Though the terms “patent attorney” and patent agent are often used interchangeably in India, there is a lot of difference between the two terms. They are different in terms of their qualifications as well as the functions they can perform. This post will elucidate the difference between the two and explain their respective roles in patent litigation and patent prosecution process.
Who is a patent attorney?
At the outset, it is important to note that the term patent attorney does not find a place in any Statute in India. In fact, a patent attorney is usually used interchangeably with a patent agent. However, an attorney is an advocate. By virtue of this, a patent attorney is an individual who is entitled to deal with patent litigation by virtue of holding a law degree. A patent attorney or patent lawyer is an advocate. This means that an individual who has a law degree and has enrolled with a State Bar Council is an advocate who can deal with patent litigation and is hence a patent attorney. Particularly, it is important to note here that a patent attorney does not necessarily possess a degree in science, technology or engineering.
What is the role of a patent attorney?
The role of a patent attorney is the same as the role of an advocate. Thus, a patent attorney can specifically deal with patent litigation. This means that a patent attorney can represent patent cases in the courts. It is important to note that a patent attorney cannot file for a patent. This means that a patent attorney is not entitled to do patent prosecution, only the litigation aspect of patents can be handled by him.
Who is 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 patent drafting 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. Accordingly, in India, a patent can be prosecuted through a registered Indian patent agent. Particularly, 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:
a) Be a citizen of India;
b) The age 21 years or above;
c) 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; and
d) 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. Therefore, passing this exam is a must in order to qualify as a registered patent agent in India .
From the preceding listed qualifications, two things are absolutely clear:
1. In order to become a patent agent, a degree in law is not required. But, a degree in science, engineering or technology is a must.
2. An individual with a degree in law does not automatically qualify as a patent agent unless he meets the above requirements.
What is the role of a patent agent?
As stated above a patent agent is qualified for patent prosecution. The role of a patent agent is described in section 127 of the Indian Patents Act, 1970. According to Section 127, a patent agent is entitled to:
-Practice before the Controller; and
-Prepare all documents, transact all business and discharge such other functions as may be prescribed in connection with any proceeding before the Controller under this Act
What is the difference?
Particularly, the difference between a patent agent and a patent attorney is on two criteria; qualification and role. The below table will give a comprehensive view of the differences.
|PATENT AGENT||PATENT ATTORNEY|
|1. Must possess a degree in science, technology or engineering||1. Must have a degree in law|
|2. Degree in science, technology or engineering not necessary
|2. Degree in law is not required
|3. Must pass the Patent Agent Examination||3. Must be enrolled in any State Bar Council|
|1. Patent Prosecution||1. Patent litigation|
|2. Practices before the Controller||2. Practices before the court|