Patent agents are professionally licensed practitioners who have the license to practice before the patent office of the country. The patent agent has a lot of responsibility when it comes to preparation of the document and filing the same before the patent office and also advising with regards to patentability. When it comes to assisting inventors with completing and submitting all patent-application paperwork, patent agents provide all those services efficiently. The role also extends to searching for prior art, writing the inventor's legally enforceable claims of ownership to the invention, revising rejected patent applications. The agents are also the subject matter expertise in their domain.

Each country has different ways to select the agent as per their statutory requirements. The Indian Patents Act 1970 provides a simple definition of Patent Agent under Section 2(n) as a person for the time being registered under this Act as a patent agent. The definition does not prescribe any such role responsibility of the patent agent but as mentioned earlier, the agent will be the one who will be filing the patent application and is legally authorized to practice before the patent office. But certainly after reading the patent act and the patent rule of 2003, one can get an easy inference of the qualification and the procedure for selection of a patent agent.

Position in India

A patent agent becomes registered to practice by filing Form 22 as specified in Patent Rules 2003, accepting of which the agent will be said to have the name added in the Patent Registry maintained by the Controller. Chapter XXI deals with the patent agent in India. Section 125 specifies the registration of the patent agent in India and the controller is expected to maintain the registry for the same. Section 126 specifies the qualification of the Patent agent which says- A person shall be qualified to have his name entered in the register of patent agents if he fulfills the following conditions, namely being a citizen of India with a minimum age of 21 years. More importantly, the agent is expected to have obtained a degree in science, engineering, or technology. Passing the patent agent examination or working as a controller for ten years is specified.

Section 127 and 129 must be read together as the former deals with the rights of the patent and the latter with the restrictions. Section 127 says that: – Subject to the provisions contained in this Act and any rules made thereunder, every patent agent whose name is entered in the register shall be entitled—

  1. to practice before the Controller; and
  2. to 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.

Similarly, Section 129 speaks about the restrictions of the patent agent. It strictly restricts any other person or even the company to hold it as a patent agent until and unless it is registered.

Three Rules of the Patent Rules 2003 specifies the procedure for registering as the patent agent. Rule 109 talks about the application for registration of a patent agent where any person who desires to be the patent agent will make an application in Form 22. Rule 110 talks about the Particulars of the qualifying exam for the patent agent, which says that the qualifying exam shall consist of a written test and viva voce. The written test will consist of the question with regards to the patent act and drafting. After qualifying for the exam, the candidate becomes eligible to be registered as a patent.   

Patent Agents at GPF

Most Patent Applicants seek cost-effective patent filings as they are largely administrative (not including technical claim amendments/review of the patent specification), and therefore may compromise in quality of work/efficient filing by using low-cost providers who may not ensure accurate translation, accurate preparation of forms, and correct filing of documents/details, which subsequently may lead to their rights not being granted, or lead to rights not being enforceable, or lead to a significant increase in expense in correcting the errors. Therefore, it's extremely important to ensure that the Patent Attorneys being used for filing and managing the global Portfolio are thorough, reliable, and have the right experience in handling the subject matter that forms part of the Applicant's portfolio.

Having decades of relevant experience, Patent Agents at Global Patent Filing (GPF) can do due-diligence and file patent applications in compliance with defined legal norms and best practices. With all prosecution being taken care of by an expert, the whole process gets executed timely. In sum, Patent Attorneys and Support Staff at GPF provide a one-stop solution for patent filings, patent translations, and patent portfolio management, which acts as a rejuvenating factor that helps Applicants in the long process of patent issuance and enforcement.

Originally Published by Khurana & Khurana, January 2021

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.