How to build a career in IPR in India

This article is authored by Akash Krishnan, a law student from ICFAI Law School, Hyderabad. It discusses in detail the scope of building a career in IPR, the different roles an IP attorney plays in the legal domain and the opportunities available in this field.

Table of Contents

Introduction

In today’s dynamic and competitive business environment and knowledge-based economy, intellectual property is the key element needed to maintain a competitive edge in the market. IP is an intangible asset that businesses can convert into usable resources to generate a competitive advantage. In today’s economy, IP is perhaps the most important asset that an organisation can possess.

In this article, we will be discussing various options to pursue a career in intellectual property rights. We will also be touching base regarding some details of the different examinations that law graduates can attempt in the field of IPR and the advantages that can be gained through these examinations.

The differentiating factor

When you are graduating out of law college or when you are thinking of changing your job or career while working in the corporate sector, one question you should always ask yourself or which you should always think in your mind is first, which is the best career option for me and second, in a country like India, where we have a large volume of students who graduate every year, it is very important to differentiate yourself from the rest of the crowd. How does one stand out of the crowd and how does one attract the attention of recruiters? Let us try and find answers to these questions.

IP as a career option

Let us try and understand some of the top reasons for choosing a career in Intellectual Property.

India : The global R&D hub

India currently ranks as the No. 2 destination for global corporations to set up their research and development centres. Traditional sectors like manufacturing, communications, health care and so on are seeing an increasing role of IP in business and its impact on their growth rates. IP is driving the biggest new developments in science, business, arts and other professions.

A plethora of job opportunities

You can work either in any product development company, hospitals, R&D labs, law firms or start-ups or even start your own IP company, independent IP litigation practice or secure jobs as IP agents in different industries.

According to the annual report published by the Office of the Controller General of Patents, Designs and Trademarks, in the year 2018-2019, the number of patent applications filed were 50,6569, the number of design applications filed was 12,585, the number of trademark applications filed was 3,23,798 and the number of copyright applications filed was 18,250. This data clearly shows the increasing demand for IP filing and the role an IP lawyer can play in this fast-paced world.

Courses on IPR

There are multiple courses that a law student can take part in to further a career in IPR. A few of these courses are enumerated below:

Top IP journals and blogs

Law students should try and publish their articles on the following blogs and research journals to further their career growth in the field of IP. The top IP blogs and research papers have been enumerated below:

Role of IP professionals in the legal domain

Patents

A patent professional being an expert in patent law as well as science and technology shall have good opportunities not only in IP departments of any R&D oriented organisations but also in law firms.

Patent analytics is a very wide area where one has to learn skills to pull out relevant patents and use them for a specific purpose. Any research and innovation-based company would need skilled persons to conduct patent searches and perform other related roles and therefore learning these skills could be very useful to pursue a career in patents. Typically, in companies, professionals performing patent searches or drafting patent specifications are designated as patent analysts, patent scientists and patent engineers. The basic qualification for being a patent analyst may be a bachelor in science, engineering or biotechnology, or any other area of basic sciences or life sciences. They perform different searches such as assessing the patentability of an invention, checking for patent infringement, and so on.

Drafting and filing a patent specification

1. Patent specifications are one of the most complex techno-legal documents and one needs to be highly proficient in English and possess scientific knowledge and understanding in order to draft patent specifications.
2. Once a patent specification is drafted, it is required to be filed online along with various forms and the required fee.
3. One needs to have a thorough understanding of the Patents Act, 1970 to understand the right forms and fees.
4. In order to file a patent application in India, one needs to register his/her name as a registered patent agent by writing an examination called “Indian Patent Agent Examination” which is conducted once every year.

Patent prosecution

1. An examination report is issued by the examiner of patents after the examination of a patent application.
2. Understanding the objections of the examiner requires a lot of experience and knowledge of both the subject of the patent application and the process followed in the patent office.
3. Preparing a reply or response is also a very specialized skill and learning this skill adds a lot of value to the profile of the candidate aspiring for a career in IP.

Patent docketing

1. Docketing patents requires a thorough knowledge about the patent processes in different countries since requirements of fee and process may vary from country to country.
2. Few companies may have a large number of patents to be docketed and having expertise in the area of patent docketing can be a good career option.

Indian Patent Agent examination

1. The Controller General of Patents, Designs and Trademarks of the Government of India conducts the Patent agent exam once a year.
2. This exam probes the aspirants on their knowledge of the Patents Act and Rules in India and also assesses the drafting skills and interpretation of the patent specifications and other documents.
3. Recent graduates in streams of science, engineering and technology who have completed 21 years of age are eligible to apply for this exam.
4. Interested applicants wishing to apply for this exam are required to do so online on www.ipindia.nic.in.

Responsibilities of a patent agent

1. Reading descriptions and discussing details of inventions.
2. Undertaking searches to establish that inventions are different.
3. Produce detailed and clear specifications of the invention.
4. Submitting, defending and negotiating patent applications.
5. Providing associated legal advice to the clients.

Advantages of being a registered Patent Agent

A registered patent agent will be able to:

1. File and prosecute patent applications in India and Patents Cooperation Treaty, 1970.
2. Represent client(s) before the Controller of Patents and the High Court.
3. File appeals against the decisions of the Controller General of Patents under Patents Act 1970, Registrar under the Trademarks Act, 1999 and the Geographical Indications of Goods (Registration and Protection) Act, 1999 in the High Court.

Trademarks

What do trademark attorneys do?

1. Identify different trademarks of a company
2. Conduct proper trademark searches prior to the adoption or use of the trademark by the company.
3. Develop a strategy to file the trademark application.
4. Draft the trademark application and file it with the Registrar.
5. Respond to any objections or oppositions and ensure smooth registration of the trademark.

Role of trademark attorneys in law firms

Brand development and strategy

Help in the identification of an appropriate trademark for a brand and build a strategy for the registration and enforcement of the trademark by conducting proper trademark searches.

Protection

Conduct regular searches and protect the trademark from any future infringements.

Enforcement/prosecution

In case of infringement, ensure that suits are filed without undue delay and proper relief is sought for the loss caused to the client.

Commercialisation

Help unlock the full potential of a trademark by helping the client w.r.t franchising, licensing, assignment, and other commercial modes for exploiting the trademark.

Trademark Agent

A trademark agent is a person who specialises in trademark matters. They should have the knowledge about the registration process and have the capability of instituting suits for infringement of the trademark. The primary duties of a trademark agent are:

1. Help companies to identify and select trademarks that are suitable for their businesses.
2. Conduct trademark search to ensure that the selected trademark is unique and valid in the appropriate class.
3. Draft and file applications for registration of the trademark.
4. Ensure compliance requirements during filing and draft appropriate replies to objections or oppositions to the proposed trademark.
5. File suits against infringement of the trademark.

Trademark Agent Exam

The Institute of Patent Attorneys, India offers a 6 months distance learning program for candidates who wish to appear for the trademark agent exam.

Eligibility

1. Educational qualification: B.A, B.Com, B.Sc or any other degree holder.
2. Age limit: Age is no bar.

Syllabus

1. Questions from the Trademark Act and Rules: 100 Marks (Objective type).
2. Application process
3. For the registration and application form, an e-mail has to be sent to [email protected]

Copyright

What do copyright attorneys do

1. Draft and file copyright applications on behalf of clients.
2. Once copyright has been granted, keep reviewing the copyright journal from time to time to ensure there is no infringement.
3. In case of infringement, file suits against the unauthorised user and claim appropriate remedies.

Role of copyright attorneys in law firms

Drafting/filing

Draft and file copyright applications in accordance with the type of work created.

Protection

Conduct due diligence investigations and protect the copyright from any future infringements.

Enforcement/prosecution

In case of infringement, ensure that suits are filed without undue delay and proper relief is sought for the loss caused to the client.

Commercialisation

Help unlock the full potential of the copyright by helping the client w.r.t licensing, assignment, and other commercial modes for exploiting the trademark.

Copyright examiner

A copyright examiner is a person who examines the copyright applications that are filed and determines whether or not all the essential features required for the registration of copyright have been satisfied.

Appointment as copyright examiner

The Copyright Office releases a notification from time to time providing details for the recruitment for the post of copyright examiner.

Eligibility

1. Educational qualification: Degree in law
2. Work experience: Minimum two years experience as an Advocate
3. Age limit: Maximum 35 years

Application process

1. A scanned copy of the application form along with other requisite documents should be sent by e-mail to [email protected] with a copy to [email protected].
2. Once applications are received, an interview is conducted and candidates are selected on merit.

Designs, geographical indications, and other forms of IPR

Unlike the aforesaid three forms of IPR, the other forms of IPR see a lower number of registrations comparatively. However, every boutique IP law firm and the full-service law firm has a few members in their IP team to deal with registration, enforcement, and prosecution of these forms of IPR.

Teaching IPR

1. Teaching IPR in colleges and universities is an excellent career option.
2. In the majority of the engineering and biotechnology courses, IPR is one of the elective subjects.
3. Further, institutes conducting PG diplomas in IPR, LLB, and so on may have requirements for professors to teach IPR.

Intellectual property management

1. IP Audit involves assessment and review of a company’s IP (Intellectual Property), procedures to trace and protect the wealth of intangible assets followed by recommendations on how to improve the processes to safeguard and prevent misappropriation of sensitive forms of IP such as confidential information and trade-secret.
2. IP monetization and commercialization is a process of bringing patented products into the market. This could be an excellent career option for those who love to assess new technology and new markets.

Top IP law firms

According to the rankings of Chambers and Partners, the following law firms are ranked in the particular bands in India.

Conclusion

Whether a business is just starting or already running, IP is always part of the business. Every day businesses build goodwill and recognition linked to their brand product or service, this value builds up over time and is strongly linked to the IP assets of the business. Therefore, it is important to identify the IP assets early in the business. The success of any business depends on the commitment of that business to its IP assets.

With the value and importance of IP assets climbing up each day, the demand for IP professionals is also on a rise. As young lawyers, what we need to do is invest our time to understand IP and the time that we invest today will bring high returns in the future when we step into the legal domain as young, practicing IP attorneys.

References

1. https://www.legalbites.in/choosing-ipr-as-a-career-option/
2. https://blog.ipleaders.in/kind-work-can-get-ip-lawyer/
3. https://blog.ipleaders.in/career-opportunities-ipr-lawyers/
4. https://chambers.com/department/zeusip-advocates-llp-intellectual-property-asia-pacific-8:34:110:1:162270

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