Introduction
In this complex legal landscape, the roles of an advocate and Trademark and Patent agents (collectively known as IP agents) are often misunderstood to be similar. While both play a crucial role in protecting and enforcing the rights of parties, they operate in distinct frameworks. An advocate is a person enrolled with the State Bar Council and has passed the AIBE exam, while trademark and patent agents are those who have registered with the IP office. The qualifications for both agents differ as per the laws. A person who is either an advocate or has qualified the Trademark agent exam can be duly authorized to file the Trademark applications and attend the proceedings. Whereas for a patent agent, a person upholding a science, engineering or technology degree must be either enrolled as an advocate or have duly passed the patent agent exam to file the applications and attend the hearing. Therefore, a specialization in science background is a compulsion. In analyzing the roles of IP agents and advocates, it becomes evident that the responsibilities of an advocate are significantly broader than those of an IP agent. While an IP agent specializes in conducting searches, preparation and prosecution of applications in compliance with IP laws specifically, an advocate engages in a wider array of legal activities.
Defining Professional Misconduct for Advocates and IP agents
An advocate is governed by the Advocate’s Act 1961 and the Bar Council of India Rules. An advocate can be suspended or his name can be removed from the roll if he is found guilty of professional and other misconduct. Similarly, for patent and Trademark agents, the controller is empowered to de-register those agents who are guilty of professional misconduct. Both the Act of 1961 and the Trademark and patent law do not define professional misconduct. However, BCI Rules on an Advocate’s Duty towards the Client under Standards of Professional Conduct and Etiquette clearly state that an advocate should not withdraw from its services until and unless it has a sufficient cause. In the State of Punjab v. Ram Singh, the court held that misconduct cannot be defined precisely; it is an inclusive definition. Misconduct can include improper or wrong behaviour, unlawful behaviour willful in character, a forbidden act, or a transgression of an established and definite rule of action or Code of Conduct. Therefore, an advocate has a duty towards the client, and any dereliction in the form of fraud, negligence, misappropriation of money, etc., can amount to professional misconduct.
A Separate Code of Conduct: Saurav Chowdhary v. Union of India
Mistakes made by advocates and Trademark or patent agents are viewed in the same light. In The European Union Represented by the European Commission v. Union of India & Ors., the court opined that the mistake of a patent agent is similar to that of an advocate, and as per the legal position, the litigants must not suffer from the mistake of the counsel. The same was reiterated recently in Saurav Chowdhary v. Union of India. In this case, a petition was filed against the patent agent for dereliction of duty. The patent agent failed to file the reply to the first examination report (FER) in the given period even after a constant reminder by the petitioner. Because of which the status of the application changed to “deemed to be abandoned.” The Delhi High Court stated that the patent application is a valuable asset for an individual inventor, and its complications are beyond the inventor’s understanding; hence, the role of the patent agent becomes crucial. The court, while directing the patent office to restore the application, further, stated that the applicant should not suffer the negligence of the agent and be deprived of the enjoyment of his rights. The court, further, outlined the qualifications of a patent agent and their crucial role in the patent filing process. It concluded that patent agents who are not advocates cannot be governed under the Advocates Act of 1961 or the Bar Council of India Rules, highlighting the need for a separate code of conduct. Consequently, the court directed the CGPDTM to draft a Code of Conduct to regulate patent and trademark agents. In the meantime, any complaints against agents must be addressed by an ad-hoc committee.
The Committees
Following the directions of the Delhi High Court, an ad hoc committee has been formed with the following members: Prof. (Dr.) Unnat P. Pandit, Shri N. K. Mohanty, Shri P. K. Pandey, Shri Subhatosh Majumdar, and Ms. Rajeshwari Hariharan. Additionally, the Ministry of Commerce & Industry has established a special committee to draft a code of conduct for Trademark and Patent agents. This committee includes the same members, except Shri N. K. Mohanty and Shri P. K. Pandey who has been replaced by Shri N. R. Meena and Shri S. K. Pandey. The committee is also seeking suggestions from the public.
International Framework
Many countries have established professional standards for trademark and patent agents. For instance, Canada’s Code of Professional Conduct for Patent and Trademark Agents specifies that no agent can withdraw from their services unless conditions outlined in the regulations are met and reasonable notice is provided. Similarly, the Ireland Patents Act of 1992 aligns with Indian patent law regarding the removal or suspension of patent agents, but it also grants the right to a hearing and the opportunity to appeal the controller’s decision. The United Kingdom has established procedures for addressing professional misconduct as well. Additionally, the USPTO Rules of Professional Conduct define misconduct and set forth comprehensive guidelines for practitioners in their dealings with clients, emphasizing the need for due diligence and effective communication as outlined in Sections 11.103 and 11.104.
Conclusion
One might wonder whether we truly need a separate code of conduct for IP agents, or if the existing BCI rules suffice to govern both advocates and the agents. The roles of IP agents are specific and limited. They are bound to complete their work within the given timeframe as provided under the IP laws & rules. Any delay or dereliction can cause the status of an application to change hence time is of essence in their work. Therefore, a dedicated code of conduct regulating the acts of these agents would be more effective than a general code. Additionally, advocates acting as agents would still be required to adhere to both sets of conduct rules in their respective capacities.
Written by Khushee, an assessment intern at Intepat IP.
