Does the Madras High Court judgment on S. 126 allow advocates without science degrees to become patent agents?

A few posts ago, we had written about a judgment of the Madras High Court, when we had been informed that a part of S. 126 of the Patent Act, amended via a legislation in 2005 was struck down as unconstitutional. We had also concluded that this legislation would now “allow all advocates to practice before the patent office without giving the patent agent exam.” 

It appears that this initial reading of the judgment was wrong. It does not automatically allow all advocates to practice as patent agents. It allows only advocates with degrees in science, engineering and technology to qualify as patent agents directly without having to write an examination. In order to understand the impact of the amendment, it is necessary to discuss the history of the amendments to Section 126.

The legislative history of Section 126

The 1970 version: As originally drafted S. 126 of the Patents Act, 1970 used to allow advocates, enrolled with the Bar Council to practice as patent agents. Citizens, not advocates, could be registered as patent agents only after clearing the qualifying examination conducted by the DIPP provided that they were Indian, over the age of 21 and had a “degree from any university” in India. I reproduce the entire provision below (as available on the patent office website):

“126. 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: -

1. he is a citizen of India;
2. he has completed the age of 21 years;
3. 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;”

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”.

S. 126 (1)(c) would now read as follows:

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;

This amendment now allowed for advocates to become patent agents directly without any additional requirements provided they met the new requirements i.e. a degree in science, engineering or technology. Advocates without science degrees could not sit for the patent agent qualifying examination.

The 2005 version: In 2005, when Parliament enacted the Patent (Amendment) Act, 2005, Section 67(a) of these amendments deleted S. 126 (1)(c)(i). The provision which was deleted allowed advocates to register as patent agents directly without the need to take any qualifying examination. Post this amendment, even those advocates with science and engineering degrees did not have a right to directly qualify as a patent agent. Instead all advocates would now be treated like any other citizen and would have to pass the qualifying examination conducted by the DIPP in order to register as a patent agent.

Section 126, post 2005 reads as follows:

S. 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;

Aggrieved by these amendments, Advocate Chockalingam filed a writ petition under Article 226 of the Constitution before the Madras High Court seeking a writ, declaring the deletion of the amendment introduced via Section 67(a) of the Patent (Amendment) Act, 2005 The Madras High Court granted this relief.

The exact words of the judgement are 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.”

Please note that S. 53 of the 2002 Act, which inserted science, engineering or technology was not challenged. That provision remains on the books.  

Post the judgement I’m not sure whether the provision deleted via Section 67(a) of the 2005 Act is automatically restored. Presuming that the provision is restored, the exact text of the provision would now reads as follow:

“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;”

Basically this means that advocates with science, engineering and technologies degrees can automatically become patent agents but advocates without such degrees cannot qualify to sit for the patent agent examination.

From a plain reading of the judgement it appears that the Court wanted to hold even S. 53 of the 2002 Act as unconstitutional but probably failed to do so because the petitioner did not challenge the provision.

So as things stand today, advocates without science degrees cannot even sit for the qualifying examination conducted by the Patent Office.