Lawyers in Patent Administration

Lawyers in Patent Administration

Intellectual property rights is an umbrella containing various forms of creations of the mind such as copyright, trademark, design, and patents. Patents exist in the intersection of two diverse and important disciplines, science and law. A patent is a form of intellectual property designed to incentivise innovation and invention in the realm of scientific advancements. This covers a wide range from life saving drugs to computer algorithms to articles of daily use such as laptops and kitchen appliances. Since a monopoly is a serious conferment of rights, legal principles such as public interest and natural justice, as well as interpretation of words are also an integral part of patent regulation.

A patent is a time-limited monopoly ( 20 years from the date of filing a patent application in India) granted by the State to an inventor or owner of a patent in exchange for full disclosure of the invention to the public. This exclusive right granted to the patentee allows them to exclude others from making, using, selling, or distributing the patented invention without permission, which in reality is a license. It  is noteworthy that the patent does not give the patentee the right to make, use, sell, or distribute their own invention unless the Patent Office  has in turn determined that there are no earlier patents excluding the current applicant from performing any one or more of these activities.

Patent prosecution is a long, arduous, and expensive process. This is especially true for life-science-related inventions because the technology involved is often complex. Obtaining a patent begins with the preparation of the patent application. The application must be carefully drafted after having considered a multitude of factors, including the prior art, the patent laws and the latest court decisions. A lawyer can really shine in these areas as compared to a patent agent with an exclusively scientific background. A lawyer is adept at combing through volumes of judgements to arrive at established principles of law, and also knows how a particular word, phrase, and sentence should be framed to derive maximum benefit if a dispute were to arise later. Interpretation of texts one of the foremost skills possessed by a lawyer.

The Office of the Controller General of Patents, Designs and Trade Marks generally known as the Indian Patent Office (IPO), is an agency under the Department for Promotion of Industry and Internal Trade which administers the Indian law of Patents, Designs and Trade Marks. Every patent application whether originating in India or being filed as a national phase application under the Patent Co-operation Treaty (PCT), has to be submitted to this IPO. An examination is carried out by the IPO to check novelty, inventive step, and patentability of the subject matter, in accordance with provisions of the Patents Act, 1970. If discrepancies and/or objections are found further documents may be asked to be filed, amendments may be required to be made to the specifications and claims therein, and oral hearings of the applicant, intervenors (if any) may also be conducted. At every stage of this patent prosecution, legal proceedings are involved and hence, lawyers are an integral part of the patent process. The objections presented by the IPO and/or the intervenors as well as arguments presented by the applicant in favour of their invention are often a combination of legal and scientific arguments and are in  no way different from proceedings in a conventional courtroom. Furthermore, appeals against orders passed at the culmination of these hearings are made to the High Courts and the Supreme Court itself, and requires that qualified lawyers with licence to practice law appear in Court.

There exists a popular misconception that the realm of patents is far removed from law owing to the involvement of complex technologies. While this partly true, this is in no way an obstacle for a lawyer to pursue a career in patent law. Patent prosecution is carried out by a team of professionals and hence, help needed for explanation of scientific concepts is taken care of. There a variety of legal skills that come into play and logical and analytical thinking is of prime importance. With the right training and experience, any lawyer can truly shine even in the practice area of patents law.

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Firstly it changed the approach of looking at the subject. At the first instance bare act seemed dry. The lecture series actually explained 'why' of the topic and statutes. Which helped in understanding the way the things are .

Nachiket Galgali

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