Origiin Newsletter March 2013

7/29/2019 Origiin Newsletter March 2013

1/7

All rights reserved (c) Origiin IP Solutions 2013

x

this issue

it necessary to be a Patent Agent?P.1

atent Talk: Vidhu Khare .P.4

teresting patent of the monthP.5

News Bulletin .............P.6

ews from Indian Patent Office. .P.6

ass room training for Indian Patent Agent

xamination 2013 ......P.7

A monthly

Newsletter

on issues

relating to

Intellectual

Property

Rights

S U E ( V o l u m e )

MONTH

March

YEAR

2013

2 (2) Origiin Newsletter

Is it necessary to be a Patent Agent?Anil Kulkarni and Bindu Sharma

The provisions relating the patent agents

have been comprehensively amended in

2002 amendment enforced from 20th May

2003. One of the most commonly asked

questions is whether is it important to be

patent agent especially when there is huge

scope for people who are expert in patent

searches, who may or may not be patent

agents. In this article, let us analyse whocan be a patent agent, what are advantages

of the same and how job prospects enhance

if one is a patent agent?

Patent specification required to be filed for

obtaining a patent is invariable termed as a

techno-legal document as it is a

combination of technical description and

the claims, which are purely legal in

nature. The patent specification discloses

technical details of the invention and

defines the scope of the invention by

restricting legal rights to the claims.

Since by nature, a patent is a technical

document, in order to draft patent

specifications, one needs excellent

writing skills and expertise as well with

deep understanding of the subject matter

and a sound knowledge the patent law.For a person to work in the area of

patent law, he has to have cocktail of all

these attributes.

Who is a patent agent?

Technically/legally speaking, a patent

agent is a person so registered under the

Patents Act. However, in practice a

Patent Agent is a person, who is the link

between an inventor and the patent

authorities, such as, the Controller, who

facilitates the work of grant of patent by

assisting the inventor, the Controller or

his subordinate officials. He has

exclusive right to do certain acts in the

process for obtaining a patent and has

exclusive right to practice before the

Controller.

Contact us

#35, First Floor

First Main

Vysya Bank Colony

BTM 2nd Stage

Bangalore-560076

Email: [email protected]

ebsitesww.origiin.comww.origiinipa.com

ogsp://origiinipae.blogspot.comp://inventorshub.blogspot.com

ditorsita Kaliahira A

The role of a patent

agent has been a source

of curiosity since

enactment of the Patents

Act 1970 (the Act).


2/7


A Patent Agent is also allowed to appear before Indian

Patent Office with respect to the PCT National Phase

applications from foreign applicant.

A Patent Agent should have thorough knowledge of the

Patent Act and rules, Patent Co-operation Treaty

provision and prosecution therein and also comparative

knowledge of the procedures in other important countries

such as United States, European Union, Japan and China

etc.

Who can become a patent agent?

A person for being eligible to register himself in the

register of the Patent Agents under the Act must have

qualification prescribed under section 126. These

qualifications are as follows:

The person shall be a citizen of India;

He must have completed 21 years of age;

He shall possess a degree in science, engineering or

technology from recognized university or other

equivalent qualification as prescribed by the

government; and Should have passed the qualifying examination

conducted by the Indian patent office or should have

worked as examiner or discharged functions of

controller for not less than ten years.

Additionally, he also must have paid such fee as

prescribed. The act does not define the degree in science,

technology or engineering, hence, these terms are open to

interpretation. The equivalence of qualification should be

as per notification made by the government in this regard.

For example there are degrees awarded by universities in

certain subjects like mathematics, statistics and

geography, in both science and arts.

The diploma holders in engineering or bachelors degree

in engineering from a foreign university, who are equally

knowledgeable as graduates are not allowed to appear.

Their case needs to be considered sympathetically by the

Government. Prior to 2002 amendment, there was no

such restriction.

The restriction though well intended must also take into

consideration of various diploma holders in science,

technology and engineering who may be equally learned

in science, technology and engineering but might not get

opportunity to be a bachelor for various socio-economic

reasons.

However, one must understand that

being a patent agent is not everything.

There are several proceedings under

the Act which take place in the courts

and being an Advocate is always of

great advantage. Even if one does not

wish to practice in courts, in addition topatent law, sound knowledge of law of

interpretation, contracts, Indian

Constitution is of great value to attain

better hold on the subject.

Those agents who are already registered before the

amendment shall continue to be registered so irrespective

of their qualifications, provided that payment of renewalfees is made. Before 2002, amendment came into force,

any advocate under the Advocates Act could register

himself as a patent agent, without appearing for the

qualifying examination, however after the amendment

came into force on 20th May 2003, even an Advocate also

needs to have a science, engineering or technology degree

and is required to appear for the patent agent examination

conducted by the Indian Patent Office.

What are the advantages of becoming patent agent?

There are many advantages of being a patent agent, more

so after the 2002 amendment to the act. Prior to 2002

amendment, under section section 132(a), nothing in the

chapter XXI relating Patent Agents prohibited any person

not being a Patent Agent, who was duly authorised by the

applicant from drafting any specification or appearing

before the controller and an advocate from taking part in

any proceeding under the act except drafting specification.

2


3/7


The examination consists of two written exams and viva.

Paper 1 relates to Patent Act and Rules, Paper II relates to

drafting and interpretation of patent specifications and other

documents. Each written paper carries maximum 100 marks.

The Viva carries 50 marks.

The Rule 110 (3) regarding qualifying marks has been

amended after the decision of the Delhi High Court in

Anvita Singh V/s Union of India and Others in 2012 and

Renu Bala case. The amended rule 110(3)reads as follows:

110(3) A candidate shall be required to secure a

minimum of fifty marks in paper I and paper II and

shall be declared to have passed the examination only

if he obtains an aggregate of sixty percent of total

marks.

The amended rule has practically reduced the viva redundant

as one need to only have compulsory appearance in the viva.

If a candidate secures 150 marks in both the written papers

and only appears for viva.

The detailed nature of the paper I and paper II is as follows:

Paper 1: Total 100 Marks

It is divided into part A1, A2 and B.

Part A1 (30 Marks)

15 multiple choice questions. Each question carries

two marks;

Candidate to answer all the questions in this section;

and To choose right answers from maximum six choices

& maximum two correct choices.

Part A2 (10 marks)

True or false, 10 questions one mark each.

Part B (60 Marks)

8 Subjective type questions. Candidate to answer any

6 questions.

Paper 2: Total 100 Marks

It is divided into part A, B1 and B2.

The situation has dramatically changed after the 2002

amendment. Now the Patent Agents only have exclusive

right to practice before the controller as spelt out in

Section 129(2). Except for the applicant himself, even an

advocate cannot appear in general but can appear on

behalf of the party in proceeding under the act only if the

party is also taking part in the said proceedings. Thus, the

role of the patent agent in the patent prosecution has been

significantly enhanced by the said amendment in 2002.

Only patent agents can prepare all documents, transact all

business and discharge such other function as prescribed

under the Act and the role of other authorised persons and

advocates has been considerably limited.

A registered patent agent also gets added weightage andadvantage over others in securing jobs if he/she does not

want to practice independently. The law firms will employ

them as only they can appear before the controller for

prosecuting the patent applications filed by the firm. A

registered patent agent can also practice before the

Intellectual Property Appellate Board (IPAB) even if

he/she is not an Advocate. It is interesting to note that a

registered patent agent can also act as an agent for designregistration under the Designs Act 2000.

However, one must understand that being a patent agent is

not everything. There are several proceedings under the

act which take place in the courts and being an Advocate

is always of great advantage. Even if one does not wish to

practice in courts, in addition to patent law, sound

knowledge of law of interpretation, contracts, Indian

constitution is of great value to attain better hold on the

subject.

Patent Agent Examination

The qualifying examination for patent agents is conducted

by the office of the Controller every year. The particulars

of the examination, the curriculum and qualifying marks

are given in Rule 110 of Indian Patents Act. Upon passingthe examination, the successful candidates are required to

follow a registration process as provided in chapter XV of

Patent Rules.

3


4/7


4Part A (40 Marks)

Consists of 6 questions of 10 marks each and the

candidate has to attempt any 4 questions. The

questions will relate to drafting and interpretation

of patent specifications and other documents

Part B (60 marks)

It consists of parts B1 and B2: Part B1 is compulsory and will consist of 1

question relating to drafting of claims and

abstract from a given description of an invention.

Part B2 consists of 2 questions and the candidates

will be required to attempt any 1 question.

Out of the two questions, one question will relate to

general engineering field and the other question will

relate to field of chemistry/life sciences.

The aspiring patent agents may refer to old question

papers available on the patent office website to understand

nature of questions asked in the examination.

Job opportunities for a patent agent

A patent agent, being an expert in patent law as well as

technology shall have good opportunities not only in

Intellectual Property (IP) department of any R&D oriented

firm but also the law firms. Areas of work could be patent

management, patent specification drafting, filing, prosecution

and performing patent searches of various kinds.

However, clearing the patent agent exam and registration as a

patent agent alone is not more than a certification. In the super

specialized area like patents, one needs to work really hard

and acquire skills and expertise for long term and sustainable

career growth. Career of a patent agent can always extend to

more specialized areas, such as, patent valuation, technology

commercialization, IP management etc.

Vidhu Khare holds BE (Mechanical Engineering), M. Tech (Mechanical

Engineering) degree and is a Registered Patent Agent with Indian Patent Office.

He is currently a Patent Attorney, & Technical Lead at Mercedes Benz. He has

vast experience in conducting patent searches, evaluating inventions and making

patent filing strategies.

Origiin: For a student with scientific background, such as, MSc, BE or BTech, is practicing patent law a

good option?

Vidhu Khare: Yes, in my opinion practicing patent law is a very good option as patent law is not just a legal field but

it involves scientific understanding as well. Moreover, if we develop a flavour for this field then it becomes quite

interesting, challenging and lucrative as well. So a student should not only look for the conventional options but also

should seriously consider field of patent law as it provides good future prospects.

Origiin: What kind of projects do you expect to work in? Can one work for law firms as well?

Vidhu Khare: Projects can be of wide variety, to name a few, I will say novelty/ patentability searches, freedom to

operate, landscapes, invalidation searches, patent prosecution, patent filing, patent drafting, litigation, IP awareness,

PATENTALK: VIDHU KHARE

On career prospects of a Patent Agent in India


5/7


various works related to IP analytics, patent valuation etc. The scope is vast and yes we can work for IP law

firms as well. There are number of large and small IP law firms in India which provide good career

opportunities in the field of Intellectual property.

Origiin: Is being a registered patent agent make a difference as there are many people working in

this area but are not patent agents? Are there any added advantages as being a patent agent?

Vidhu Khare: Yes, it is true that there are many people working in this field but by becoming a registered

patent agent we can have a better know-how about patent law. From my personal experience I can say that in

the corporate world people take your opinion more seriously if you are a patent agent as they believe that you

are not just aware about technical aspects but also about legal aspects related to it.

Origiin: Does working with patents not feel out of subject?

Vidhu Khare: It does not feel out of subject, in fact one gets to work with the latest technology and can get a

better outlook of the technical field that one has studied. I personally feel that I am in regular touch with the

basic concepts of my technical background.

Origiin: Since patent is a legal subject, how to cope with it being a technicalperson?

Vidhu Khare: I am still trying to learn the intricacies of law but it can be a little difficult in the beginning. If

someone is willing to learn, patents can be a very interesting subject since it not only deals with law but with

latest inventions. If you are interested in learning new things patents can be fun in the truest sense.

INTERESTING PATENT OF THE MONTH

Combined camouflage and decoy device

Patent number: 5197216

Filing date: Oct 18, 1991

Issue date: Mar 30, 1993

Abstract: A combined camouflage and decoy device which includes a

suspension mechanism such as a cap wearable on the head of a hunter. A

cape is suspended from and hangs freely from the suspension mechanism. A

decoy extends outward from the suspension mechanism. The hunter will be

allowed to impart movement to the decoy to attract animals.

Main claims

1. A combined camouflage and decoy device which comprises:

suspension means receivable on the head of a hunter, said suspension means including a cap having a

flexible top;

a cape suspended from and hanging freely from said suspension means;

a decoy extending outward from said suspension means, said decoy including a flexible outer shell and loose

packed stuffing within said shell, wherein said stuffing is in communication with said flexible top;

whereby the movement of said hunter imparts movement to said decoy, and wherein flexing of said top


6/7


inwardly will allow partial displacement of said

stuffing from said shell for packing or storage of said

device.

2. A combined camouflage and decoy device as set

forth in claim 1 wherein said suspension means

includes a cap having an adjustable band, said cape

being suspended from said cap.3. A combined camouflage and decoy device as set

forth in claim 2 wherein said cap has an extending

visor.

4. A combined camouflage and decoy device as set

forth in claim 1 wherein said cape forms the body of

said decoy concealing said hunter in said cape.

IP NEWS BULLETINFacebook sued: Use of like button

Facebook is facing a patent lawsuit over its use of the

Like Button on its webservices. For this particular

feature Rembrandt Social Media says that it is acting

for the estate of a dead Dutch programmer, Joannes

Jozef Everardus van Der Meer who secured a patent on

the concept of a Like button in way back in 1998.Since Facebook has cited the patent in its own patent

applications as a prior art, it knows it is infringing this

patent.

Tela Innovations sues Handset Manufacturers

Tela Innovations has filed a complaint against a

number of mobile handset manufacturers, such as

Nokia, HTC, LG, Motorola, Pantech etc claiming thatthey infringe seven of its patents. Tela says that it has

created patented design solutions for IC manufacturing

processes where lithography-driven constraints require

novel approaches to both digital circuit design and the

physical implementation of these designs. These

solutions are utilized in the most recent generation of

products offered by the named Respondents. Tela

seeks a cease & desist order to bar further sales of

infringing products that have already been imported

into the United States.

Google sues British Telecom

Google has launched a patent lawsuit against Telecom

(BT) for the four patents covering IP networking

technologies that it says BT is infringing. Google is

suing BT in both the USA and the UK.

CommScope wins antenna patent case

CommScope has won a patent infringement lawsuit in

the court of first instance in China against Comba

Telecom Systems Holdings. The legal action by

CommScope focused on Comba's alleged

infringement of a company patent related to phase

shifter technology used in base station antennas,

including remote electrical tilt (RET) antennas.

Base station antennas frequently employ phase

shifters to enable operators to direct the antenna's

beam in order to optimize network coverage.

IMPORTANT NEWS FROM INDIAN

PATENT OFFICE FEBRUARY 2013

Patent Agent Examination 2013

On-line Registration for Patent Agent Examination

2013 facility is made available atwww.ipindia.nic.in.

Working of the patents

All patentees and licensees are called upon to comply

with Section 146 requirements the Patent Act, 1970 to

furnish information in Form 27 in respect of each

calendar year, within 3 months of the end of each

year.

Electronic filing services available on the official

website www.ipindia.nic.in may be used for this

service.

Pending requests for recordal

The CGPDTM publishes the branch wise list of

pending requests for recordal of post registration

changes in the trademarks, which would be taken up

in the special drive.
http://www.ipindia.nic.in/http://www.ipindia.nic.in/http://www.ipindia.nic.in/http://www.ipindia.nic.in/http://www.ipindia.nic.in/http://www.ipindia.nic.in/


7/7

All i ht d ( ) O i ii IP S l ti 2013

8CGPDTM launches online public view of GI documents

Complete details of GI applications are made available to public, including copy of application, statement of

case, examination report, e-register of registered GI applications, copy of GI certificate, other supporting

documents etc.

National Intellectual Property Awards 2013

Deadline for submitting applications for the National Intellectual Property Awards 2013 has been extended until

11th March 2013.

One day session of patent specification drafting (including claims)

Origiin IP Academy announces one day session of basics of patent specification drafting including

formulation of claims. Exercises will be provided in the class for practice and tips to attempt

specification drafting question in the examination.

Duration: 5 hours (one day)

Cost: 5,000 INR

Dictionary of Indian Patent Law authored by Bindu Sharma and Anita Kalia as well as

assignments will be provided.

Kindly note that the purpose of this session is only to enable candidates understand basics of

specification drafting to attempt questions relating to drafting patent specifications or claims for Indian

Patent Agent Examination. This is not a comprehensive course to learn patent specification drafting.

Two days session for revision of important questions

This session will provide complete revision of previous year question papers, tips for viva, group

discussions and interactions, clarification of doubts and revision of important sections and rules.

Duration: 10 hours (two day)

Cost: 8,000 INR

Module III, Dictionary of Indian Patent Law authored by Bindu Sharma and Anita Kalia as well

as assignments will be provided.

For more info please mail [email protected] or call at9845693459.

Documents

Origiin Newsletter March 2013