PATENT AGENT AND PATENT OFFICE RELATIONSHIP

A lot has been written about bar-bench relationship, but not so much on Patent Agent – Patent office relationship. For the uninitiated, to file and prosecute Patents in India at the Intellectual Property Right office, one must qualify an exam and be a patent agent. Patent Agent, a techno legal person is responsible for capturing a technical invention in a legally correct manner and interact with the patent office on behalf of the Applicant to obtain a grant of the patent application. I have now practised for more than 2 decades at the patent office (do not try to guess my age now!) and I have seen changes in the practise over the course of time.

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I still recall my first ever case in the patent office, where I was not even an agent, but accompanying my colleague and a qualified patent agent to offer technical support. Both my colleague and the senior examiner (now a Controller) was magnanimous to allow me to argue. While I was able to satisfy all technical points, I had no clue how to draft claims and I still remember the Examiner working with me and teaching me over an hour to draft claims. My first few years of practise was the most pleasant, based on the practise at that point of time. We practically lived in the Patent office, sharing tea at the canteen with the Examiners, with great camaraderie, but while we argued the case, it was limited to technical and legal discussion. It was great fun and ultimate professional satisfaction.

The quality of Indian Patent examination and the response filed by the agent were at its best at this point of time and was technically and legally correct. I recall that one point of time, there was a query by one of the Examiners in chemistry, an earlier chemistry lecturer in the examination report. I had examined the first examination report and had the audacity to ask her as to why this query being raised in the Indian examination report, while the corresponding applications did not have this query. She responded by activating the teacher in her and taking a surprise test for me in chemistry! Thankfully I passed – my chemistry professors please note- but at the end of the day, I was forced to admit that the Examiner was right and the chemistry in the application was wrong. I hesitantly wrote to the Applicants, situated outside the country to try, and inform them that their chemistry was wrongly captured. Mercifully, the Applicants were good chemists too! they agreed, and the application proceeded to grant, and they corrected the chemistry in other countries too!

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As the years progressed, practised dwindled to meeting the Controllers only for a hearing when appointed. Imagine a new agent meeting a new examiner and a controller first time during the hearing. Such hearings resulted in decisions, not in Learning. During and after Covid period, the practise has dwindled to online hearings- even conveying techno-legal merits in any matter in a first online meeting is a challenge.

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But a few incidents in the recent past have led me to believe that all is not lost! Recently, we won an Appeal, in Delhi High Court, against a patent rejection. The judgement directed the patent office, the same Controller who rejected the application earlier, to re-examine the application from the hearing stage. I was very apprehensive of her reaction in re-examining her own decision. But she was very positive and started by saying that If I could convince her on the merit of the application, she will relook. I was able to address all her technolegal queries this time, convince her, show support in the specification, and supplement my arguments with technical affidavit. She took the documents on record, reversed her decision, and granted the application. This made me realise that what is missing in the practise nowadays is the ability of the patent agents to enable the examiners in granting patents.

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I was also moved by another incidence. A Senior retired Controller had read a judgement in my favour. I had practised before him as a young girl – still young by the way – and he had the time to find my mobile number and drop me an encouraging message. Born, bred and steeped in Indian culture, the encouraging words of mentors and seniors, is the assuage to understand that one is in the right track in their profession. Thank you, sir! This made me realise that while Senior lawyers and Patent Agents interact with Junior examiners, I rarely find incidences where senior controllers are available for junior patent agents.

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In this digital age, where people prefer to interact behind screens, I believe that they do not realise what they miss- MENTORSHIP! I rest my case in pleading that Patent Agent- IPO relationship need to be strengthened by regular structured and unstructured meetings between Controllers and Agents! To our Profession!