India: Can Advocate Be Patent Agent? An Underlying Standard In The Indian Patent System

Last Updated: 27 September 2013
Article by Aayush Sharma

In Indian patent system, role of a patent agent is very important starting from filing to grant and from drafting to hearing. Each aspect of Patents can be fulfilled by patent agents. The Patents Act, 1970 illustrates in brief about patent agents duties and their eligibility. In considering the eligibility of the patent agent, two amendments have already been made which successfully clear the scope of patent agents in India. However, an IP lawyer filed a Writ Petition under Article 226 of the Constitution of India before the Madras High Court, seeking for issuance of a Writ of Declaration, declaring that the amendment introduced to Section 126 of the Patents Act, 1970, by Section 67 (a) of the Patents (Amendment) Act, 2005 (Act 15 of 2005) is illegal, unconstitutional, ultra vires and void. This article highlights the judgment given by the Madras High Court and its effects in the Patent system

Case: In S. P. Chockalingam vs Controller of Patents1, the Madras High Court in its remarkable decision held the amendment to Section 126 of the Patents Act, 1970 "illegal, unconstitutional, ultra vires, void and unenforceable" which prescribes the qualifications for registration as patent agents. Such decision laid down a new possibility for handling all the patent related matters other than patent agents.

In one of the views of the Madras High Court, being enrolled as an advocate is actually a better qualification than the patent agent examination for considering one as a patent agent conducted by the Indian patent office. According to the court, the amendment to section 126 of the Indian Patents Act, 1970 was considered "illegal, unconstitutional, ultra vires, void and unenforceable" which allows advocate to register them as patent agent and to fulfil all the patent related work as by the patent agent.

What exactly is Section 126 of The Patents Act , 1970?

The original Section 126 read as follows:

"Section 126. Qualifications for registration as patent Agents

  1. A person shall be qualified to have his name entered in the register of patent agents if he fulfils the following conditions, namely: -

    1. he is a citizen of India;
    2. he has completed the age of 21 years;
    3. he has obtained a degree from any University in the territory of India or possesses such other equivalent qualifications as the Central Government may specify in this behalf, and, in addition,-

      1. is an advocate within the meaning of the Advocates Act, 1961; or
      2. has passed the qualifying examination prescribed for the purpose;
    4. he has paid such fee as may be prescribed.
  2. Notwithstanding anything contained in sub-section (1), a person who has been practicing as a patent agent before the 1st day of November, 1966 and has filed not less than five complete specifications before the said day, shall, on payment of prescribed fee, be qualified to have his name entered in the register of patent agents."

Now understanding the clear scope of the section 126 it states that: any person who is eligible for patent agent examination and later qualifies the examination conducted by the Patent office was only considered as the patent agent and was awarded with Indian patent registration number and he who is responsible for all the patent related matters starting from filing to grant or to hearing of the patents in front of the controller. From the Act we clearly observed that the two categories of individuals currently act as patent agents. Firstly, those composed of advocates & secondly those who possessed a degree in "science, engineering/ technology" and who had cleared a qualifying exam. Earlier to this, the section was first amended in 2002 replaced the phrase "degree of any university" with "degree in science, engineering or technology" in section 126(1)(c)(i)2. Again in the year 2005, the Act was amended and section 67(a) of the Patent (Amendment) Act, 2005 deleted section 126(1)(c)(i).

Further if this section is amended then advocates can become patent agents directly without any additional requirements provided they meet the new requirements i.e. a degree in science, engineering or technology.

Contentions of the case

Mr. SP Chocaklingam, who is an advocate, patent practitioner and the petitioner in this case, filed the writ petition in the year 2006 before the Madras High Court. The petitioner who was deemed ineligible by the Indian Patent office to appear for the Patent agent examination in accordance with Section 126 of the Patents Act. The petitioner challenged the 2005 amendment of the section 126 of the Indian Patents Act, 1970. According to him the amendment is illegal, unconstitutional, ultra vires and void.

The petitioner contended that, the amendment was unfair in nature of the fundamental right guaranteed under Article 14, 19 (1) (g) and 21 of the Constitution of India and also not beneficial to the interest of the common people of the country.

Secondly, the petitioner contended that such amendment prevents the knowledge oriented advocates who are more qualified in drafting and preparing documents before the Controller of Patent, rather than permitting only such qualified candiates holding degree in science, engineering and who passed the Patent agent examination conducted by the respondent (Indian Patent office) to act as patent agent. According to the petitioner, such amendments are the violations of the profession of legal practitioners against the Advocates Act, 1961, within the purview of Article 14 or as an reasonable restriction under fundamental rights guaranteed under Article 19 (1) (g) of the Constitution of India. The petitioner argued that the advocates who are well qualified in drafting related matter have to depend on the other professionals or patents agent for drafting, filing and appearing before the Controller of Patents, hence, the amendment is in violation of Article 21 of the Constitution of India.


The Madras High Court in its judgment focused on the Patents Act, 1970, 2005 amendment and not only criticized the said amendment but also said that the qualifying exam conducted by the Respondents was placed over a law degree in terms of qualifications.

In its judgement the court said that for all patent related matters, neglecting the auspiciousness of the advocates and considering the certain group of peoples to act as agent was considered to be unreasonable and against the interest of the general public of the country. The court held that any advocate holding degree in engineering, science or technology would be eligible for registering himself in the register of patent agent and to be act as the patent agent who deals with all related matters such as drafting, filing and hearing etc. for the patent in the country.

Such decision of the court would be a historical in its kind and this will really gained the demand of more IP skilful people in the industry. This might result in the formation of a strong IP environment in the country and the establishment of state of the art patent application which are crafted with Patent art and by skilled persons.


1 MIPR2013(2)39


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