IP with Prof. Feroz – Career Prospects for a Patent Agent Podcast Transcript The first podcast of the LexCampus podcast series is here! We will be talking with Prof. Feroz Ali of IIT Madras, where he is the IPR Chair Professor. The podcast is hosted by Dr. Venkata S Raman and he is joined by Adnan, Mustafa, and Roshan. In this podcast, Prof. Feroz talks about Patent Agents and the upcoming Patent Agent Examination. The talk briefly addresses the following: Patent Agent Lawyer vs Patent Agent Why take the PAE? Prepare for this exam Required Skills Job opportunities Venkat: Welcome to our podcast series IP with Professor Feroz. You can listen to this podcast series on LexCampus. Here you learn anything and everything about IP. This is the first podcast on patent agent and career opportunities for patent agents. Myself, Venkat, and with me is Professor Feroz Ali, who is IPR chair professor in IIT Madras. Good morning, professor, how are you today? Prof Feroz: Good morning Venkat, I am good. Venkat: With us we have Roshan John, Muhammed Mustafa, and Mudabbir Adnan, Good morning folks. Roshan: Good morning. Mustafa: Good morning. Mudabbir: Good morning. Venkat: Professor, recently there is a notification from the parent office about the patent agent exam and I always see that Twitter and LinkedIn is flooded with enquiries about patent agent exam. So before we start talking about the patent agent exam, just to educate a few of us, tell us who is a patent agent? Prof Feroz: A patent agent is a person who represents another at the patent office, so an agent is a person who represents another and when a person represents another at the patent office, that person is called the patent agent. The job of the patent agent is to file and prosecute patents, we use the word prosecute to refer to the process of overcoming objection and satisfying official requirements at the parent office. Venkat: Thanks for that explanation. So, with that, may I ask you, what is the role of a patent agent in general? Prof Feroz: The patent agent, as I just mentioned, represents an inventor; an inventor is a person who has come up with an invention and if the invention is patentable, if the invention is of a nature that can merit a grant of a patent, then the inventor is represented at the patent office by the patent agent and the patent agent deals with the patent office to facilitate the filing and the grant of a patent for the invention. Not all inventions are patentable, so there is a requirement in patent law to see whether an invention satisfies the patentability criteria, which is to see whether an invention can be granted a patent. When an invention is granted a patent, it enjoys exclusivity for 20 years, so you get an exclusive time period to exploit your invention in the market. Venkat: Ok great! So you mean to say that a patent agent is more of a mediator between the inventor and the patent office. Prof Feroz: Exactly, he is an intermediary who deals with the patent office and the inventor, and the intermediary is of such a nature that because the expertise required for the intermediary is intense, the central government conducts this examination. The last examination, if I remember right, was conducted in November 2016. So there was no examination in 2017 and this year, they have again called for the examination, which should be some time before December, that is what the notification says. Venkat: So, can someone not file a patent by themselves, instead of going through a patent agent. Prof Feroz: Yes, it is possible for a person to file his or her own patent for an invention, but the preferred route is to go through the patent agent. The patent agents are a group of professionals who deal with the patent office and it is much more organised when you go through the patent agent. Though, an inventor can do everything on their own, there are certain requirements and compliances that an inventor may not or it will be difficult on the inventor to come up to speed with those requirements. So, the preferred route is to go through the patent agent, but the law also provides for an option for the inventor to file their own patents. Venkat: Ok, Roshan. Roshan John has been working with Professor Feroz Ali, he has been practicing IP for many years, and Roshan have something to say. Roshan: Yeah, so I had this question, so do we need a law degree to be a patent agent or is it necessary to have a law degree? Prof Feroz: It’s not needed, earlier lawyers could take the patent agent exam, but there was an amendment by which they made it mandatory to have a science degree. So, now if a lawyer has to become a patent agent today, that person, who has, we will assume that he has a degree in law, will still need a degree in science or Technology. So that requirement has been brought in now and this is largely to ensure that the person who becomes a patent agent has some background in the science, some background. So you may be filing a patent for a mechanical inventions, but even if you have a basic degree in Zoology, that’s good enough; so it’s more like a threshold requirement that you should know the science, it’s not necessary that the area in which you file a patent should be also the area in which your domain expertise is, that’s not a requirement; but interestingly, the patent agent, though he has a science degree, the examination itself is a legal examination, where he will be questioned about aspects of patent law. So it is a 2 paper exam and we will, we can probably discuss the details about the exam later. It is a 2 paper exam, where a person’s expertise in the law is examined and questioned. Roshan: As you mentioned, the patent agent exam checks the expertise of the person in patent law, so do you think, someone with a science degree will be able to understand the nuances of patent law. Prof Feroz: Very difficult, because the Social Sciences and the Physical Sciences are completely different subjects and expertise in one or even acquaintance in one does not translate into expertise or acquaintance in another, this is one of the reasons why we have a very low pass percentage for the patent agent exam, because you now require engineers and scientists, or people with a background in Science to take a legal exam. So, that’s one of the reasons why we find the pass percentage to be very low, and if you look at the advanced jurisdictions like United Kingdom and the United States, the patent bar exam as they call it, in the United States, is one of the toughest examinations to qualify; largely because of this issue, you want people with science degree to qualify for a legal exam. Venkat: Yes, now we have Mustafa, and Mustafa is a veteran of one patent agent exam, he has already appeared for 1 patent agent exam, and he knows a lot about the patent agent exam, yes Mustafa. Mustafa: Thank you, Venkat. My question is in addition to what Roshan has asked. Professor you mentioned that taking this exam, you will need a basic qualification, either a science degree or an engineering degree, but is there a minimum or maximum age limit for it, because I understand that for most of the government exams conducted by the Government of India, there is a maximum upper cap on the age. For example, if you take UPSC exam, maximum age limit is 32 or 33, so is there an age limit here. Prof Feroz: No there is no age limit, because the government does not guarantee you a job. If you take the UPSC exam or the IAS or whatever exam you are talking about, upon clearing the exam, you will get a government job. This is not an exam by clearing of which you will be guaranteed a job. This is more like a qualifying exam, so if you clear this patent agent exam, you can register yourself as a patent agent and you will be entitled to practice at the patent office, whether you get work or not is completely depending on how the market forces work and how you get exposure to work; you may join a law firm, you may join as an in-house counsel, in which case you will get salary, or you may be an independent practitioner who can deal with the patent office filing or even doing some freelance work. So, all this would depend upon your ability to work and generate work; or your ability to get a job in a law firm or in a company. So because there is no job opportunity tied to it, I would say that this should not be compared with UPSC or any other kind of examination wherein you clear and you get a designated post. So this is only a qualifying exam, like now, the bar council has a qualifying exam before you can practice as an advocate. The Government of India will not guarantee you a job by clearing that exam, it’s a threshold requirement. So once you clear the exam you are entitled to practice in the court of law. Similarly, once you clear this exam and you get registered as a patent agent, you will be entitled to practice before the patent office. Venkat: Great! It looks like a long process though. Okay, here is a question for those aspiring to become patent agents. Why should they take this patent agent exam in the first place? Prof Feroz: Ok, if you need to do anything with patents, for instance you are involved in drafting them, you are involved in filing them, you are in an R&D department where inventive ideas coming up all over the place, you need to screen them, you need to do a prior art search, you need to follow it up with a freedom to operate opinion, there are quite a lot of things that you would do in knowledge intensive setup where there is a possibility of inventions coming up. Say it could be in an R&D lab, it could be in a research organisation, it could be in an engineering college or in a university. We can regard these places as potential grounds where an invention can come up. Now in all these places, you would require somebody who is aware of patent law and who knows how to capture the invention as per the requirements of patent law, file an application for it before the patent office, prosecute the application, i.e., satisfy all the objections that the patent office may raise while examining the application and eventually get a grant. Now only when you get a patent granted will you have exclusivity on your invention. Otherwise the invention is as good as being in the public domain, you cannot stop others saying that this invention is your. So the patent law is a device by which you can claim private rights over something which you have invented. So for this entire process to operate, you should know how to deal with the patent office. The patent agent examination is a way in which they determine how much you know about the rules and regulations pertaining to patents. Venkat: So before I pass on the mic to Roshan, this is what I want to ask you professor. Someone who takes this patent agent exam, once he has cleared, once he becomes a patent agent, do you think he will become proficient in the law practice? Prof Feroz: See, clearing the exam does not translate into proficiency on patent law for many reasons, because it’s a threshold exam where your knowledge about The Patent Act and The Patent Rules alone is questioned. There are no issues with regard to interpretation of claims, that is, one thing that can come up. There are no issues with regard to determining disputes between parties. There are no questions involving how a licensing agreement has to be drafted. You will see that this patent agent examination only covers a part of patent practice, but because it is a threshold examination, once you clear this much of the learning will come from the job itself. I mean, patent law, cross the globe is something which you learn on the job; you don’t have universities giving your degree on patent law, though there are IP courses and IP diplomas all over the place, but this is something which is largely learnt in practice. Some of the best patent attorneys are people who have either developed their expertise in law firms or who have developed their expertise as in-house counsel in large companies and corporations. An expertise in patent law is something, which a person gains in practice, but this is a threshold examination, which allows you to practice at the patent office. In my opinion, even if you clear this exam you will still need some form of a continuous legal or a continuous patent education for you to be proficient in this field. Roshan: Professor, so if I am a frequent inventor or if I am involved in R&D in a particular company, is it advisable to take the patent agent exam or know the nuances of patents. Prof Feroz: Yes, it would be, because apart from looking at this as a threshold qualifying exam, this is probably the only exam that is conducted by the Central Government where your proficiency in intellectual property can be tested. There is no other examination conducted by the Government of India where intellectual property proficiency can be tested by whatever means. This being the only qualifying exam, I would hope that even if you are trying for a job in the private sector or you want to enter into a law firm, clearing this exam would give you some kind of leeway in telling the recruiters or your potential employers that you have some level of proficiency in intellectual property and more specifically in patents. We had already seen that in the national IPR policy. The Indian Government came up with the national IPR policy in 2016 and this is the first IPR policy document that we have created since independence. You will find that there is an emphasis on developing IP throughout the country in all walks of life; so if that goal is achieved in the years to come and looking at the growth rate of our economy and the fact that we are the fastest growing economy in the world, you will find that it is quite possible that IP will become a key player and the government is putting all its efforts expecting that to happen; will become a key player and a key distinguisher in the scheme of things. When that happens, having a basic qualification in IP or clearing a threshold examination in intellectual property will be a significant thing for a person to even grow within his career. Venkat: Great! And, who can become a patent agent, I know that you explained this before, but could you just elaborate a bit. Prof Feroz: Any person with a qualifying Science or Technology degree can become a patent agent by taking the exam and clearing it. At the time when you take the exam, it is not necessary that you should have the science degree in your hand. The exam is followed by a viva voce. Once you clear the exam, you are invited for viva voce. Once you clear the viva voce, you will have to register yourself as a patent agent, at the time of registration you need to produce your degree certificate saying that you have a basic qualification in science. So if you are in the final year of your college, you could still give this exam knowing fully well that there will be at least a 3 to 6 month lag between the exam and patent office conducting the viva voce and you registering as a patent agent; so because of this time lag, you could expect people who are in the final year of college to still apply for this and take the exam. Roshan: So apart from knowing The Patent Act and The Patent Rules, what are the other skills that a patent agent would require? Prof Feroz: Knowledge of The Act and The Rules is necessary for clearing paper 1, i.e., the syllabus of paper 1. Paper 2 is largely a drafting paper; there are different questions on drafting a patent specification. The key skill there is that your proficiency in the English language, it has to be good, though you can also file patents in Hindi, the exam is now conducted in English. So, English remains the predominant language and the means by which we file patents. Good proficiency in the English language is a key factor for clearing this exam, because the predominant job of a patent agent is going to be drafting patent specifications, which is drafting statements about the inventions in a legal format and filing the application before the patent office. The patent office could raise objections and the patent agent will again respond to those objections largely in writing; so writing plays a very key role in the scheme of things. You will find that the patent document is a document which encompasses the invention in writing when the patent office raises an objection, what we call the FER or the first examination report, the response to the first examination report again is in writing; so you will find that the language skill, a person has, is going to be one of the key determining factors apart from the knowledge of the law for a person to not only clear the exam, but eventually to succeed as an efficient patent agent. Venkat: With that could you explain more about the work life of a patent agent? Prof Feroz: The work life of a patent agent depends on where he is working and the kind of work he is exposed to; for instance, if he is in a law firm then there will be quite a lot of drafting work that will come to him, depending on his team size and if he is on the contentious side, then it may not be drafting but they could be contentious legal proceedings like opposition, revocation and infringement suits, which a patent agent could be involved in. If the patent agent is in a company, say as an in-house person in a company, then it depends on R&D facilities there, how many people are working and what we call an innovation ecosystem. So depending on the innovation ecosystem, the workload will depend on how vibrant the innovation ecosystem is and how the organisation is able to find inventions and to convert them into potential patents. So a lot of the workload will depend on the organisation in which the patent agent finds his employment. If the patent agent wants to do freelancing work, he wants to work as an independent freelancer, then again the quality of the work and the amount of exposure he has within the market will determine his workload. Largely we could expect, I mean, we have some figures on how long does it take a patent agent to draft a patent, typically it is around, it could be lesser, but it is around 20 hours roughly, if you look at some of the scholarly work that has come from the US. The time that is taken in preparation of a patent, there are some studies which states that 20 man hours is something close to what a person may spend. There could be instances where if the technology is, it requires it, there could be instances where a patent agent would spend more time and there could also be if the invention is pretty simple, say a paper clip or a paper cup, the patent agent may spend lesser time. But on a whole you could expect the patent agent to put in a few weeks of work before the patent is ready for filing. Venkat: I heard you saying that good writing skills are required for a patent agent, what other skills are needed to become a patent agent? Prof Feroz: Apart from writing skills, the patent agent will necessarily have to deal with the patent office. The patent office may ask some uncomfortable questions on the invention. They may say this is not new, which means there is a requirement in patent law that the invention has to be new. They may site a prior art, something that has gone before, to say that your invention is already anticipated or envisaged in this prior art. So apart from the writing skills they should know how to respond to objections that come from the patent office, which is largely a legal skill, you know, how do you carefully word your response to the patent office. You should be conversant in responding to objections in a favourable way, that is one skill apart from the writing skills. Sometimes the patent office may call for a hearing when there is an objection, the patent office may call for a hearing, recently because everything is moved online you have e-filing followed by videoconferencing, but still you could have a Skype session or a videoconferencing sessions where you may have to have a face to face, either through the internet or through a personal meeting. So you should be comfortable presenting, putting your case forward, arguing it and defending your position, that’s another skill. Your advocacy skills can be important. Search skills are also necessary for the patent agent, because every agent would essentially do a search before he files a patent. He is expected to do this. Now a search can be in the public domain, it could also be in some subscription databases; so again the search is not like, how we do a normal natural language search on Google, because it requires some skill, you need to know how the databases operate; you need to know how Boolean operators are used, you need to know, search itself is another skill, which a patent agent would benefit from. Now, apart from these things a patent agents work as it moves forward, there could be transactional work around patents. Licensing agreements, assignments or royalty agreement; so all these things would flow out of the work, but that’s not the main focus. The main focus is how a patent agent would deal with the patent office, for this writing, then your advocacy skills, then your ability to do some amount of legal research to find out the law on the point, that’s critical, and also your ability to do prior art search. See these are the critical skills a patent agent will require to flourish in his professional. Venkat: Great! I must tell you my experience, so I transitioned into IP from research background, so I have been doing research for 10 years. One great thing I see about IP is that, I am not a registered patent agent yet, but I must tell you that everyday there is something new to do, I deal with a lot of new inventions, so those aspiring to become patent agents, I can vouch that this is a great field to get into, like you always hear new things and you will be working in parallel with he inventors, so you must work hand in glove with the inventors and translate their invention into text. So this is what I think about IP, especially about patents, so this is great place to be in and with that I want to ask you one more thing. If someone wants to become a patent agent what is the salary like, how much can he expect, like quote us from a fresher to someone who has 5 years of experience being a patent agent? Prof Feroz: See the market has its own way of dealing with patent agents, if you qualify the exam, I mean you can look at the resources that we have, you can do a check on naukri.com or you can just look at some sources on the internet, I mean they will tell you what the market range is, but you can immediately expect a jump in your salary just by clearing this exam. It’s expected, but normally the market expects you to have some experience, so clearing the exam can immediately give you a jump in the salary, but once you have experience say 1 to 5 years, then you can expect a substantial jump, I mean a raise in your salary, now I would like you to just share if you had seen some thing on the internet as to what you have seen people saying about what could be the scope of this. Venkat: Yes, I checked through Glassdoor and Roshan feel free to correct me if I am wrong, so this is from Naukri and it says that 20,000 for fresher per month and anywhere up to 100,000 per month based on your experience. Prof Feroz: Yes, that’s a fair estimate and I would say that as the experience increases your salary you take home is going to be on the higher side. A patent agent with 5 years of good experience, say a counsel in a good company or in a top law firm, he can even expect more. So this seems to be an estimate, but what did they mean by fresher, did they mean by fresher a patent agent who has cleared the patent agent examination or it was just the patent attorney salary? Venkat: I think it is fresh out of college, who has just cleared the patent agent examination. Prof Feroz: Who has cleared the exam, okay. Venkat: Yes. Prof Feroz: Okay, but I would still say that fresh engineering graduate who has not cleared the patent agent exam and an engineering graduate who has cleared the patent agent exam, they would definitely have different salaries to start with. Venkat: Yeah! Looks like going to be a fascinating journey for patent agents. So tell us more about the career prospects of a patent agent, career growth of a patent agent. Prof Feroz: Okay, career growth, you could, see because there is focus on IP both by the government and by the private sector, if you qualify a patent attend exam, you may grow within your organisation as a person who has some knowledge or command over IP, so that’s likely to happen, but again as I said, this is just a threshold examination to deal with the patent office, but clearing this exam the expertise in IP or patent will be something that you will earn as you work and as you practice. Venkat: How much time is needed for someone to prepare for this patent agent exam, ideally, in ideal situation? Prof Feroz: Time for preparation is, I would expect the notification to come, right now we just have an indication that the exam is going to be sometime before December, but when the date is fixed I would expect the central government to give at least two months time, this is what happened last year. Now 2 months is not sufficient, that I can just tell you what will not work, because what works can be, I mean, I know people who have taken the exam 3, 4, and even 5 times and still not cleared it, so there is no formulae/recipe to success, but what I would suggest is, a person will have to be disciplined, will have to put good amount of hours to cover the syllabus. Venkat: With that I just want to inform the listeners that Professor Feroz Ali has created online content for clearing the patent agent exam and it is on LexCampus, it is available on a subscription mode. 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