In conversation with Amit Dubey on working as a Patent Agent in India

In this interview Mr. Amit Dubey talks about his journey as a Patent Agent in India, how a Patent Agent is different from Patent Attorney, pre-requisites to become a patent agent, Global opportunities for patent agents registered in India, the roles and responsibilities of a patent agent, niche areas in Intellectual Property Laws which might offer opportunities in coming years and so on. He has been interviewed by EBC/SCC Online Student Ambassador Avni Jain who is currently pursuing Law from Department of Law, PIMR Indore. 

1. Please introduce yourself to our readers?

I am practicing as an Advocate, with qualification of LL.B. (Hons.) from Indian Institute of Technology, Kharagpur and also having graduated in Bachelor of Technology. I am into the specialized practice of Commercial, Tax, Intellectual Property and Writ matters, and primarily practicing at the Madhya Pradesh High Court, and also have regular appearances before Supreme Court, various High Courts and Tribunals across the country.

I am Partner at JMVD LEGAL a corporate, tax, intellectual property & business advisory law firm,I am associated with renowned International and National professional bodies and regular speaker and participant at their conferences/ talks/ meetings/ seminars/ courses, apart from being regularly invited as Judge in various International Moot Court Competitions. In line of my endeavor for knowledge sharing and learning activities, I am regular visiting faculty at reputed law institutes of the country. Some of the professional bodies with which I am actively associated are Global Intellectual Property Convention, The Institute of Company Secretaries of India, The Institute of Chartered Accountants of India, The Chamber of Tax Consultants, All India Federation of Tax Practitioners, Bombay Chartered Accountants Society, Tax Practitioners Association, Indore, etc.

2. You have done bachelors of technology and after that you did LL.B what made you pursue a career in law after engineering?

Post completing my graduation in B.Tech Applied Petroleum Engineering, I joined ITC Limited as Design Engineer and was involved in providing design related services to global Oil & Gas companies. After working for about 2 years I was looking to become an entrepreneur and at the same time wanted to enhance my knowledge and skills. Due to my work nature I developed interest in Intellectual Property and at the same time got the news of a course for engineers known as LL.B. (Hons.) in Intellectual Property Laws at IIT Kharagpur, soon I sat for entrance and reached the institute.

3. What are basic pre-requisites in order to become a patent agent?

In order to become a Patent Agent, one shall meet the criteria specified under Section 126 of the Patents Act, 1970. As per which, the qualifications required to be a patent agent are as follows:

• He should be a citizen of India;
• Should have completed 21 years of age;
• He should have completed a degree in either Science, Engineering or Technology from any university established under law for the time being in force in the territory of India or should possess such other equivalent qualifications as specified by the Central Government;
• He should have either passed the qualifying examination (Patent Agent Exam) prescribed for the purpose or should have functioned either as an examiner or discharged the functions of the Controller under section 73 or both, for a total period not less than 10 years provided that, at time of making the application for registration, has ceased to hold any such capacity;

Prior to the 2005 amendment to the act, along with holding a degree specified in one of the field mentioned under clause (c), the person should also have had a degree in law. This requirement was removed through the 2005 amendment.

4. How is patent agent different from patent attorney? What are the roles and responsibilities of a patent agent?

Patent Agent must possess a degree in science, technology or engineering, while for patent attorney degree in science, technology or engineering is not necessary. Further, for a patent agent law degree is not mandatory but for a patent attorney law degree is mandatory. For a patent agent one has to clear patent agent examination, while for a patent attorney one has to be registered with any of the state bar council. Now coming to the role, patent agents mainly carry out patent prosecution work that generally revolves around Indian Patent Office, while patent attorney mainly practices in litigation before courts.

5. Are there any Global opportunities for patent agents who are registered in India?

India being emerging market, patent agent are finding various new opportunities from all over the globe. It is observed that technologies are generally transferred to Indian entities thereby requirement for Indian grant arises. Further, as the costs of preparing, filing, prosecuting and maintaining patents have become extremely high in the Western World, it resulted in opportunities for Indian patent agents to work for Fortune 500 companies.

6. There are always certain areas in each domain which are underdeveloped. Please tell us such niche areas in Intellectual Property Laws which you think are yet to evolve & which might offer opportunities in coming years?

In my view whole of the area of Intellectual Property is at nascent stage and underdeveloped. If I’m asked to point out a few, I may say the following:

• I feel still lot of development is required in the field of litigation. However, recently we saw the coming of Commercial Courts Act taking up IP matters more efficiently.
• Lot of development is required in the field of valuation. We recently saw the initiation of era of registered valuers classified into three classes i.e. land & building, plant & machinery and financial assets, but we have no class for IP assets. Therefore, we have no valuation rules and registered professionals for IP assets.
• Trade secrets are also a very important area and we have no specific law to protect the same.

7. You mainly deal with issues pertaining to Intellectual Property, taxation and commercial matters, what would you advice to those who intend to pursue career in these fields?

First and foremost, mantra is to have passion towards your field, I have passion in technology and which helps me to work.

9. Any final parting words?

Continuous knowledge, passion and most importantly patience is the key to success.