18 March 2013Patents

India allows advocates to file patents again

Indian legal practitioners are free to file patent applications regardless of their educational background, following a ruling at the Madras High Court on Friday.

The court ruled that patent agents no longer need a science, technology or engineering degree to file applications before the Indian Patent Office. Instead, anyone classed as an advocate has the right to work as an agent.

If upheld on a likely appeal, the ruling would see a return to the 1972 to 2003 era when, before an amendment to The Patents Act, advocates were allowed to file patent applications.

In 2006, a lawyer named SP Chocaklingham challenged the patent office after it refused him entry for a patent agent’s exam because he didn’t have the requisite science, technology or engineering degree.

He argued that it was unconstitutional to forbid lawyers from becoming patent agents, noting that advocates can defend patents before the office at the moment.

In response, the office argued that science, technology and engineering degrees were mandated by the Agreement on Trade Related Aspects of Intellectual Property Rights (TRIPS), an international agreement that sets minimum standards for regulating IP.

While Friday’s decision has not yet been published, the Madras High Court sided with Chocaklingham by ruling that anyone classed as an advocate can now file an application. Existing patent agents can continue to file applications.

Dr Mohan Dewan, principal at law firm R.K. Dewan & Co in Mumbai, said the patent office is likely to appeal against the decision, probably to the Supreme Court.

“The ruling is not good,” he said. “It’s a superficial ruling that should have been more balanced. The lawyers arguing on behalf of the patent office can’t have done their job right.”

Dewan also said the patent office’s argument that science, technology and engineering degrees are mandated by TRIPs was weak and “totally off the mark”.

Deepak Vaid, a lawyer at Surana & Surana International Attorneys in Chennai (Madras), said though he has not seen the judgment, the ruling will not lower the standards of patent quality.

“Advocates were filing and prosecuting patents before the amendment [to the law]. Patent quality standards would be lowered only if the quality of patent examiners and the examination of patents was lowered.”

Vaid said one of the major benefits of the ruling is that the price of services available to patent owners will be more competitive because of the increase in qualified agents. “Other benefits and implications can be known only on a review of the judgment,” he added.

Meanwhile, the Intellectual Property Appellate Board has yet to publish its decision – handed down on March 4 – that dismissed German pharma company Bayer’s appeal against a compulsory licence. The ruling allows Indian generic company Natco to continuing selling cancer drug Nexavar at 8,800 rupees ($175) for a month’s dosage, rather than Bayer’s 280,000 rupees ($5,500).

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