Intellectual property (IP) refers to creations of the mind, such as inventions, designs, name of products and services, literary and artistic pieces of work, etc. To protect these creations of the mind, law comprises provisions in the form of patents, trademarks, copyrights, and so on. These rights are collectively called Intellectual Property Rights (IPR), where IPR is a kind of legal right provided by the Government for the protection of creations, provided the creations fulfil certain conditions. IP can be protected and registered under different legal frameworks depending on the type of IP.
IPR law is amongst the rare breed of law practices where professionals with varied backgrounds in domains such as engineering, biotechnology, chemical engineering, pharmaceuticals, and so on are fairly successful despite their seemingly unrelated backgrounds. Patent law is a domain of IPR law that requires practicing professionals to have a sound technical and theoretical understanding of science because patents primarily relate to core technologies, inventions and related work. Due to the ability of STEM graduates to understand technical aspects of technologies or technical inventions, most companies prefer them over advocates to handle the tasks of patent searches, drafting/filing/prosecution of patent applications and more.
It is interesting to note that in order to file patent application on behalf of the client in India, it is important for a person to be a registered Indian patent agent. A registered patent agent is a person who is firstly at least a graduate in science, has secondly cleared the Indian patent agent examination and lastly has registered themselves as a registered patent agent. Due to this, a patent agent who may not be an advocate becomes authorised to draft, file, prosecute patent applications on behalf of the clients. A person who is registered as an advocate with the Bar council but not as a patent agent is not authorised by the patent office to act on behalf of any client and draft/file/prosecute their patent application in India. The list of registered patent agents is published on the official website of Indian Patent Office (IPO).
Two terms used most frequently in the industry are “patent attorney” and “patent agent”, and it is therefore of prime importance to understand the difference between the two clearly. A patent agent is someone who possesses at the minimum an undergraduate degree, has cleared the Indian patent agent examination and has registered himself as a registered patent agent with the IPO. The Indian patent agent examination is generally conducted by the IPO once a year. A patent attorney on the other hand is an advocate who practices IP law and may or may not be a patent agent. Further, a patent attorney must be registered with Bar council of India as an advocate. An advocate is not eligible to write the Indian patent agent exam if he is not a graduate of a scientific domain. These limitations for advocates often results in a loss of direction for them regarding what potential opportunities await them if they want to practice IPR and in particular patent law. In this article, we will try to explore the areas of IPR for advocates to practice in.
Patent law
Before a patent application is filed, typically a patent search is performed to assess novelty of the invention. A patent application is published after an expiry of 18 months from the date the patent application is filed, where this date is called the priority date or date of filing. After the application is published, there may be an opposition to the grant of patent and this opposition is called as pre-grant opposition. However, if the opposition is filed within 12 months from grant of a patent, the opposition is called post-grant opposition. Further, if opposition is raised after the elapsing of 12 months from the date of grant of the patent, it is called revocation. An advocate who is not a patent agent can handle such oppositions or revocations before the Controller of Patents or IPAB (Intellectual Property Appellate Boards).
Advocates can also conduct their practice in the following areas:
- Patent or IP audits at the time of acquisition & merging of companies where there may be a need to check legal status of patents, and docketing of the same for upcoming deadlines, renewal fee calculation, etc.
- Valuation and commercialisation of patent. Negotiations and drafting of technology transfer-related contracts may also be required to be done by an advocate at the time of such transfer.
- Docketing of patent cases and coordination with foreign attorneys regarding foreign patents is required by most law firms and this can also be undertaken by advocates.
- Searches such as freedom-to-operate searches can also be carried out by advocates. Specialized searches such as these are usually performed by patent agents but advocates have a vital role to play in claim interpretation and referring right statues along with case-laws. In fact, several companies require such FTO reports to be signed by advocates.
- Patent-related disputes like patent infringement or litigation.
- Portfolio management of innovative companies to look after legal-commercial strategies, planning regarding portfolio creation and management, licensing of technologies, etc.
Trademark law
The number of trademark applications filed in trademark registry are far more as compared to patents. In fact, the number of disputes, infringement cases and related litigation matters are also very high compared to patents. Due to this, trademark is a very potential area for advocates to specialise in and must be an advocate in State Bar Council but for non-advocates, it is important to be a trademark agent to file and prosecute trademark application and must have to clear and qualify the examination of Trademark Agents Examination However, there is no need for an advocate to be a trademark agent. The scope of work includes:
- Advising clients on selection of trademark for new products and services
- Trademark searches to give opinion on strength of the mark
- Preparing, filing, prosecuting trademark application
- Handling oppositions, disputes, litigations
The trademark agent/attorney helps in choosing an apt trademark after ensuring compliance with the legal norms and thus reducing the chances of rejection of trademark application. The filing of the application has very specific requirements that can be dealt with by ease by a trademark attorney in India. In case there are any objections to the trademark registration, it is upon the attorney to reply to the objection and provide with an alternative. Trademark attorney also provide important advice about the nuances of trademark infringement.
Copyright Law
Copyright laws are very necessary to protect your original works and determine the ownership of creative output such as written works, music and motion pictures. In problems related to copyright issues and cases, the copyright attorney helps in getting the authority and ownership of original works. The Copyright Attorneys in India help creators of unique work in filing an application that needs to be submitted for copyright registration. They also help in prosecuting and registration of patents, designs meant for industrial sector, trade mark, etc. They not only help in the filing of the application but also its licensing, renewal and carrying out its enforcement.
In case, after filing an application for copyright registration, there are any defects, these defects are communicated to the applicant. Copyright attorney can go through this application and help the applicant to identify the defects and remove them.
Other forms of IPR
Further, for an advocate, all areas for filing, prosecution of applications for registration as well as enforcement are open in case of , design, Geographical Indication (GI), etc.
Conclusion
IPR is a potential area to for advocates to continue their practice. However, it is to be understood clearly that an advocate is not authorised by the Indian Patent office to draft/file/prosecute patent application in India or PCT. Despite this, there are numerous opportunities for advocates in other areas of patents, trademarks, copyrights, GI etc.
Contact us at info@origiin.com to avail services in Patent, Trademark, Contracts, Patent Licensing, M&A
Subscribe to our YouTube Channel HERE
Email: info@origiin.com
Whatsapp: +91 7483806607
