Patent Agent: Rights and Obligation at IPO

A patent is an exclusive right granted for an invention. The key characteristics of an invention to be patentable are defined under the Patents Act of 1970, as novelty, utility, and non-obviousness. The patent is granted to any person claiming to be the true and first inventor of the invention or to any person being the assignee or legal representative of the person claiming to be the true and first inventor in respect of the right to make an invention.

WHO IS A PATENT AGENT

A person who helps you file a patent application is a patent agent. A person becomes a patent agent when registered and authorized by law to practice before an Indian Patent Office. As per Section 2(1)(n) of the Patents Act, 1970, patent agent is defined as “a person for the time being registered under the Act as a patent agent.”

Any individual having the legal and technical expertise needed to draught and submit a patent application is referred to as a patent agent. The process of preparing a patent application involves creating the necessary paperwork, composing the application, etc.

A patent agent serves as a liaison between the patentee and the patent office by assisting the patentee in making his invention patentable and submitting the necessary application to the patent office for the protection of the invention. The agent must be registered, though, in order to work as a patent agent.

REGISTRATION AND QUALIFICATION OF A PATENT AGENT IN INDIA

Registration of 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.
A person desirous to appear in the qualifying examination under rule 110 shall make a request to the Controller along with the fee specified in the First Schedule after announcement of such examination and within the period as may be specified in the announcement.
All matters relating to registration and subsequent procedures regarding patent agents are dealt by the Office of the Controller General of Patents, Designs and Trademarks, Mumbai

Qualification of a Patent Agent –

According to section 126 of the patent act 1970 – If a person meets the requirements listed below, they are eligible to have their name added to the register of patent agents:

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 in this behalf, and, in addition,—
(i) has passed the qualifying examination prescribed for the purpose; or
(ii) has, for a total period of not less than ten 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 under the Patent act.
Despite the provisions of sub-section (1), anyone who was registered as a patent agent prior to the effective date of the Patents (Amendment) Act, 2005, is allowed to maintain that registration or be reregistered as a patent agent upon payment of any applicable fees.

RIGHTS GRANTED TO A PATENT AGENT

According to section 127 of the Patent act, a patent agent is entitled to:

practice before the Controller; and
prepare all documents, transact all business and discharge other functions in connection with any proceeding before the Controller under the Act.
apply for or obtain patents in India or elsewhere;
prepare specifications or other documents required under the Act or of the patent law of any other country;
giving advice related to the validity of patents and their infringement.

DUTIES AND RESPONSIBILITIES PERFORMED BY A PATENT AGENT

The primary role of a Patent Agent is to help a client secure legal protection for his or her invention by filing a patent application and prosecuting the same to registration. Such registration may be in the client’s country of residence or principal place of business or abroad.
Patent Agents act as legal representative on behalf of a client in connection with any matter or proceeding before national or regional Patent Offices and may draw and sign all documents and make all communications between a client and the Patent Office and may represent a client at all attendances before the Patent Office.
A patent agent’s primary responsibility is to assist inventors in transforming their ideas into patentable inventions that may be submitted as patent applications in accordance with national regulations.
A patent agent’s other duties include opposition preparation and filing, management of patents, FTO/infringement analysis, patent writing, prosecution in the patent office for patent grants, opposition preparation and filing, and IP enforcement. From the conception of an idea to the enforcement of a patent, patent agents were extremely significant. A Patent Agent is permitted to act on behalf of the Patentee under the Indian Patent Act of 1970, carry out business assignments, and represent the Patentee in person at the Patent Office.

OBLIGATIONS OF PATENT AGENT TOWARDS IPO

Restrictions on Practice as Patent Agents

According to Section 129 of the Patent act, it is stated that: –

Only a person registered as a patent agent is authorized to practice. In the case of a partnership, the firm may be described or held out as Patent Agent, only if all of the partners of the Firm are registered as patent agents. No company or other body corporate shall practice, describe itself or hold itself out as Patent Agents or permit itself to be so described or held out.

The rights of a patent agent are not absolute and are subject to certain restrictions. The various restrictions on the practice as a patent agent are as follows:

No person can practice, describe or hold himself out as a patent agent whether alone or in partnership nor permit himself to be so described unless he or his partners are registered as a patent agent;
No company or body corporate can practice, describe or hold itself out as a patent agent nor allow itself to be so described.

Removal of Patent Agents from the Register

If the Controller is satisfied and after conducting any additional inquiries that the Controller deems appropriate, the Controller may remove the name of any person who is enrolled as a patent agent from the register after providing that person with a reasonable opportunity to be heard. The name of a person may be removed from the register in the following situations:

when the name was entered incorrectly because of a misrepresentation or suppression of a material fact;
when the person has been found guilty of an offense and received a prison sentence; or when the person has engaged in misconduct in his or her professional capacity that, in the Controller’s judgment, disqualifies him from remaining on the register.
However, a person whose name had been removed from the register can be restored to the register of patent agents on an application and on sufficient cause being to the Controller.

Power of Controller to refuse to deal with certain agents

Under section 131 of the patent act 1970, the Controller has been given the power to refuse from recognizing a person as a patent agent in respect of any business under the following circumstances:

where a person’s name has been removed from the register of patent agents and has not been restored to the register;
where a person has been convicted of any offense under section 123 of the Patent Act,
where a person who is not registered as a patent agent, is in the opinion of the Controller engaged in acting as an agent in applying for patents in India or elsewhere in the name or for the benefit of the person by whom he is employed, wholly or mainly,
where the Controller refuses to recognize any person, company or firm who is acting as a director or manager of the company or is a partner in the firm, as an agent with respect to any business under the Act;
where a person neither resides nor has a place of business under the Act, in India.

Thus, where the Controller is of an opinion that a person should not be recognized as a patent agent in relation to any business under the Act, the reasons for such refusal should be communicated to that person, and also be directed to show cause as to why the Controller should not refuse to recognize him as an agent. The Controller may pass such orders which he deems fit after considering the reply of the person and giving him an opportunity of being heard.

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