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The ToI recently reported that Madras based advocate Sanjay Gandhi has sued the Controller General of Patents before the Madras High on the grounds despite being “entitled to appear before the statutory body [Patent Office] and advance arguments in his capacity as a qualified advocate, he was disallowed from doing so.” Advocates qualified under the Advocates Act, 1961 have been claiming for some time that they are entitled to practice before the Patent Office without qualifying as a patent agent because the Advocates Act entitles them to practices in all forums.
Section 132 of the Patents Act specifically clarifies that advocates not qualified as a patent agent cannot be prohibited “from taking part in any hearing before the Controller on behalf of a party who is taking part in any proceeding under the Act”. Hearings are however only one aspect of proceedings before the Patent Office – the more lucrative aspect of the patent office practice is the filing of patent applications and it is not clear whether Advocates are allowed to file patent applications under the present law because it seems absurd to allow advocates to take part in hearings but prohibit them from filing patent applications.
It appears that Gandhi is basing his argument on an earlier judgment of the Madras High Court in the case of Chockalingam v. Controller of Patents (2013), a judgment which in my opinion is on a very sticky wicket. In that case, the petitioner had challenged the validity of Section 67(a) of the Patents (Amendment) Act, 2005. The sticking point that led to the litigation in question was an amendment that deleted a provision of law that allowed advocates with degrees in science and technology to get registered as patent agents without taking the qualifying examination. The basis of the legal challenge was quite weak in my opinion but let’s not get into that issue right now. Suffice it to say that the court allowed the legal challenge and basically declared unconstitutional an amendment that deleted the provision that allowed advocates with degrees in science and technology to enrol as patent agents, without the requirement to take the patent agent qualifying examination.
This challenge was rather strange because the petitioner had in effect challenged the deletion of a provision from the law. I can understand a constitutional challenge to a provision that has been added to the law but is it legally permissible to challenge a provision that deletes a provision rendering it non-est? I am not sure. The question that we now have to answer is whether a deleted provision can be revived in law because a court has declared the deleting provision to be unconstitutional? I am certain that this question is confusing and I think it will help to briefly reproduce different versions of Section 126 from 1970 in order to understand the sequence of events.
(a) Patents Act, 1970 as originally enacted
- 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 fulfils 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 from any University 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 Advocates Act, 1961; or
(ii) has passed the qualifying examination prescribed for the purpose;”
(b) Patents (Amendment) Act, 2002
The 2002 version: When the Patent (Amendment) Act, 2002 was enacted by Parliament, S. 53 of this legislation, it amended S. 126(1)(c), replacing the phrase “degree of any university” with “degree in science, engineering or technology”.
- 126 (1)(c) would now read as follows:
- he has obtained a degree [in science, engineering or technology] from any University 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 Advocates Act, 1961; or
(ii) has passed the qualifying examination prescribed for the purpose
(c) Patents (Amendment) Act, 2005
Section 126 was amended once again in 2005 to delete the first sub-clause allowing advocates with science and technology degrees to become patent agents directly without writing the patent agent examination.
Section 67(a) of the Patents (Amendment) Act, 2005 reads as follows:
“In section 126 of the principal Act,-
in sub-section(1), in clause (c), sub-clause (i) shall be omitted”
Post this amendment, the provision reads as follows (with the provision deleted being struck out):
- 126 (1)(c):
“he has obtained a degree [in science, engineering or technology] from any University 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 Advocates Act, 1961; or
(ii) has passed the qualifying examination prescribed for the purpose;”
In other words, the amendment in 2005 required all advocates, even those with degrees in science and technology to take the qualifying patent agent examination.
The Madras High Court judgment in Chockalingam v. Union of India
The Madras High Court judgment struck down Section 67(a) of the Patents (Amendment) Act, 2005 in its judgment in 2013. The relevant extract of the judgment is as follows:
“53. In the result, this writ petition is allowed, declaring that the impugned amendment introduced to Section 126 of the Patents Act 1970, by Section 67 (a) of the Patents (Amendment) Act, 2005 (Act 15 of 2005) as illegal, unconstitutional, ultra vires, void and unenforceable. No order as to costs.”
I am not sure on how exactly to interpret this holding because the court has struck down an amendment which basically deleted a provision of statutory law. Does this mean that the deleted provision will be automatically restored to the law? Does it now mean that the provision “(i) an advocate within the meaning of the Advocates Act, 1961” is now part of the law? This is a rather unique situation because most constitutional challenges are aimed at striking down a provision existing in the law and are not targeted at provisions deleted from the law.
Can you challenge a provision that does not exist in the law? I don’t think so. But presuming such a challenge is valid and the deleted provision is restored in the law as a result of the High Court’s declaratory judgment then in that case only advocates with a degree in science or technology should be able to enrol as a patent agent without take an examination. It doesn’t mean all advocates can be enrolled as patent agents.
In any event, this new petition by Sanjay Gandhi should hopefully offer some clarity on Section 126 and even Section 132 which is a provision that wasn’t really considered in the Chockalingam case.