#LexCampus #LexCampusQ&A #PatentAgentExamTraining #PatentsAct1970
For a FREE copy of the Patents Act 1970 in bi-colour version – 2020 Edition – Fully updated with Patent Amendments 2019, please visit [ Ссылка ]
For starting your Patents career on a solid foundation, check out our proven courses here: [ Ссылка ].
Question: I am a technical advisor in a company, if I clear the Patent Agent Exam, it is mentioned in section 129(1)(c) that the Patent agent can't give the technical advice, please clarify: it is there in section 129 (1)(c). Restrictions on practice as patent agents: giving advice other than of a scientific or technical nature as to the validity of patents or their infringement.
Answer: Now this is an interesting question and I had answered this before but because it could be of some importance to people I will answer this again.
Now what this tells us, that a patent agent cannot be a subject domain expert, that’s not expected from us. The subject domain expert, say it biotechnology, aeronautics, is a scientist, who is doing cutting edge work, who knows the prior art like a person who is there in that field, and who is capable of coming up with an invention. A patent agent may have some basic knowledge of aeronautics or some basic knowledge of biotechnology or he/she may not even have a basic knowledge because you could have a degree in physics and you could still file applications in biotechnology there is no bar. Try to understand that because the patent agent needs to be qualified in only one field of science, they are not expected to contribute to the technological side of the invention. Their job is only to collect the information that comes from the inventor or inventors, process them in a manner in which the patent office would be interested in looking at, because we have forms, we have rules, we have various other things which has to be satisfied and present them, and cover the objections that can come from the patent office so that the patent can get granted. The patent agents cannot grant technical advice. Okay that’s one thing. The second issue that comes in, which is also the same, they can grant advice other than scientific or technical, which is tied to that, which the provision says. “and grant advice other than of a scientific or technical nature.” Now what is advice that is other than of a scientific or technical, which is legal, let us be very clear about that and legal in the sense that we are not talking about general legal advice, legal in the sense of the advice that can be given with regard to the patent act and patent rules, which is what you will be tested in your patent agent exam. So if there is a question with regard to validity of patent, if there is a question with regard to interpretation of patent, if there is a freedom to operate opinion that is required these are the places where a patent agent can give advice. So the patent agent cannot give advice on scientific or technical nature because as I said an agent may be qualified in a particular discipline of science and he may be prosecuting or drafting a patent in a different field of science altogether. Now this is slightly more complicated than what it appears, because when we say that validity of patent or advice with regards to infringement or advice with regard to what we call freedom to operate opinions that is essentially a legal analysis. Freedom to operate opinion you have to construct the claim, you have to claim interpretation, and then you will have to determine the scope of the claim, you have to look at prior art and say where the prior art stops and where the invention begins, so essentially what you will be doing in a freedom to operate opinion you will be looking at case laws, you will be looking at practice, you will be looking at claim interpretation in great detail and then giving an opinion based on that. That borders on pure legal work, but it is not a legal work which lawyers alone can do, you need to have sufficient training in patent law to do that. In that sense, the patent agent’s advice has to be related to prosecution and drafting. Matters pertaining to prosecution, matters pertaining to drafting, and in some jurisdictions you will find that the patent agents are also qualified in law. Many patent agents in US are JDs, they have a basic degree in law, they have a scientific degree and they qualified the patent agent exams. That makes them dually qualified to do it, but in India, whatever opinion you give on a freedom to operate tomorrow it will be questioned when it comes to a court of law. So in the court of law, again you are going to face judges who are legally trained who are not patent agents, so again as I said this is an evolving issue and we still don’t have very clear answers on it at least from the courts.
