A patent agent in India is someone who acts a bridge between a patent applicant and the patent office. A patent agent is expected to be well aware with patent law and advise clients on procedural and technical matters. Section 127 of the Indian Patent Act defines the role of a patent agent as:
“a. to practice 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.”
In practical scenarios, the above provisions of the Indian Patent Act translate into several activities:
Let’s look at these aspects in more detail below:
1. Inventor Interview:
This is one of the initial steps when an inventor comes up with an idea. A patent agent conducts an interview with an inventor and understands the idea in detail. The patent agent can ask several question to get an in-depth understanding of the invention at this stage. These questions may include questions on the details of the novelty and inventive step of the invention, differences with respect to the prior art and other implementation details of the invention.
2. Patentability assessment
Patentability assessment refers to ascertaining the specific features of the invention that are patentable. The patent agent can take the available prior art into consideration and determine the features that are novel and inventive over the prior art. These are the features from which independent and dependent claims are written while drafting the patent application.
3. Patent drafting and filing
Patent drafting refers to writing a patent application. Once the patentability of the invention is assessed, the patent agent’s responsibility is to write the patent application. This step includes several intricacies and involves writing claims, detailed description and drawings. The patent agent should ensure that the patent application is well-written and complies with the Indian Patent Act.
Once the patent application is drafted, the patent agent can incorporate any additional inventor inputs into the drafted patent application. There can be multiple iterations with inventors before finalising the patent application. Once the patent application is drafted, the patent agent prepares the necessary forms provisioned in the Indian Patent Act and files the patent application with the forms with the Indian Patent Office.
4. FER response preparation
Once the patent application is filed with the Indian Patent Office, it can either be granted or rejected based on its merits. If the patent application is granted, it’s great news. However, if the patent application is rejected, the patent agent understands the rejection (called First Examination Report or FER, commonly) and prepares a response to the rejection. This response is a detailed document that addresses all the rejections raised by the Controller (This process is called patent prosecution).
5. Attending hearings and preparing written submissions
At any stage during patent prosecution, the Controller may issue a hearing notice to the applicant. The patent agent attends the hearing (applicant may or may not be present) and discusses various possibilities of amendments with the Controller. Post this, the patent agent prepares a written submission which is similar to the response document mentioned in point 4 above. This document addresses pending rejections and includes any amendment proposals discussed during the hearing.
6. Patent maintenance
Once the patent is granted, an applicant needs to maintain the patent by paying annual renewal fee (refer point 19 here) to the patent office. The patent agent facilitates this by tracking deadlines, timely informing clients and facilitating fee payments. It’s critical not to miss these deadlines since the patent can potentially lapse is the annual renewal fee is not paid.
7. Track deadlines and inform clients
By now, it is safe to deduce that during the entire patent lifetime, there are several deadlines with respect to patent filing, prosecution and maintenance. Failing to take an action at any of these deadlines can result in the abandonment of the patent application or lapse of a granted patent. The patent agent helps applicants in tracking such deadlines and assisting them by taking requisite actions.
Hope this article was helpful towards understanding the responsibilities of patent agent in India. Do comment below to share your thoughts!