Patenting: An emerging & inspiring career option

Dr. Rimpu Malhotra

What are Patents?

A Patent is a license or form of legal authorization issued by the government of a territory for a specified period of time which grants the owner of an innovation, the right to exclude other people from making, using, selling and importing an invention. Such rights are territorial in nature which means that they empower the owner to exclude others from exploiting the innovation for gaining commercial benefits without his consent.

In case a person makes, uses or sells a patented invention without the consent of the grantee, the grantee of the Patent can sue/ take legal action against that person in court. 

What is the significance of Patenting?

Publishing an article in the form of a research paper in a scientific journal undoubtedly renders returns in the form of fame and recognition in the field of Science and Technology which helps in building ones academic reputation. Further, publication helps in the dissemination of your research to the entire scientific community, which helps in proliferation and advancement in the field of science and technology across the globe.  However, in case one wants to protect and own his invention and prevent third parties from commercially exploiting his original idea of research without his consent, the technique is to get the invention patented. The Patenting procedure as compared to publishing procedure for an article is not only challenging, but lengthier too and incurs heavy expenses. However, ultimately, once a Patent is granted, the technology can be commercially exploited for revenue generation and monetization purposes.

Scope in Patenting field

The Patenting field demands individuals from the field of Science and technology who have a blend of scientific, technical and legal knowledge. Patenting is an evolving career option which every Science graduate aspires. However, only with firm determination and hard work, expert individuals are able to flourish or be a part of this growing and challenging profession. There are a lot of career options which one can opt to be in the field of Patenting. Few examples are listed herein below:

Patent Examiner (one who examines Patent Applications), Controller at Indian Patent office (a stakeholder for deciding fate of a Patent application), Patent Agent (one who has the freedom to prosecute patent applications for innumerable no. of clients including foreign and Indian Nationals, in front of the Controller, at the Patent Office), Patent Analyst (one who conducts/ performs searches or landscape studies to check for Patentability, invalidity or freedom to operate studies with respect to an innovation), Patent Attorney (one who has a legal as well as Intellectual Property background and who assists inventors to navigate the complex path towards getting a Patent application granted), Patent Scientist (one who drafts/ evaluates a scientific patent application and renders opinions on its patentability aspects and prospects), Patent Engineer (one who drafts/ evaluates a technological patent application and renders opinions on its patentability aspects and prospects), Patent Technologist (one who drafts a Patent application; provides opinions to clients on Patent infringement, invalidity and freedom to operate studies with respect to an innovation), Technical Specialist (one who provides specialized strategic opinions regarding patentability, invalidity, or techno-viability of a Patent application), Patent Manager (one who manages the full patent lifecycle including database with respect to innumerable Patent applications of an organization), Business development professionals (one who develops business from Patents; one who negotiates Patent license agreements).

Some of the typical employers for a Patent professional include: Private organizations, Government departments, Legal/ Law firms, Major industrial and research organizations, and Academic Institutions. The average pay package for a Patent professional varies from 4 Lakh per annum to as high as 18 Lakh per annum, depending upon the experience, qualifications and technical expertise of the candidate.

Patent Agent vs Patent Attorney?

As per the Indian Patent Act, 1970, the statutory requirements for becoming an Indian Patent agent are that a person should be a citizen of India, should have completed 21 years of age, should have obtained a degree in science, engineering or technology from any University established under law for the time being in force in the territory of India and must have passed the qualifying Indian Patent Agent examination conducted by the Indian Patent office.

The Indian Patent Agent examination tests the knowledge of Indian Patent Act, Patent Claim drafting capabilities, and interpretation abilities in an individual.

Upon qualifying the examination, a person gets the ability to prosecute patent cases at the Indian Patent office on behalf of innumerable number of clients based in India or abroad and even gets the authority to draft Patent applications on their behalf.

Difference between a Patent Attorney & a Patent Agent

As per the Section 127 of the Indian Patent Act, 1970, a Patent agent is entitled to:

1. a) Practice before the Controller; and
2. b) Prepare all documents, transact all business and discharge such other functions as may be prescribed in connection with any proceeding before the Controller under this Act.

A Patent Attorney, however, is not defined by the statute in India. Some people usually are in a habit of using the word "Patent Attorney" interchange-ably with the word "Patent Agent". A Patent Attorney is basically an individual who holds a Law degree, is enrolled by the State bar council and is hence entitled to deal with the Patent litigation. While a Patent agent has the authority to perform Patent prosecution and to practice before the Controller, a Patent Attorney has the authority to perform Patent litigation and to practice before the Courts. In other words, a Patent Attorney's role is similar to that of an advocate.

Roles & Responsibilities of a Patent Professional

A Patent professional, be it a prosecutor or a Litigator, represents the Inventors or Organizations. They must support their clients and assist in proper enforcement of their patent rights. Their mandate is to look into the fact that how the quality of a Patent application can be enhanced exponentially due to their intervention and involvement. They strategize and strive for gaining rights over the broadest possible scope of invention.

Skills Required for a Patent Professional:

1. Reading skills

Reading descriptions pert-aining to Science and Technology and discussing details regarding the inventions with clients in order to dig out the novel and inventive feature of the innovation is a routine work which a Patent professional has to perform on a day to day basis. Consequently, a Patent professional must embrace the habit of reading almost everything.

2. Meticulous attention to detail

Accuracy of data is an obligation which one has to strongly adhere to while drafting, filing, or prosecuting for a Patent application. Nobody for example would be contented to recognize the fact that the invention for which he invested since ages has been granted to an unknown identity, simply because the applicant's details were wrongly entered. Accordingly, "attention to detail" becomes an important skill which a Patent professional is bound to inculcate.   

3. Discretionary power/ Decisive nature

Patent professionals usually work alone and there are many instances wherein they must take on-the-spot decisions, on behalf of their clients, for instance, when they are prosecuting a case at the Indian Patent office in front of the Controller. Thus, the discretionary power or decisive nature of an individual is a basic requirement which an individual must have in order to be successful in the IP domain.

4. Communication skills (written & verbal)

One of the most vital attribute one must have in order to be an effective Intellectual property professional is the command of the language, be it oral or written. To be a successful Patent professional, one must possess the proficiency of using words in order to define, describe, persuade, convince, explain or advise the Controllers at the Patent office in favour of your Client's Patent application. Additionally, strong communic-ation skills attract Clients and in turn proliferates business of one's organization.

5. Sound scientific and technical knowledge

A person needs to be equipped with both scientific and technological knowledge which will help him comprehend the inventions easily. 

6. Analytical skills

Patent professionals need not only have the capability of analyzing large amounts of information, but also the skills to perform rigorous data analysis in order to be able to reach out to well-reasoned conclusions. Such experts must be able to look for alternate ways for protecting their client's innovation. 

7. Organizational skills

A Patent professional may have to work concurrently on tremendous number of Patent applications. For instance, he may have to appear for a hearing for one case, while at the same time converse with an inventor seeking technical inputs on altogether another Patent draft along with working on a Response for a probable outstanding statement of objections raised for an entirely different Patent application, all on a single day. Now this is where task management and organizational skills come to the professional's rescue. Structuring and organizing capability helps one keep track of the various responsibilities and tasks one need to perform every single day. In contrast, disorganization could lead to lapsed deadlines and overwhelming stress.

8. Technical expertise

A Patent professional needs to be well acquainted with a wide range of technologies which would help him understand the disclosure of any invention straightforwardly.

9. Time management skills

All the Patent related work carries legal deadlines which need to be religiously adhered to. Hence, time management skill plays an indispensable role in this field of work.

10. Legal knowledge

A Scientist, who, while staying connected to the research world or working closely with researchers, wishes to chase the legal career, may opt to become a Patent professional. A knowledge of Law comforts a Patent professional in a way that he ensures to protect his client's invention with ease.

11. Network & People skills

As it is rightly said, "A good lawyer knows the Law, but a Great lawyer Knows the Judge". The correct and not so misleading meaning of the statement is that "In case of a rejection, a good Patent professional will contact the patent examiner to discuss patiently why your claims were rejected and shall figure out the possible way to tackle the rejection. He shall try to convince the examiner and try to find a way so as to amend the claims in order to get them granted.

Where are the Certified IP courses available?

There are various distance learning courses, executive Diploma courses, Industry certificate courses, Part time certificate courses, on IPR these days offered by various forums including World Intellectual Property Organization (WIPO), Federation of Indian Chambers of Commerce & Industry (FICCI), Institute of Good Manufacturing Practices (IGMPI), and National Institute of Science Communication & Information Resources (NISCAIR).

How Patenting rewards?

Patenting provides incentives, recognition, material rewards and eventually encourages innovation. It is a mode of obtaining return over investments. After investing a considerable amount of resources in developing innovative concepts through research, Patenting facilitates in obtaining high returns over the investments. Patents are a source of revenue generation through licensing and selling the inventions to third parties for their mutual benefit.

How various entrepreneurs use the power of their non-tangible assets through their inventions for monetization and revenue generation purposes?

The principal advantage of getting ownership rights over an invention is to get a possibility of revenue generation through the invention in the form of licensing or transferring the rights completely. Another practice of revenue generation through a broad spectrum patent portfolio includes enforcing the patent rights against infringing parties for high royalties. Monetization is a common practice adopted by an organization having a proper Patent portfolio. After all, isn't making money a sole purpose of owning an asset?

India's National IPR policy on Patenting (2016)

The University Grants Commission of India has probed all higher education Institutions to promote a culture of Innovation and Entrepreneurship by setting up "Innovation labs" and "Intelle-ctual Property centres" within their campuses. However, there have been quite many challenges for establishing the same, despite the policy push by UGC. There have not been many IP courses currently taught within the Universities and there are not many Patent professionals, hence there is a scarcity of the human resource that would be required in order to fulfill the ambitious goals set and framed by the IPR policy of UGC.

India perceived momentous changes in IPRs since the introduction of National IPR Policy, since the year 2016. There has been a tremendous increase in the Patent grant rate in each year compared to the previous year. The Indian Patent Office has increased its workforce with inclusion of new Examiners. The deadline for filing responses to official examination reports has been reduced to half. While the disposal rate has increased immensely, however, there has been a dip in the number of Patent filings. There is thus a necessity to create awareness amongst the youth towards the importance of Patenting, electing IP as a career option and IPR protection as a whole.

(The author teaches Intellectual Property Rights at Amity University, Noida (UP), e-mail: rimpu2006@gmail. com)

Views expressed are personal.

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