Post TRIPS and WTO India’s journey to intellectual property compliance has not been an easy one. In particular patent reform has been triggered by panel rulings against India in the dispute settlement body that articulate the ambivalent approach followed by the government. ¹ As there is some evidence of the tumultuous activity at the government level², it is worthwhile to examine patent activity effectively taking place. A patent is granted by the national patent office as patent law is territorial in its application while the World Intellectual Property Organization (WIPO) administers Patent Cooperation Treaty (PCT) provides for the filing of a single international patent application which has the same effect as national applications filed in several designated countries. Patent activity may be examined in a number of ways: Study of industry that is involved in patenting, information from the patent office, etc. In this paper, an analysis of the activity of patent agents’ has been undertaken to determine the extent and type of patent activity taking place in the country.
Patent, TRIPS, WTO, PCT, patent agent, patent activity
Patent agents involved in patent activity i.e., for processing patent filing, patent grant and patent renewal procedures work with the Office of the Controller General of Patents, Designs and Trade Marks that grants patents under the Indian Patents Act, 1970. Many law graduates function as patent agents. But at present subject specialists in various sciences e.g., Chemistry, Physics, Biotechnology etc. work as patent agents after qualifying an examination conducted by the Office of Controller General of Patents and Trademarks.
Data on patents filed and obtained by patent agents on select industry categories has also been analysed. Patent agents’ perceptions of purpose of patent filing by firms and reasons for firms not filing patents have also been recorded. The ratio of patents filed as an outcome of shop-floor innovations and innovations based on R&D have been examined.
The difficulties reported by patent agents in patent filing along with percentage of filing of patents for individual and academic institution inventors and number of years of experience of responding patent agents have been explored.
Role of Patent Agents
A patent agent has legal and technical skills to define correctly ‘scope of patent and extent of the claims’. In the late nineteenth century, it would have been difficult for any aspiring patentee, however scientifically and technically qualified and experienced, to prepare a sound specification without support of competent and experienced counsels; they too had to depend on the assistance of people who could conjugate complexity of technical subject- matters with thorough knowledge of the legal procedures. It was in this period that patent agents established themselves as a new institutionally recognized profession, and a network of lawyers and consulting engineers emerged who specialized in dealing with patent litigation and industrial controversies in relation to the control of inventions. At the end of the nineteenth century, a degree in science or engineering was becoming more common as one of the hall-marks of the curriculum of a patent agent.
Primary data for this study was collected from all registered patent agents through a structured questionnaire. The information on subject matter of filing of patents by patent agents was taken on industry product categories of the industry product codes used in the National Industry Classification for 3rd Census of Small-Scale Industries that were clubbed to reflect the following industry groups for collection of information from firms. Thus, the requisite information was obtained from the patent agents regarding patent filing in the product categories viz. motor vehicle, transportation, automotive components; electrical/electronic/telecom equipment/medical instruments; machinery, fabricated metal products, tools & gauges; drugs, pharmaceutical & chemicals; biotechnology; rubber and plastic; food and food processing; textiles, garments, accessories, leather and leather goods; non-metallic/ ceramics/ wood/ paper products; and others.
There are 700 patent agents registered in India as on 31 March 2006. During the course of gathering information from these patent agents, it was observed that a large number of registered patent agents were inactive. A number of patent agents had changed residence and place of address as specified in the web-site of the Government of India. Out of these 700 patent agents, 110 were inactive, 86 were not involved in the patent activity and only 56 responded to the questionnaire regarding the patenting activity.
How to become a Patent Agent?
A person who is qualified to prosecute patents (i.e. drafting and filing a patent application) is known as a patent agent. Given the fact the drafting a patent requires specific technical as well as legal knowledge, only a person qualified in both domains will be able to fulfill the obligations of patent prosecution. In India, a patent can be prosecuted through a registered Indian patent agent. Section 126 of the Indian Patents Act, 1970 envisages the qualifications for becoming a patent agent.
The statutory requirements for becoming a patent agent are:
- Be a citizen of India;
- Have completed the age of 21 years;
- Have obtained a degree in science, engineering or technology from any University established under law for the time being in force in the territory of India.
- Have passed the qualifying exam prescribed for the purpose.
The qualifying exam stated in point (d) is the Patent Agent Exam that is conducted every year by the Controller General of Patents. Passing this exam is a must in order to qualify as a registered Indian patent agent.
From the preceding listed qualifications, two things are absolutely clear:
- In order to become a patent agent, a degree in law is not required. A degree in science, engineering or technology is a must.
- An individual with a degree in law does not automatically qualify as a patent agent unless he meets the above requirements.
The responses of patent agents and the information contained therein are valuable as this number is obtained from the whole population of patent agents registered in the country. The information from patent agents reveals that biotechnology firms file and obtain maximum number of patents while in textiles, garments, accessories, leather; and non-metallic/ ceramics/ wood/ paper products, the patents filed are zero. Therefore, patent activity seems to be linked to the type of industry category to which a firm belongs.
Examination of patents filed and obtained for product patents, process patents and product plus process patents it is seen that process patents filed and obtained are significantly higher than product patents or product plus process patents indicating that incremental improvements are the forte of Indian firms. This finding also shows that firms are still carrying the load of allowances under the Indian Patents Act 1970 where only process patents and product patents for certain subject matters were recognized. Firms are yet to break away from this erstwhile system taking the leap for product patents. Information from patent agents illustrates small firms are more active in patents obtained over patents filed than medium firms; on this criterion these firms are next to large firms.
The main purpose of filing for patents as recorded by patent agents is to protect new technology, while developing competitive advantage is only at the third position. Firms appear to look at their balance sheet in taking a decision whether to file a patent or not. Indian industry does not seem to be exploiting the patent system for monetary gains. It appears that firms would be willing to patent their inventions and technical know-how if they knew what to patent. This inference calls for a robust policy initiative for enhancing awareness of patenting activity in firms.
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