A Report on Patent Agent Examination

By- Asif Razzaq

asifrazzaq@biofin.net

• Patents are today considered as best Intellectual Property assets by corporates to explore new avenues.

• Indian Patent Office receives more than 40000 (approx) applications every year

• Most of the MNCs/Corporates are considering India as the Research Hub. Example:– Microsoft World Research Centre– Intel World Research Centre– Dow Chemicals USA world research centre– DuPont world research centre– Many more…

• There is an enormous requirement of qualified Patent Agents in India.

– Published article in Business Standard News Paper

• Not only having knowledge of Patent Law but acquiring certification as Qualified Patent Agent is must for career prosperity.

• Today Patent Agent Qualification is considered as a professional practicing career.

• Patent Agents are employed in most of the corporates having R & D background to check the inventions developed, infringement activities of their routine procedures etc.,

• Most of the MNCs/corporates prefer the R & D employees with certified Patent Agent qualifications for examining patentability of inventions, filing procedures, drafting specifications etc. as a part of their R & D job.

• Most of the organizations established for research will prefer & impart prominence to the Certified Patent Agents and consider their reports as authentic.

• Qualified Patent Agents are given high importance over the persons having mere knowledge of Patent Law among the corporates, R & D units, other business segments etc.,

– Because, their opinions are considered as authoritative under the Patent Act.

– They can advice patentability of an invention.– They may also give opinions to the Courts in cases required.– They are the authorized persons to take-up the prosecution

of patent applications.– They are authorized persons to give non-infringement

opinions to the corporates.

• Independently practice Patent Law being consultant to several companies.

• Advisors to the Corporates in the matters of IP.

• Join the law firms as the Patent Agent / Technology Specialists.

• Work as Drafting specialist in the field of expert/ Patent Engineers.

• Join LPO / KPO as knowledge specialists, Patent Search & Landscaping experts.

• IP Managers in corporates managing Patent Portfolios.

• Pharmaceutical & Chemical Industries

• Information Technology Companies

• Biotechnology Companies

• Automotive Industries

• Electronics & Electrical Industries

• Aviation & Space research organizations

• Research based Universities

• Defence services (DRDO, DRDL and other Defence research wings)

• Agriculture, Seed & Fertilizer Industries

• IP facilitation centers like TIFAC, GIAN, SRISTI, TNTDPC, NIF, CIIE, RIN, etc.

• Legal Outsourcing Companies / Knowledge processing centers

• Law Firms-Corporate Law Firms

• Patent Search organizations

• Govt. institutes like CSIR, CCMB etc.,

• International bodies like World Intellectual Property Organizations (WIPO) and other UN bodies.

• Indian Patent Offices

• Practice with the Patent Offices in India.

• Prepare all documents, transact and discharge functions in connection with any proceeding with the Patent Office relating to a patent application.

• Eligible to apply for Patents or obtaining patents in India or elsewhere.

• Authorized to prepare specifications of patents or other documents relating to Patent Prosecution.

• Authorized to provide opinion on the validity of patents, patentability of the inventions or infringement matters.

• Advocates are restricted from practicing other than taking part in hearing before the controller.

• Persons having any Law Degree (or) PG-Diploma (or) Post Graduation (or) Graduation in IPR are not allowed to practice unless they are certified as Patent Agents.

Registered Patent Agents (normally called as Attorneys) are only people authorized to practice Patent Law (Section 127 of Patent Act, 1970)

(a). Citizen of India & completed the age of 21 years, and

(b). Has obtained a degree in science, engineering or technology from Indian Universities, and

(c). Has passed the Patent Agent qualifying examination conducted by Govt. of India.

• Who conducts Patent Agent Exam ?

Controller General of Patents & Trademarks under the Section 126 of the Patent Act.

Normally notification will be issued in April and November of each year (yearly twice)

Centers will be Chennai, Mumbai, New Delhi & Kolkata.Exam pattern will be of

Paper – IPaper – IIViva-voce

• Paper – I consists of: Marks : 100– Patent Act, 1970– Patent Rules, 2003

• Paper-II consists of: Marks : 100– Patent Drafting– Prosecution procedures

• Viva-voce Marks : 100– The Patent Act, 1970– The Trademarks Act, 1999– Copyrights Act, 1958– The Geographical Indication Act, 2000

To pass this exam one should get minimum 50% marks in each subject and in total 60% marks aggregate to qualify as a Patent Agent.