May 9, 2013

The constitutionality of section 126 continue. ..

In the last post I discussed some of the issues particularly in reference to Art. 14 of the Indian Constitution. On continuation to that there are few other issues which are, and aren't directly related to violation of fundamental rights per se, but definitely add to the unconstitutionality of the section 126 of the Patent Act.  These issues are as follows:

1. The body selecting the patent agents: The patent office itself selects patent agents. It is well understood in law that the Controller (or proceedings before Patent Office) is a quasi judicial body. The Controller must just act judicially.  Various proceedings in front of Controller are judicial proceedings. All the natural laws are well applicable to any person appearing before the Controller and a writ may be filed if such rights are violated.

If Controller prohibits a person appearing on behalf of an applicant for not being a Patent Agent and sticks to the requirement of representation only by a Patent Agent, the Controller in effect, selects legal representation of opponents in matters before quasi-judicial authority, in which the Patent Office is itself a party. What does it sound? Violation of administrative principles of bias and violation of natural right by snatching best possible legal representation? What more? Article 14 is gone.

2. Article 19 violation;  I don't have much to say on this.  Reasonable restrictions of Article 19 must meet the test of Article 14. If there is violation of Article 14 and the subject matter also environs article 19 on common grounds, essentially it must violate article 19 as well.

The drafted section 126 and 127 suffers from lots of constitutional issues. This might be due to hurriedly drafted Patent Amendment Act 2005. I suspect that some of these issues might arise in Appeal (if Patent Office decides to appeal). Whatsoever,  I don't think apex Court should allow the petition declaring Section 126 of the Patent Act enforceable in law.

  
Meanwhile, I know of a RTI application filed asking clear guidelines in light of change in law and details related to the case. We will see more of this sooner.

May 2, 2013

Constitutionality of Section 126 of The Patent Act


Recently, Madras High Court decided on a matter concerning Section 67 (a) of the Patent Amendment Act, 2005. It held the 2005 amendment unconstitutional and unenforceable in law. The decision restores the deleted clause of section 126 back to the place and section 126 may now be read as:

Qualifications for registration as patent agents.—(1) A person shall be qualified to have his

name entered in the register of patent agents if he fulfills the following conditions, namely:— (a) he is a citizen of India; (b) he has completed the age of 21 years; (c) he 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 in this behalf, and, in addition, (i) is an advocate within the meaning of The Advocate Act 1961 (25 of 1961; or (ii) has passed the qualifying examination prescribed for the purpose; or (iii) has, for a total period of not less than ten years, functioned either as an examiner or discharged the functions of the Controller under section 73 or both, but ceased to hold any such capacity at the time of making the application for registration; (d) he has paid such fee as may be prescribed.


Reading through the decision was mazy and lead me to turn the pages multiple times to realize a probable miss-out. Anyway, I thought of writing down where Court might have missed pieces. Needless to say, it is also an opportunity to verify my understanding with all my readers. Your comments and suggestions are welcome.
First: the underlined and bold part of the section 126 quoted above:
The judgment reiterates, that the prior to the impugned amendment (that is amendment of 2005), any advocate could register themselves as the patent agent. This statement is factually wrong. ( and this statement actually create a doubt on the reasoning of the judgment and the obiter. I was actually lost thinking why would judge discuss law as social science? The amendment to the requirement of science degree was not even challenged in the writ petition!!) 

Even prior to 2005 amendment, the law as it stood was to make only those advocates eligible to be registered who held a degree in science/technology/engineering. Any Advocate was not eligible to be registered as Patent Agent. I am not sure if the whole judgement is based on this mistaken fact ! Well this anomaly typically is pretty much distraction while reading the judgment. (and while writing this blog as well !!). 

Coming to the constitutionality of section 126 of the Act. The judge struck down the 2005 amendment on the basis of Article 14, 19 and 21. I majorly agree on the conclusion of judgment, however, my reasoning may not be in congruence with the judgment and I independently have tried to see the constitutionality of the amendment and section 126.

Article 14 wrt 2005 Amendment:

 Article 14, being one of the Fundamental Rights, mandates equal treatment of persons before law. However, the state may choose unequal treatment if the state may justify the cause. Briefly speaking the Article 14 may legally be violated if it passes the two step test i.e.:
      a.   the enactment creates an intelligible diffrentia among the persons  
      b.      And that the intelligible differentia has a rational nexus with the object that the statue seeks to achieve through the legislation.[1]

The intelligible diffrentia must clearly indicate the group of people created and those who are clearly left out. The object of the enactment is gathered from the mischief the enactment has sought to remedy and is a two way step:
     1.      Determine the mischief that existed at the time of enactment.
      2.      How legislation has remedified that mischief with respect to the enactment.

Having said this, let us see the intelligible differentia in Section 126 and the object of the enactment.

Intelligible differentia: The Science graduates who have passed the Patent Agent Examination. Sounds Good!

Object of the Enactment: The object and reason section of the Patent Amendment Act, 2005 is silent in this particular context. The object of the statue can be gathered from section 127 which states rights (and hence duties) of the Patent Agent. Section 127 is enacted as:

127. Rights of patent agents. Subject to the provisions contained in this Act and in any rules made thereunder, every patent agent whose name is entered in the register shall be entitled-
(a) to practise before the Controller; and
(b) to prepare all documents, transact all business and discharge such other functions as may be prescribed in connection with any proceeding before the Controller under this Act.

Please note that section 127 doesn't mention any other object!! (No mention of understanding the invention, or clarifying the invention or technology or engineering or any other similar requirements).

Rational Nexus between the Differentia and Object: The intelligible differentia must have a rational nexus with the object of the enactment. This is where the 2005 amendment gets a blow. What is nexus between the drafting/pleading and transacting the documents in front of controller and being a science graduate? The answer is that a drafter or a prosecutor may be able to understand the subject matter more clearly and thoroughly. The next question is how an Advocate, (who by the way, is science graduate and trained to and certified by BCI to argue cases and represent the clients in District Court, High Court and Supreme Court in matters concerning the Patents and other laws!!) is not creating a better nexus with the object of the enactment? 

The unanswered question is more of question of fact. Are the science grads after passing a Patent Agent Examination are better versed to practice in front of Controllers than Advocates who are both lawyers and science graduates, and are certified by BCI after due diligence? What does Patent Agent Examination test? Knowledge in law or knowledge in technology or both? If the Patent Agent examination is designed so as to cover the aspects mentioned in section 127 of the Act, are aspects of section 127 alien to Advocates? Is the subject matter covered in Patent Agent Examination is not covered in Law Universities? What is more important, a specialized knowledge of the Patent Act or understanding of law in general, or both?

Well my opinion: The object gathered from Section 127 is not achieved by the Section 126, or at least there exist one class which is in equal or better position to create the intelligible differentia, and is left out. Eliminating a better qualified class to achieve the object of the statue is unreasonable classification. For example, P Rajendran v State of Madras, the Apex Court has denied the Constitutionality of the enactment when the intelligible differentia environed a lesser qualified person to achieve the object than more qualified person through the statue. Case is similar here. Again, legislature must reflect the nexus in the Act. Courts are not going to take the argument that it is Constitutional because some international treaty is in force. International treaties are not binding on any Indian Court

The point is simple and straight: Either the law is arbitrary, or the legislature hasn’t drafted the Act diligently to make the section 126, section 127, and object of the Act robust enough to withstand the test of Article 14.

I am not against the fact that the Patent Agents should have legal and technical skills in a well blend mixture; I am just cognizant of the fact that my law is not permitting this criteria as fundamental rights violation are not justified with the present shape of the enactment. Either law changes to bring a rational nexus or the enactment goes!! 
.
The 2005 amendment did violated Article 14 at least on rational nexus. There are some other parameters which might find force in unconstitutionality of Section 126 at its present form. I will give it a go right now for my next post.


[1] The test was clearly expressed by Das J in State of WB v  Anwar Ali Sarkar, AIR 1952 SC 75. The test has been repeated in different cases and is a strong established precedence in the Apex Court.

February 26, 2013

Form 27 of Indian Patent Rules, 2003: “Working” or “non-working”






Picture was taken from Here
As per notification no: CG/Public notice/2013/77*, dated 12th February 2013, which is available here. All patentees and licenses (whether exclusive or otherwise) are required to furnish information regarding the working of patented invention on commercial scale in India in form 27, within three months of end of each year. The Indian Patent Office has recently taken a serious note of the fact that compliance with this provision has been overlooked by a majority of patentees since long time.


Section 146 (1) of patent Act provides power to controller to ask for information from a patentee at anytime during the continuance of patent by notice in writing. This section casts a duty on patentee or a licensee (exclusive or otherwise) to provide information related to working of an invention on a commercial basis to controller in the form 27. As the wording of this section uses “and” Both patentee and license holders have to submit the form 27 duly filed. It is also required by the section that duly filled form should be submitted to patent office within two months of such notice by controller. Section 146 (2) of patent Act, mandates patentee & license holders to furnish information to controller, not less than six months from previous submission to controller. However, Section 146 (2) of patent Act provides controller an authority to publish the information regarding statements by patentees & license holder in the manner deemed fit. 

Section 122(1) (b) of patent Act states that if any person refuses or fails to furnish information under section 146 of patents Act shall be punishable with fine whish may extend up to ten lakh of rupees. Punishment here provided is compoundable.  Section 122(2) of patent Act states that if any person provides false information or statement which is false, shall be punishable with imprisonment which may extend to six months or with fine or with both. Punishment here provided is non-compoundable.  

Options available to Patentees & License holders: 

First option which is available to patentee & license holders is to provide the information as sought by controller within stipulated time(31st March in this case). If the invention has not been worked upon, it’s high time that patentees & license holders should start working on the invention & state in the form 27 that invention is being worked upon and currently do not posses sales data, manufacturing data, import data & choose option of partly met public requirement. 
Consequences of providing false information to controller:
If Patentee & License holder chooses to submit the form by providing wrong information, then they shall be punishable with imprisonment which may extend to six months or with fine or with both. The very act of the Patentee & License holder will draw the attention of criminal procedure code. 
Consequence of providing information regarding “Non-working” of an invention:If 

Patentee & License holder chooses to submit the form by providing the option of patented invention ‘not worked”, then Patentee & License holder must state the reasons for not working and steps being taken for ‘working of the invention’.   
  • The non-working of a patented invention on a commercial scale in India makes the patent vulnerable to compulsory licensing provisions under the Act, especially to the inventions which are recently granted. Applying & getting compulsory licenses are still at its nascent stage in India; however we also need to consider the growth & development of various aspects of technology as well as Intellectual property scenario. Practically speaking for compulsory licensing, it requires expiration of three years from date of grant, but non-working of invention will give an added advantage to the person applying for compulsory licensing. Any interested party who has been unsuccessful in procuring a voluntary license from the patentee can file an application with the Controller requesting for a compulsory license after expiry of three years from grant of the patent. Such person needs to establish the occurrence of any of the three conditions mentioned in Section 84 of the Act. One such condition is that the patent should have ‘not worked in the territory of India’. If the Controller is satisfied, he may grant the applicant a non-exclusive compulsory license for the balance term of the patent, unless a shorter term is consistent with public interest. The patent can subsequently be revoked after the expiration of two years from the grant of the compulsory license on application by any third party or the Government if it is established that the compulsorily licensed patent has not satisfied the purpose for which it was granted. 
  • It is a well established fact that a patent is granted in order to encourage innovation and to ultimately serve the public interest, however, Controller cannot suo motu revoke the patent. Neither is ‘non-working’ a ground for revocation of a patent by a person interested under Section 64 of the Act. Therefore, non-working would not directly lead to revocation of patent. 

    "It is advised to Patenees & License holders to file form 27 duly filed for working of invention & in case, invention has not been worked upon, it is high time to look upon"