Success Stories – Mr. Muhammed Aslam Sharief on his Career as a Patent Attorney Podcast Transcript This podcast features: Tips for clearing PA exam and strategy for preparation. Work life as a patent agent. Venkat: This podcast series is part of success stories and today to discuss his success story is Mr. Aslam. Thank you for joining me Mr. Aslam. Mr. Aslam is a practicing patent attorney, who has successfully cleared the pattern agent exam and today he is going to talk to us about his journey of being a patent agent or we call here as a patent attorney. Yes, welcome to the podcast, Mr. Aslam. Could you please take us through your journey of becoming a patent attorney? Mr. Aslam: Thank you, from my childhood days, I was interested in science. So, I finished my degree in science and then my post graduation in life sciences and after that while I was looking for, you know, various openings, destiny perhaps, I got into a banking job, I had been a banker for about 12 years and then owing to some personal reasons, religious reasons, since I had decided I should move away from banking, I started looking around as to which line to get into, and that was when I noticed that IP was an up and coming field. I then chose IP and towards fulfilling this objective of making a career in IP, I looked around to see who was an expert in the IP field at that time and whom I could join and you know learn on a fast track. So one such person was, Dr. Feroz Ali at the time and I approach him and he was kind enough to help me and has been a good mentor, guide and teacher of law. Venkat: So when you met Dr. Feroz for the first time, you had plans of becoming a patent agent?. Mr. Aslam: Yeah, I mean, I wanted to make a career in IP and when I met him for the first time and I told him that this is what my career aspiration was, yeah he was pretty positive, so like most other people from my friends and relatives were saying, you know, this is too late a time for you to look for a career shift, you have been doing very well in this field, why should you go, it will be difficult and things like that, but Dr. Feroz Ali did not give me any such negative comments, rather he said yeah, it’s okay, if you want to learn and you have the aptitude to learn and you should be able to do it. The first thing that introduced me to IP, so to say, was Dr. Feroz Ali’s book, his book on Pharmaceutical patents, patent law with respect to pharmaceuticals. I am not able to recall precisely the exact title of the book, but that book is still available on the stands, I read up that book and that book helped me a lot, it gave me a, you know, nice grounding on what patent law was all about, because it is the law, the explanation, and commentary and case laws, so this give you a beautiful understanding of what is the purpose of the law and how the law executes and you know how the patent dispensation is brought about in the country. Venkat: The book you are referring to is, The law of patents with a special focus on pharmaceuticals in India, written by Dr. Feroz Ali and did you right away pick this book to understand patent law? Mr. Aslam: Yeah, I mean, the book certainly is big and a it was a formidable thing when I first saw such a big book, but then when I started to read it, all my fears were allayed in the first few pages, because it was very simply written, and the book is bulky because it talks of Indian law and it compare it with the UK patent law, so I mean that’s one of the reasons why it is so bulky, but otherwise it is definitely worth a read because it tells you, not just quotes what the law is, but it also gives you a beautiful explanation along with the commentary and case laws. So I would recommend that anybody who wants to start afresh in this line of patent law, any time spent on reading this book is not a waste of time. Venkat: When did you first hear about the patent agent exam? Mr. Aslam: Well after I joined Dr. Feroz Ali, he had told me that you would need to clear a patent agent exam, although I knew that there was some exam and all that, but I wasn’t sure as I told you, I had no background in IP or patent or anything whatsoever, I was entirely into another line, but when I came to him, I started to read this book and he also told me that there is a patent agent exam that happens every year, those days it used to happen every year or sometimes, in the years previous to that it used to also happen twice a year. Venkat: So which book did you use to prepare for the patent agent exam? Mr. Aslam: Okay, regarding reading for the patent agent exam, first of course, I read this book, so it gave me a good understanding of what patent law is, and then of course the act and rules and what I would strongly recommend for learners and aspirants, people aspiring to become a patent agent is that they should read the manual. Read the act and rules repeatedly, 1 reading, 2 reading is not enough for an average person like me. I read the act and rules a couple of times, so you should read in a manner that will link in your mind, that that section to that that rule, so if you read a section you should know what the corresponding rule is or if you read a rule you should know what the corresponding section is, this would definitely help you, and of course alongside you will also need to read the forms. So you have the forms which form part of the rules. You need to know the forms, which form is for what and which section and rule deals with that form and also the fees. So once you are thorough with this I think most of your job is done. Venkat: How long did you prepare for this exam? Mr. Aslam: Well as I said, I took about an year or so, but I think you need at least 4 to 6 months of intensive study and preparation, because questions can be tricky, so unless you know the sections and rules, that is the act and the rules like the back of your hand, you are going to find it difficult to tackle the exam, because many a time even after the exam is over, I have seen people, you know arguing over which rule and which section is the correct answer for a given question, so you need to know it thoroughly. Venkat: Since this involves recollecting sections and rules is there a strategy to prepare? Mr. Aslam: I would say that you need to memorize the sections and rules, not the text fully so to say, so when I say memorize you should know which section corresponds to which rule and which form and the fees of course, that part is in your memory, but the entire text of the sections, memorizing that I would not recommend, I would say that you need to understand what the sections says, if you talk of section 6 you need to know what section 6 is trying to tell you, so section 6 talks about who can apply for a patent. It actually enumerates the persons who can apply for a patent. It can be either an inventor or someone who is an assignee of the inventor or a legal representative or a representative of a legal representative. So long as you can understand this and reproduce it in your own way, you are fine. You need not memorize this, but you need to memorize the aspect that it is section 6 that talks about who can apply for a patent. So that’s what I mean by memorizing, I know there are people who can memorize, but I don’t think it is necessary to memorize the entire act and rules. Venkat: What I meant was, if there is a specific flowchart and figures that can be used to remember these sections? Mr. Aslam: Yes, that’s a good question, because everyone has his own way of, his own unique way of preparing and taking notes is a good way to prepare and I do that extensively, so one is when I read the act and rules or Dr. Feroz Ali’s book or even the manual, I will mark off what appears to me to be something very important from the examination point of view, so that I can go over it again and you know pick up those important things that I have marked off, that is one thing. The other thing taking notes and understanding what it is, because there are some sections that could be confusing as to what the section is actually trying to tell you, certain things I have noticed about the patents act per se, the patents act could have been written or framed or drafted in a manner that is better than what it is today. It can be simplified, so what I do, I prepare my notes in a way that simplifies the understanding of the act, okay so once I do that and then I go over my notes hat gives me a better understanding and of course flow chart and forms, linking sections to rules to the forms and the fees is something I prepared along with the timelines and all that, so I prepared all these charts and before the exam I used to go through all of them a couple of times. Venkat: How frequently did you sit to prepare for this, what I mean is, did you allot a specific time in the day to prepare? What I’m asking is did you prepare full time for the exam? Mr. Aslam: It was more or less a full time preparation because I was in Dr. Feroz Ali’s law firm, so most of the activity was related to patents, prosecution or drafting or you know other queries of clients and all that, so all of that pertained to my preparation, so in a way it was, I had hands on experience and preparation and alongside of course I used to take notes and I used to very often go to Professor Feroz Ali and ask him to clarify my doubts, it was an intensive, but worthwhile experience. Venkat: Now let us shift gears and talk about the patent agent exam itself, how many parts are there in the exam? Mr. Aslam: Okay, the patent agent exam has two papers. The first paper is all about this, so first paper you need to know the act and rules thoroughly, the second paper is more on drafting. Venkat: Is it a multiple choice based questions? Mr. Aslam: In the first paper, if I remember right has part A with multiple choice and it has about 40 marks or something on multiple choice and to clear this part A itself you need to have thoroughly studied the act and rules. So one reading or two readings for an average person like me wouldn’t suffice, so you need to know as I said which section, what it says, what it allows, what it does not allow, because some of the selections may not expressly define what they allow and what they don’t allow, so those things have to be inferred from, and this is what the question paper actually test you for. So they want to know if you have studied the act and rules and how much of it you have understood actually. How well are you able to interpret the law, so you can practice as a patent agent and do justice to the interest of the inventors and applicants of patents. So towards this end you need to understand whenever you read the section, learning the act by heart is not the answer, you have to understand it, so they are not going to ask you to reproduce verbatim what a given section says, but they are going to ask you something from a section in a way that you would not be able to answer if you have not understood it, that’s how it is, so you need to understand what the law allows, what it does no allow and the rules tell you how to comply with that requirement, what is the fees, what is the timeline and these things and that is part 1. Then of course, after part A you have some descriptive questions as well, Part B and Part C are short and long descriptive type questions, for these again you may be asked in real life scenarios where if an inventor approaches you with an invention or if he wants to file and he has a restriction of a timeline or if has done something which may or which is seemingly likely to prejudice his rights for monopoly over that invention then you need to answer it. Venkat: If I understand right, paper 2 is a situation based on questions and you’ll be tested on how you advise your clients on different situations. How about patent drafting, will you be tested on that as well? Mr. Aslam: Yes, paper 2 is more on drafting. So you would be given an invention or two and asked to draft a claim and this one question which is very important, you need to draft a full patent specification based on an invention disclosure that is provided to you, of course you will have a choice between a Biotech/chemistry related patent and a mechanical or some other invention. So you would have a choice of biotech/chemistry related invention and an invention which is a Mechanical or other engineering invention. So this takes care of examinees who come from the two disparate backgrounds. Venkat: You mentioned specific domain based drafting, how many questions are based on domain specific, I mean biotech, chemistry or engineering? Mr. Aslam: See drafting each question will give you a choice between these two domains, but it is left to you to choose which ever, so what I would do is, since I come from a life sciences background, when I sat for the exam I went through the question paper had given a Biotech related inventions and a Mechanical Engineering invention, but when I read the two, I found the mechanical invention be easier for me to answer, so I chose the mechanical thing, so it is up to you to choose. Venkat: Is there a specific number of questions? Mr. Aslam: Yeah, there is one question on drafting a full specification, when I gave the exam and there is one question on drafting only the claim and then the remaining were real life scenarios where, you know how you would advise you client and those days there used to be some questions on licensing, preparing or drafting a licence agreement, but I am told that in the current format this thing is removed. So people who are not lawyers and who don’t have any background in drafting contracts and agreement they need not worry, so now the exam is easer, those days we had to do that as well. Venkat: It looks like paper 2 is more of writing instead of picking and choosing, how did you effectively manage time especially paper 2? Mr. Aslam: So this is an important question for aspirants, because no matter how well you know the act, no matter how well you understand the invention, it all depends on how well you write, so one of the key things on preparation is you have to write and practice, you have to write, for your drafting paper, for the second paper, you have to practice by drafting specifications, drafting claims and then you know having them checked and corrected for errors by people who are already patent agents. This is something very important, if you don’t write, because that’s one of the reasons why many people are not able to finish the exam on time, because it’s a long paper and you should have some writing practice. Venkat: Since paper 2 is descriptive how many pages you write to justify your answer or can I as well write it in four lines explaining the sections and rules pertinent to that question, where is the line drawn here? Mr. Aslam: It is not like, in the lighter vein, when people say, you know, if you write more than so many pages you will pass, so the patent agent exam is not like that. So long as you are able to make your point clearly, concisely in a manner that gives the examiners the impression that yes this gentleman has understood the act and the rules and he is capable of drafting a patent specification that will qualify for a patent grant that is fine. Venkat: Now let us shift gears and move to the next part of the patent agent exam, so these are paper 1, paper 2, and there is a viva session also right, so walk us through the entire process, is paper 1 and paper 2 just a 1 day exam or you finish off everything in one day and wait for the result? Mr. Aslam: Yeah, that’s how it was when I gave the exam, and I think it is an one day affair, where in the forenoon you give paper 1 and the afternoon session is paper 2 and I think those who qualify in these two papers are shortlisted for the viva and viva is again another test to know how well you have understood the act and rules, so again questions are from same act and rules as well as you know real life situations where, your know, they throw a question at you about a situation where there were something like 2 inventors, they were husband and wife, they were a married couple and they came up with an invention, after they filed a patent they went through a divorce and now each one of them claims that the invention belongs to them, so how would you advise them or what would you advise them. Venkat: How long is this viva session? Mr. Aslam: Viva session is about 20 to 30 minutes per person. It could be shorter because, if they see that you are not answering questions then they may make it shorter for you. Venkat: How is one evaluated during viva exam? There is no way one can recall the sections standing in front of these examiners, how to handle this situation? Mr. Aslam: What I have heard from other people who gave the exam and cleared is that during the viva if they ask you something that pertains to a section and the answer that you propose to give warrants that you quote the section also and over and above that you are not able to quote the section or you are not able to readily recall it you can excuse yourself by saying, I don’t readily recall this section number, but I am sure this is what it says, so it is the understanding, it is the understanding of your law that they test. It is not your memory power that they test and I am not sure even the examiners would not remember the act and rules, if someone has been practicing as an examiner or controller for say 10 years, he would not be able to reproduce the act verbatim from section you know from start to finish, that is not possible. Venkat: You have successfully been through this process and became a patent agent or we call it as patent attorney, how was the journey like once you become a patent agent? Mr. Aslam: I continued to work with the same firm, and you know we used to draft and prosecute patents. Venkat: The reason I asked you is that all the preparation that went into becoming a patent agent, how often do you use patents act book and do you recall the section pertaining to every situation that you come across? Mr. Aslam: The name for human beings in Hindi and Urdu is Insan and Insan means someone who actually tends to forget, if you don’t keep in touch with the act, we would forget it, that’s natural, so what I do as a practitioner is I always keep the act and rules handy with me, a copy of the act and rules is always with me. So I keep this handy and every now and then I keep referring. So this is how you can refresh your memory with. Venkat: Since you transitioned from Science to Banking to being a patent attorney, do you still miss learning science or do you miss your previous job? Mr. Aslam: Yeah, I mean, the life as a patent attorney is certainly exciting, because while there was a great amount of excitement and freedom in my banking career, this is entirely different because you are your own boss. So you know, you can generally call the shots, so long as it is within the timelines that the act has prescribed, but you have good freedom to operate the way you want. You can do your work at home, you can carry your work overnight and things like that, so it is an individual practitioner, it’s like any other professional, rather than like an employee, so the difference is between an employee and a professional. Venkat: What skills are tested as a patent agent, other than clearing the patent agent exam what skills are needed to becoming a successful patent agent? Mr. Aslam: Giving the exam and qualifying is just the beginning actually, so your knowledge is put to test everyday, everyday that you practice is a test actually; because every invention in itself is something new and different, and everything poses a different challenge, although most of the challenges are similar, but they are not the same. So you need to everytime refresh your knowledge of the act and rules as well as the way you interpret them and how well they can be used to the advantage of your client. This is a challenge and you know everyday is a day of learning for you. It’s something that learning does not stop here, so everytime you draft a new patent specification you have learnt something new and it will help you be a better person than you were yesterday. Venkat: So what is your core domain, which domain do you cover in terms of patent prosecution or pattern drafting? Mr. Aslam: I restrict myself, I have chosen to restrict myself to the drafting part of it, but there are a lot of other things that you can specialize in, you have the drafting part, you have prosecution part, you have the litigation part, all the litigation is done by lawyers, they again have to depend on patent agents, because it is the IP service providers that do the ground work for litigation, for example if a patent has to be invalidated or if there is an infringement proceeding, it is the patent agents and the other IP service professionals like paralegals and IP analysts who do the search and you know give the data that is required for invalidation of a patent. So there are a lot of, you know, sub niches in this field, where one can specialize, so you can take one thing as search and be a search expert and you can say you are a man whom people can come to if they want to invalidate a patent. If you are a cat in that, then you can make your career and good earnings from, you know any given niche like this. Venkat: In fact, you gave me the lead for my next question, so once you become a patent agent you can still diversify into drafting, prosecution and also litigation, right? Mr. Aslam: Yes. Venkat: I mean once you are a patent agent you are trained to do any of these things, so it’s up to the individual to pick and…. Mr. Aslam: It’s up to the individual and the environment he is working in, lets say if he is working in a small firm with a few people, then he may have to do most of these activities, he will be a jack of all trades, whereas if he is in a big setup or in a specialized setup where you know they specialize only in invalidations then you know he picks up that and that becomes his core area of activity. Venkat: Career advice for aspiring patent agent? Mr. Aslam: They should first focus and somehow clear this examination, because this will give them a lot of confidence when they interact with other IP professionals, because one of the first questions that anybody asks you is, are you a patent agent? Have you qualified is what people ask you, if you have qualified then that gives a boost to your morale also. So, I would say that this is the first step and this is the beginning of a great career. Venkat: Other than clearing the patent agent exam what skills are needed to become successful in this field? Mr. Aslam: Of course, I would add here that he should have a good command of English, reasonably good, because he has to interpret, even if he qualified for the exam, he cannot do justice to his clients if he is not able to draft good patents or not able to interpret. Venkat: Thank you Mr. Aslam for your time, I am pretty sure our listeners must have gained a lot in this interaction. Mr. Aslam: Well, thank you for having me here, and for the aspiring patent agents my final advise would be that they should study hard, it is not like the other exams where you know, even if you have studied something, you write something and there is a possibility that you will get through, no generally it doesn’t happen, there are people who have studied real hard and not been able to clear the exam, so you have to work hard and God will reward you for your hard work, so let me wish every aspirant the best and God is great! Venkat: Thank you Mr. Aslam. Thank you again. Mr. Aslam: Thank you. Venkat: Please subscribe to our LexCampus channel to listen to other podcasts.