This Article is written by Okunromade Mary Oluwaseyifunmi, of Afe Babalola University during her internship with LeDroit India.
ABSTRACT
The role played by a patent agent in the intellectual property framework is invaluable, as he helps innovators and organizations in obtaining valid rights for their inventions. To ensure expertise, integrity, and professionalism in this regard, there are certain requirements and restrictions for an individual who wants to function as a patent agent.
Generally, an individual has to meet minimum eligibility criteria for becoming a patent agent, which include age, citizenship, required educational expertise in science or technology, and passing the required patent agent examination conducted by the designated authority. This helps ensure the individual has the requisite know-how in science and technology, as well as an understanding of the patent laws, to write patent specifications and represent clients before the patent office.
The scope of work that patent agents can handle is very broad and is at the heart of the patent registration process. This includes advising on patentability, prior art search, preparation and submission of patent applications, response to examination reports, and representation in prosecution and hearings before the patent office. Other than these official and professional functions, patent agents need to uphold strict ethical standards, such as secrecy, diligence, honesty, and loyalty to their clients. The practice of being a patent agent demands a delicate mix of technology and legal knowledge to strike a balance for protecting invention while being in line with the law.
Alongside these requirements and responsibilities, there are also disqualifications in order for the profession to retain its integrity. These include disqualification for registration as a patent agent in instances where a person is found to be of unsound mind, where one is an undischarged insolvent, in cases of conviction for certain offenses related to a crime, or where professional misconduct or negligence has been proven in a related profession. The strict regulation of patent agents in terms of their requirements, responsibilities, and disqualifications is all in a bid to encourage professionalization, protect the interests of inventors, and make way for smooth operation of the patent system.
INTRODUCTION
According to World Intellectual Property Organization (WIPO)2024 defines Intellectual property refers to intangible assets that refers to creation of the mind, everything from works of arts to inventions, computer programs to trademarks and other commercial signs such as, literary and Artistic works, designs and symbols, names and images-used in commerce.
PATENT
A patent is a branch of intellectual property rights like Trademark and Copyright. The word “patent” is derived from the Latin term “patere” which implies “to lay open,” i.e. to make available for public inspection. A patent is a license that confers an exclusive right or title to the owner for a limited or specific period of time to exclude others from making, using, or selling an invention and the violation of these exclusive rights or title of the patent holder is known as patent infringement.
In India, the act that govern the patent is Patents Act, 1970. As defined under the Indian Patent Act 1970, the term ‘patent’ means a patent granted for a new process or product involving an inventive step and capable of industrial application. Patents are exclusive statutory rights granted to the patentee by the government for a limited period in lieu of full disclosure of an invention. They provide a monopoly to the patentee to exclude others from using, making, offering for sale, selling, or importing the patented products. In addition, for a subject matter to be patentable, the criteria mentioned below:
Patentable Subject Matter: An essential consideration for an invention to be patentable is determining if it is related to a patentable subject matter. Sections 3 and 4 of the Patents Act, 1970 explain the non-patentable subject matter. If the invention does not fall under the provisions of Sections 3 or 4, it means the invention has patentable subject matter.
Novelty: Novelty is the central theme in identifying the patent potential of an invention. In simple words, the novelty requirement emphasizes that an invention must never have been published in the public domain. In addition, it must be new with no identical or similar prior arts.
Industrial Applicability: The criterion of industrial applicability is defined in Section 2(1) (ac) of the Patents Act, 1970 as “the invention is capable of being made or used in an industry.” It must have some industrial application, which means there has to be some practical utility to be patentable.
Inventive Steps or Non-obviousness: Inventive step is defined under Section 2(ja) of the Patents Act as “a feature of an invention that involves technical advance as compared to the existing knowledge or having economic significance or both and that makes the invention not obvious to a person skilled in the art.” It means that the invention must not be apparent to a person skilled in the same field the invention relates to. It must be inventive and unclear to a person qualified in the same area.
Specifications: Apart from the criteria mentioned above, another important factor for getting a patent is patent disclosure. The disclosure of a patent means that the patent draft should reveal the invention sufficiently to help a person skilled in the same field as the invention relates to in executing the invention without extra effort. If the patent specification does not enable a person with reasonable skill and knowledge in the concerned field to apply the invention, then a patent will most definitely not be granted.
QUALIFICATIONS FOR PATENT AGENT
A person who does not have a law degree can also become a patent agent by giving the patent agent Examination. Section 126 Prescribes the eligibility criteria for becoming a patent agent, .The Qualification for becoming a patent agent are as follows :
1 He should be a citizen of India: The candidate must be an Indian citizen to register as a patent agent. Foreign nationals are not permitted to practice as patent agents in India, ensuring that the profession serves domestic interests.
2 Educational Qualification
A strong academic background in science or technology is fundamental to becoming a patent agent. The essential qualifications are:
Science or Engineering Degree: Candidates must possess a degree in science, engineering, or technology from a recognized university in India or abroad. Fields such as physics, chemistry, biology, biotechnology, computer science, and mechanical or electrical engineering are commonly acceptable.
Equivalent Qualifications: Equivalent qualifications in technical fields may also be considered, provided they align with the requirements of the Indian Patents Act, 1970 and are recognized by the appropriate authorities.
This technical qualification ensures that patent agents can comprehend complex scientific principles and assist inventors in drafting and prosecuting patent applications.
3 Qualifying Patent Agent Examination
The Indian Patent Office conducts a patent agent examination periodically, which is a mandatory requirement for all aspiring patent agents. The examination evaluates the candidate’s understanding of patent law, drafting skills, and procedural knowledge. The examination process is as follows:
Structure of the Exam:
Paper-I: Focuses on the Indian Patents Act, 1970, and the Patents Rules, 2003. This theoretical paper tests candidates on legal provisions, definitions, and procedural knowledge.
Paper-II: Tests practical knowledge, including the drafting of patent specifications and responses to examination reports.
Viva Voce (Oral Examination): Assesses the candidate’s communication skills, understanding of patent laws, and ability to interact with clients and patent officials.
Eligibility to Appear:
Candidates with the required technical degree and Indian citizenship can apply for the examination.
Applications must be submitted within the specified timeframe along with the requisite fee.
Passing Criteria:
Candidates must achieve a minimum qualifying score in each component of the examination (e.g., Paper-I, Paper-II, and Viva Voce) to be declared successful.
4 Registration as a Patent Agent
After successfully passing the patent agent examination, candidates must apply for registration with the Indian Patent Office. The steps involved include:
Submission of Form 22: The candidate must submit a duly filled Form 22, which serves as an application for enrollment as a patent agent.
Payment of Fees: The prescribed fee for registration must be paid, as determined under the Patents Rules.
Issuance of Registration Number: Upon approval, the candidate is assigned a unique patent agent registration number and included in the Register of Patent Agents.
5 Maintaining Patent Agent Status
Once registered, patent agents must adhere to certain ongoing requirements to maintain their status:
Compliance with Professional Conduct: Patent agents are expected to follow ethical practices and act in their clients’ best interests.
Payment of Renewal Fees: Patent agents must periodically pay renewal fees to continue their registration.
Updating Details: Any changes in address, contact details, or qualifications must be promptly updated with the Indian Patent Office.
Exemptions for Lawyers
Practicing advocates who meet the technical qualification requirements and pass the patent agent examination may also register as patent agents. However, not all advocates qualify automatically; they must fulfill the scientific or technical degree criterions
6 His Age must be 21 or more than 21 years:
One of the basic requirements for registration as a patent agent is age .. The law requires that a person must be at least 21 years old before he or she can be registered as a Patent Agent That is the person must have gotten to the age of 21 years at the time of applying for registration; and anyone that is below 21 years is not eligible, regardless of their educational or professional background.
The purpose of this is to ensure that a Patent Agent has gotten to a reasonable level of maturity and responsibility, since the role involves handling intellectual property matters, advising inventors, and dealing with legal and technical documentation.
DUTIES OF PATENT AGENT
Agent is a professional person who is entitled to draft and file an agent application on behalf of his client which can be the applicant or inventor of a product or process. A patent agent is a person whose name has been registered in the register of patent agents maintained by the patent office.
The duties of patent agents encompass various aspects of patent law and practice. Here are the key responsibilities
Patent Drafting
Patent agents draft patent specifications, ensuring that the description, claims, and drawings meet the technical and legal requirements specified under the Indian Patents Act, 1970.
Filing Patent Applications
They file patent applications with the Indian Patent Office, whether it is for a provisional, complete, or international patent under the Patent Cooperation Treaty (PCT).
Representation Before the Patent Office
Patent agents represent applicants during patent prosecution, which involves addressing objections, filing responses, and ensuring compliance with patent regulations.
Advising Clients
Patent agents offer advice on patentability, freedom-to-operate searches, and the scope of protection available under Indian patent law.
Opposition and Revocation Proceedings
In cases of opposition or revocation proceedings, patent agents prepare and present arguments to defend or challenge patents.
Renewal and Maintenance
Patent agents assist in renewing patents by filing requisite forms and paying fees to ensure continued protection.
DISQUALIFICATIONS OF PATENT AGENT
Section 114 of the patents rule provides the disqualifications of a patent agent. If any of the disqualification is present with the patent agent, he will be disqualified from all his right given by the act. A person shall not be eligible to be registered as a patent agent, if he
(i) has been adjudged by a competent court to be of unsound mind; (ii) is an undischarged insolvent;
(iii) 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;
(iv) 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;
(v) being a legal practitioner has been guilty of professional misconduct; or
(vi) being a chartered accountant, has been guilty of negligence or misconduct.
CONCLUSION
Patent agents play a vital role in the intellectual property system as they act as a link between inventors and the patent system. This is because, as a result of their services, creative innovations get proper legal protection. As mentioned earlier, applying for patent agent status in India involves requirements that aim at ensuring that patent agents possess technical, legal, and maturity knowledge. These requirements include being a citizen of India, having educational attainment in scientific or technical courses, passing the patent agent examination, registration with the Patent Office, and being at least 21 years old. The requirements ensure that only qualified individuals take part in this important role.
However, the duties of a patent agent are very broad and require utmost technicality and legal know-how, from the preparation and prosecution of patents to representing an aggrieved client before the Patent Office. Another very significant aspect of patent agents is the disqualifications stipulated under Rule 114 of Patents Rules, 2003, which ensures that the image of the profession is well-guarded from persons who engage in malpractice, insolvency, or incapacity. Notably, the rules and regulations under which patent agents operate ensure professionalism and proper enforcement of patents in India.
