall be maintained and accessed only by the person who is duly authorized by the Controller and no entry or alteration of any entry or rectification of any entry in the said register shall be made by any person who is not so authorized by the Controller.

Copies of register of patent agents shall be maintained in each of the branch office.   It shall also contain specimen signatures and photographs of the persons registered as patent agent.

Rights of Patent Agents

Section 127 provides that every patent agent whose name is mentioned in the register shall be entitled to-

• practice before the Controller; and
• prepare all documents, transact all business and discharge such other functions as may be prescribed in connection with any proceeding before the Controller under this Act.

Restriction on practice as patent agents

Section 129 provides that no person, either alone or in partnership with any other person, shall practice, describe or hold himself out as a patent agent, or permit himself to be so described or held out, unless he is registered as a patent agent or, as the case may be, unless he and all the partners are so registered.   No company or other body corporate shall practice, describe itself or hold itself as patent agents or permit itself to be so described or held out.

For the purposes of this section, practice as a patent agent includes any of the following acts:

• applying for or obtaining patents in India or elsewhere;
• preparing specifications or other documents for the purposes of this Act or of the patent law of any other country;
• giving advice other than a scientific or technical nature as to the validity of patents or their infringement.

Continuance of patent agent

Rule 115 provides that the continuance of a person’s name in the register of patents shall be subject to the payment of fee of ₹ 800/-  or ₹ 880/- as the case may be.

Alteration in the register

Rule 118 provides that a patent agent may apply for the alteration of his name, address of the principal place of business and branch offices, if any, or the qualifications entered in the register of patent agents.   On receipt of such application and the fee specified the Controller shall cause the necessary alterations to be made in the register of patent agents.   Every alteration made in the register of patents shall be published.

Removal of a name

Section 130 provides that the Controller may remove the name of any person from the register of patents when he is satisfied, after giving that person a reasonable opportunity of being heard and after such further inquiry, if any, as it thinks fit to make-

• that his name has been entered in the register by error or on account of mis representation or suppression of material fact;
• that he has been convicted of any offence and sentenced to a term of imprisonment or has been guilty of misconduct in his professional capacity which in the opinion of the Controller renders him unfit to be kept in the register.

Rue 116 provides that the Controller may delete from the register of patent agents, the name of patent agent-

• from whom a request has been received to that effect; or
• when he is dead; or
• when the Controller has removed the name of a person under Section 130; or
• if he has defaulted in the payment of fees by more than three months after they are due.

The removal of the name of any person from the register of patent agents shall be published and shall be where relevant forthwith communicated to the person concerned.

Restoration or name

Rule 117 provides that an application for the restoration of the name of any person removed from the register of patents within two months from the date of such removal in Form 23.   If the name of a person is restored to the register of patent agents his name shall be continued therein for a period of one year from the date on which his last annual fee became due.  The restoration of a name to the register of patent agents shall be published and communicated to the person concerned.

Refusal to recognize as patent agent

Section 131 provides that the Controller may refuse to recognize as agent in respect of any business under this Act:

• any individual whose name has been removed from and not restored to the register;
• any person who has been convicted of an offence under Section 123;
• any person, not being registered as a patent agent, who in the opinion of the Controller is engaged wholly or mainly in acting as agent in applying for patents in India or elsewhere in the name or for the benefit of the person by whom he is employed;
• any company or firm, if any person, who the Controller could refuse to recognize as agent in respect of any business under this Act, is acting as a director or manager of the company or is a partner in the firm.

The Controller shall not refuse to recognize as agent in respect of any business under this Act any person who neither resides nor has a place of business in India.

Publication of the name

Rule 120 provides that the names and addresses of persons registered as patent agents shall from time to time be published.

Savings in respect of other persons authorized to act as agents

Section 132 provides that nothing in this Chapter shall be deemed to prohibit-

• the applicant for a patent  from drafting any specification or appearing or acting before the Controller; or
• an Advocate, not being a patent agent, from taking part in any hearing before the Controller on behalf of a party who is taking part in any proceeding under this Act.