Report No. 69

Chapter 72

Patent Agents

Section 132B

72.1. There is another matter which raises questions of privilege, on which at present there is no specific provision in the Act. Under the Patents Act1a patent agent can practise not only before the High Court, but also before the Controller General of Patents. Designs and Trademarks (briefly described as the Controller) in proceedings under the Act. To this extent the functions of patent agents are analogous to those of professional legal advisers. In the Evidence Act, however, there is no provision protecting their confidence. Patent agents do not enjoy any privilege in regard to confidential communications. Since the very nature of the proceedings under the Patents Act implies that in most cases, a communication between a patent agent and client will be confidential and should deserve protection, we are of the view that a provision is necessary in the Evidence Act on the subject.2

1. Sections 126-127, Patents Act, 1970.

2. See para. 72.3, infra.

72.2. English Act as to privilege.-

It may be noted that in England, provision has now been made conferring privilege in respect of certain communications relating to patent proceedings. The relevant provision, which is contained in the Civil Evidence Act, 1968, is as follows:-1

15. Privilege for certain communications relating to patent proceedings.-(1) This section applies to any communication made for the purpose of any pending or contemplated proceedings under the Patents Act, 1949 before the Comptroller or the Appeal Tribunal, being either-

(a) a communication between the patent agent of a party to those proceedings and that party or any other person; or

(b) a communication between a party to those proceedings and a person other than his patent agent made for the purpose of obtaining, or in response to a request for, information which that party is seeking for the purpose of submitting it to his patent agent.

For the purpose of this sub-section, a communication made by or to a person acting

(i) on behalf of a patent agent; or

(ii) on behalf of a party to any pending or contemplated proceedings, shall be treated as made by or to that patent agent or party, as the case may be.

(2) In any legal proceedings other than criminal proceedings a communication to which this section applies shall be privileged from disclosure in like manner as if the proceedings mentioned in the foregoing sub-section had been proceedings before the High Court and the patent agent in question had been the solicitor of the party concerned.

(3) For the purpose of this section, a communication made for the purpose of a pending or contemplated proceeding under the Patents Act, 1949 shall be treated as made for the purpose of contemplated proceedings under that Act before the Comptroller or the Appeal Tribunal of every kind to which a proceeding of that description may give rise, whether or not any such proceedings are actually contemplated when the communication is made.

(4) In this section-

"the Comptroller" and "the Appeal Tribunal" have the same meanings as in the Patents Act, 1949;

"patent agent" means a person registered as a patent agent in the register of patent agents maintained pursuant to the Patents Act, 1949 or a company lawfully practising as a patent agent in the United Kingdom or the Isle of Man; and "party", in relation to any contemplated proceedings, means a prospective party thereto".

1. Section 15, Civil Evidence Act, 1968 (c. 64).

72.3. Indian Act as to patents.-

In India, under the Patents Act in force,1 a patent agent whose name is entered in the Register is entitled2 to practise before the Controller and to prepare all documents, transact all business and discharge such other functions as may be prescribed in connection with any proceeding before the Controller under the Act. Besides advocates, persons who have obtained a degree and passed the qualifying examination prescribed for the purpose, are qualified to have their names entered in the Register of Patent Agent.3

1. Patents Act, 1970 (39 of 1970).

2. Section 127, Patents Act, 1970.

3. Section 126, Patents Act, 1970.

72.4. An appeal from the decision of the Controller (The Controller General of Patents, Designs and Trade marks) lies to the High Court in certain cases.1 The Act contains no provisions as to the privileges of patent agents. Having regard to rapid scientific progress in the country and the growing importance of inventions and patents, it can be reasonably asserted that the institution of patent agents will assume practical importance in the not distant future. Correspondingly, the law of evidence should also give due recognition to their functions and grant a privilege that will enable them to discharge their functions smoothly-a protection which is required in the public interest.

1. Section 116(2), Patents Act, 1970

72.5. Recommendation.-

We, therefore, recommend that the following new section should be inserted in the Evidence Act. It should apply to civil as well as criminal proceedings:

"132B. (1) This section applies to any communication made for the purpose of any pending or contemplated proceedings under the Patents Act, before the Comptroller or the High Court, being either-

(a) a communication between the patent agent of a party to those proceedings and that party or any other person; or

(b) a communication between a party to those proceedings and a person other than his patent agent made for the purpose of obtaining, or in response to a request for, information which that party is seeking for the purpose of submitting it to his patent agent.

Explanation.-For the purpose of this sub-section, a communication made by or to a person acting-

(i) on behalf of a patent agent, or

(ii) on behalf of a party to any pending or contemplated proceedings; shall be treated as made by or to that Patent agent or party, as the case may be.

(2) In any legal proceedings,1 a communication to which this section applies shall be privileged from disclosure in like manner as if the proceedings mentioned in sub-section (1) had been proceedings before a Court and the Patent agent in question had been the legal professional adviser of the party concerned.

(3) For the purposes of this section a communication made for the purpose of a pending or contemplated proceeding under the Patents Act shall be treated as made for the purpose of contemplated proceedings under that Act before the Comptroller or the High Court of every kind to which a proceeding of that description may give rise, whether or not any such proceedings are actually contemplated when the communication is made.

(4) In this section-

(a) "the Comptroller" has the same meaning as in the Patents Act;

(b) "Patents Act" means the Patents Act, 1970;

(c) "patent agent" means a person registered as a patent agent in the register of patent agents maintained pursuant to the Patents Act, or a company lawfully practising as a patent agent in India;

(d) "party", in relation to any contemplated proceedings, means a prospective party thereto."

1. The intention is that the new section should apply to civil as well criminal proceedings.

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