The patent system’s exceptionalism itself manifests its complexity. The patent professionals including agents, attorneys, or any other person associated with the patent system are expected to possess the necessary qualifications to enable them to perform their role. In order to obtain patent protection in any country, a patent application has to be filed in the patent office. From preparing a patent application for submission, negotiating with the patent examiners for its grant, and appearing before the administrative tribunals within the office the patent professionals play an important role. It is essential to note that preparing a patent application and navigating the proceedings before the patent office requires an understanding of statutory provisions governing the patents, and familiarity of the scientific and technical details of the invention. As the scale of knowledge grows, it becomes increasingly difficult for any one person to stay on top of details and developments across a field, and specialization represents something of a natural division of labour. Patent system is no exception to this role.
The primary role of a patent agent is to help any inventor or applicant secure legal protection for his or her invention by filing a patent application and prosecuting the same toward its grant. Any matter or proceeding before the Patent Offices can be represented by a patent agents. They can communicate on behalf of the applicant and represent them at all attendances before the Patent Office. In order to make a good representation in a competent manner, a patent agent must have the ability to understand an invention and its technical aspects. Expertise in the field assists a patent agent to better understand the invention and draft a technically sound patent application.
A patent agent at first may have to take instructions concerning the invention. Details regarding the nature and field of the invention are comprehended for understanding the invention. The patent agent must also establish what the inventors believe is new about his or her invention, how the invention is different from and advantageous over earlier prior art. Other details include information regarding the problem that the invention intended to solve, details with respect to inventor or entitlement with respect to filing the application. Adding to this, it is also essential to determine whether the invention meets the criteria of patentability in the country in which the patent is deemed to be protected. If the inventors do not have enough information about the field of invention, patent agent may be required to perform searches to get an overall idea of the invention.
In general, a patent agent must identify the essential idea or concept that the patent application should seek to protect and reduce the essential features of the invention to writing in a legal document called a Specification with one or more claims. Claims define the scope and extent of the legal protection conferred by the patent and their object is to provide the owner of the patent with a legal right to exclude others from making, using, selling or offering for sale the subject matter of the patent in the territory in which the patent is registered. The Patent Agent is required therefore to write the patent application and especially the claims in a clear and concise manner that can withstand. Also, they must possess sufficient knowledge to be able to review and advise the people whom they represent of the merit of any objections raised by the Patent Office, submit oral or written responses to the Patent Office that overcome the objections or amend the patent application so as to allow the application to proceed to grant.
To be a qualified patent agent, it is necessary to qualify the patent agent examination conducted by the Office of The Controller General of Patents, Designs & TradeMarks under the Indian Patents Office, Government of India. To be eligible for such examination a person must be
- Citizen of India and completed the age of 21 years
- Has 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 or possesses such other equivalent qualifications as the Central Government may specify on this behalf.