ISSUE XXVI : India’s accession to madrid protocol: Bless or mess!

Introduction

By its judgment dated March 15, 2013, the Madras High Court (“the Court”) held that the amendment made in the year 2005 (“2005 Amendment”) to section 126 of the Patents Act, 1970 (“the Act”) pertaining to the qualifications for registration as patent agents is unconstitutional. This was pursuant to a writ petition¹ filed in Madras High Court in 2006. By the 2005 Amendment, the advocates were disqualified to be the patent agents.

In the light of the above judgment given by the Court, all advocates having a science degree can file patent applications for their clients and they do not have to register themselves as patent agent with the patent office. The present bulletin will trace the history of section 126 amendment and discuss the highlights of the writ petition filed before the Madras High Court. Finally we shall examine the impact of the order.

1. Tracing the Legislative history

In order to understand the impact of the 2005 Amendment, it is necessary to discuss the history of the amendments to Section 126. The first amendment of 2002 replaced the phrase “degree of any university” with “degree in science, engineering or technology” in section 126(1)(c)(i). This amendment allowed advocates to become patent agents directly without any additional requirements provided they meet the new requirements i.e. a degree in science, engineering or technology. Advocates without science degrees had to sit for the patent agent qualifying examination in order to become patent agents. The section 126 read as follows:

“(1)      A person shall be qualified to have his name entered in the register of patent agents if he fulfills the following conditions, namely:-

• he is a citizen of India;
• he has completed the age of 21 years;
• he has 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 or possesses such other equivalent qualifications as the Central Government may specify in this behalf, and, in addition-
  • is an advocate within the meaning of the Advocates Act, 1961 (25 of 1961);
  • has passed the qualifying examination prescribed for the purpose; (or)
  • has, for a total period of not less than ten years, functioned either as an examiner or discharged the functions of the Controller under section 73 or both, but ceased to hold any such capacity at the time of making the application for registration;
• he has paid such fee as may be prescribed.

(2)  Notwithstanding anything contained in sub-section (1), a person who has been registered as a patent agent before the commencement of the Patents (Amendment) Act, 2002 shall be entitled to continue to be, or when required to be re-registered, as a patent agent, on payment of the fees as may be prescribed”.

In 2005, the Act was amended again and section 67(a) of the Patent (Amendment) Act, 2005 deleted section 126(1)(c)(i). The provision which was deleted allowed advocates to register as patent agents directly without the need to take any qualifying examination. Pursuant to this amendment, even those advocates with science and engineering degrees did not have a right to directly qualify as a patent agent. Instead all advocates would now be treated like any other citizen and would have to pass the qualifying examination in order to register as a patent agent.

Aggrieved by this amendment, an advocate Mr. S.P. Chockalingam filed a writ petition under Article 226 of the Constitution before the Madras High Court asking the court to annul the amendment introduced in section 67(a) of the Patent (Amendment) Act, 2005.

2. Facts of the case

Advocate S.P. Chockalingam (“Petitioner”) filed a writ petition against the Controller of Patents, Chennai and Union of India, New Delhi (“Respondents”). Prior to the 2005 Amendment, two categories of individuals were eligible to act as patent agents – (i) the first category consisted of advocates and (ii) the second of those who possessed a degree in “science, engineering and technology” and who had cleared a qualifying exam to become an agent. After the 2005 Amendment this “matter of right” of advocates was removed. Hence, only those who had a science degree and cleared the qualifying exams could act as patent agents. The Petitioner challenged the 2005 Amendment and filed the writ petition to remove it on the following grounds:

• It is discriminatory in nature and violative of the fundamental right guaranteed under Article 19(1) (g)² of the Constitution.

• There are two written papers to qualify to become patent agent as prescribed by the Respondents – one is in the Act and the Rules there under, and other one is drafting and interpretation of patent specifications. To become an advocate, one should have passed BL or LL.B through a recognized university and such degree should have been approved by Bar Council. The Respondents cannot say that in imparting legal education or conducting law examinations, a recognized law college or university would be inferior to the Respondents.

• The High Court had to consider whether the 2005 Amendment had been made in public interest, based on reasonable classification or unreasonable class legislation.

• Respondents by conducting the qualifying departmental examination are unreasonably claiming supremacy over the law degree given by universities and law colleges.

• Preventing advocates, who are more qualified in preparing documents, drafting, transacting business before the Controller and permitting only the degree holders in science, engineering or technology, who passed the departmental examination, would certainly narrow down the skill of patent agents.

3. Judgment and its Impact

There is no satisfactory reason on the side of the Respondents as to why the term “Advocate”, within the meaning of Advocates Act, 1961 available under section 126(1)(c)(i) of the Act was deleted by the 2005 Amendment in an unjustifiable manner. Therefore, the Court found the writ petition just and reasonable and declared the 2005 Amendment as unconstitutional and unenforceable on the basis of the following grounds:

• Respondents have no legal right to expand their authority for curtailing the profession of legal practitioners against the Advocates Act, 1961 by way of conducting their own examination in law and drafting.

• Merely by prescribing qualification, as degree holder in science, engineering or technology and passing a departmental examination on the Act and drafting, the Respondents cannot monopolize such category of persons and say that advocates are not competent to be patent agents.

• All the citizens of India have right to practice any profession or carry on any occupation, trade or business, which is a fundamental right, that cannot be prevented by state by making any law, though the state is empowered to impose reasonable restrictions in the interests of general public.

• By the unreasonable restriction made by the Respondents by way of 2005 Amendment, the advocates practicing in the area of the Act, would have to necessarily depend on other patent agents.

Consequent to this judgment, any advocate holding degree in science, engineering or technology would be eligible to file, appear and undertake all responsibilities of a patent agent. He is not required to qualify any exam to practice as a patent agent. The High Court not only struck down the 2005 Amendment but also criticized the fact that the qualifying exam conducted by Respondents was placed over a law degree in terms of qualifications. Selecting certain group of persons to register as patent agents, deleting advocates, more qualified persons, held to be unreasonable and against the larger interest of the general public. The 2005 Amendment was held to be based on an unreasonable restriction.

Conclusion

It cannot be said that a degree holder in science, engineering or technology, who has passed the examination conducted by the Respondents in the Act and drafting would be a better qualified person to function as patent agent, than an advocate, who passed various law papers in his examinations, including drafting and procedural laws. Hence, the 2005 Amendment, could be construed only an unreasonable class legislation prohibited under

Article 143⁴ and Article 14 of the Indian Constitution on the ground that the same is against equality before law and equal protection of law. So, now, pursuant to this order, advocates with science degree can enter their names as patent agents in the register of patent agents but those without science degree have to sit in the qualifying examination conducted by the Patent Office to become patent agent.

Authored by: Jaya Moorjani

1 Writ petition no. 8472 of 2006 filed under article 226 of the Constitution of India

2 Article 19(1)(g) gives the right to practice any profession, or to carry on any occupation, trade or business