Columns Indian Scenario

Career in Intellectual property: A legal outlook to innovative science

Kripa Jalapathy

He who receives an idea from me, receives instruction himself without lessening mine; as he who lights his taper at mine, receives light without darkening me.” 

Thomas Jefferson,

Let’s take an everyday example of the popular thumb drive that stores masses of data, yet small enough (size of a thumb or smaller) to be carried with ease. A simple device that has changed the way data is stored in the modern day world, adorns many forms of IP. The device is protected under patents on the software and hardware components, the terms as thumb drive” and touch” are covered under Trademarks, the shape of the device itself is registered designs, the software and user manuals are protected under copyrights. Considering the creativity that had gone into making a device as this, IP is a way to reward to the creator. By adding value to laboratory discoveries, IP ensures that new research knowledge realizes its full commercial potential. Since the IP is available for public use, there is sharing of the technology that ensures incremental innovations resulting in improvement of technology. 

Why Patents and Patent agents – An India Scenario

As India emerged as an economic power in the 1990s, our policy makers recognized the importance of IP to encourage private investment in R & D. A guide published by WIPO (DG overview, 2003) and many other studies in the past has suggested that a healthy IP system is a key element in encouraging foreign direct investment (FDI). According to the WIPO report there has been a steady increase in FDI in India, ever since the patent and Trademark reform was introduced in 1990s. In the wake of India’s economic growth, it may be worthwhile be aware of the profound importance of IP, the role of professionals within this field and why IP is bound to have an important impact on our economy. The IP protection, mainly patents is the driving force for further innovation, technology enhancement and development of newer products that would impact mankind.

To legally own an IP, one has to file for its protection. The procedures associated with these may be rather complicated, often requiring an agent with a legal background to proceed with the application. It is interesting to note that the skill required for protection of each form of IP may require a skill that is different from the other. However, while most lawyers undertake copyright and Trade marks work, protection under patents requires specialized technical and scientific expertise in the area sought to be protected. Thus the largest demand for IP lawyers is for those who can do patent work. While the patent drafting in itself is extremely challenging, patent prosecution is equally demanding which requires dealing with the objections raised by the examiners. However, given the current economic trend, patents by far are one of the most useful forms of IP and the only form that protects innovative and novel ideas.

Being a Patent agent

Here comes the critical question as to what does the job as a patent agent entails. Let me lead you on here, you are sitting by the window on a rainy day sipping a hot cup of coffee. You see a boy trying to make a boat (with remnants of a can) to move in the puddle. Over a couple of iterations he manages to make this wonderful boat with few twigs, hollow straw, strings, and small metal pieces and more, all assembled in a unique way that allows the boat to float beautifully in the puddle while maintaining a wonderful balance. Awed by his invention he creates more such boats, each a grade better than the other. Soon he starts making these boats and sells them to friends. Thus flourishes the business; however he also realizes that many of his friends are keen on embarking on similar feat. In interest of those who love this invention he does appreciate that there should be a manner of having more people make the invention but without him having to lose out completely. 

Now here comes the patent agent, but the key here is to find an agent who would technically understand the invention and represent the invention to the patent office. Typically the inventor and the patent agent discuss the invention in detail which assures that the agent has the understanding of the technology. The patent agent then analyses the invention on its ability to be patentable and ascertain that legal parameters are met. Though dwelling into the details of these would be beyond the scope of this article, succinctly stated the agent does a thorough search of all the information available in the public domain pertaining to the invention, and draws up a conclusion on whether the invention is novel in view of what is in public domain. This painstaking exercise also involves going through many relevant information in detail to ascertain that the invention sought to be patented is not an obvious (for a person skilled in the particular field) extension of what is known already known; what is referred to as the inventive step. The agent then draws up a report of all the gathered information for the inventor. Once the inventor is convinced on the patentability of the invention in view of the report, the agent is instructed to draft out a specification. 

This brings us to the second step i.e; drafting of a patent specification. Often the inventor discusses the invention with the patent agent and submits a document called the invention disclosure (ID). Most of the training in the patent field involves writing a specification in clear and concise manner; yet claiming protection that is reasonably broad to cover minor advances that may occur over the 20 year protection period of the invention, the term of the patent. The draft then has to be filed by a registered agent to the patent office with a request for the patent to be examined. 

The patent office then sends an Examination report with its views, concurrence or objections as the case may be, on patentability of the invention. At this juncture the patent agent in now faced with making arguments on the objections raised, which requires good understanding of the technical field of the invention. It is often said that one of the key skills a patent agent should possess is being able to argue the fine points of science. The patent application at this stage may undergo some changes or amendment to comply with the requirements of the patent office. On compliance the patent office will order grant of the patent, the term of which is 20 years from the date of filing of the application. 

A career as a patent agent

Throughout the life of the patent, from filing to grant to the expiration of the patent, the patent agent continues to be intimately linked to the particular invention, following up with the legal requirements to ensure that the patent does not lapse. With all the glamour of the technology behind the invention, the agent is nevertheless faced with routine roles of tracking deadlines and writing letters to clients, filling in forms, attending meetings with inventors and much more. Nevertheless the area offers an interesting approach to science – learning about newer fields. Dr. Theresa Phillips, an environmental biologist writes in her blog Success in this discipline depends on an ability to go fact-finding”; gathering information and processing it an orderly fashion. Both require a high amount of logic and attention to detail”. Although a PhD is not a mandate to enter the field, in specialized areas such as biotechnology, pharmaceuticals, biomedical research, this may prove to be immensely useful to grasp the field and rapidly climb up the ladder. To be a registered patent agent one has to take the bar exam of the country where one wishes to practice as a patent agent.

Many post graduate students may also enter into law program. A lawyer with a technical edge equips them to move from lab to the courtroom. With the increase in the IP filing and disputes on infringement, the combination of law and science offers a lucrative and exciting career for those who love to be in the cutting edge of science, yet shun their lab coats.

Further reading:

Intellectual Property – A Power Tool for Economic Growth; Kamil Idris, Director General of the World Intellectual Property Organization (WIPO). http://​www​.wipo​.int/​f​r​e​e​p​u​b​l​i​c​a​t​i​o​n​s​/​e​n​/​i​n​t​p​r​o​p​e​r​t​y​/​8​8​8​/​w​i​p​o​_​p​u​b​_​8​8​8​_​1.pdf Pursuing a Career in Science and Law; Theresa Phillipshttp://​biotech​.about​.com/​o​d​/​c​a​r​e​e​r​s​/​a​/​s​c​i​e​n​c​e​law.h…