Dinesh Parmar, one of the candidates who wrote the Patent Agent Exam 2016, wherein he had argued that answers to two of the Paper-I Set C questions as provided in the answer key published by the Patent Office were incorrect. While answer to one of the two questions (i.e. Q. 49) was rectified by the Patent Office on February 2, there has been no clarification issued for answer to Q. 27. Aggrieved by Patent Office’s answer to this question (that carries 2 marks), Dinesh (who has failed the exam by only 2 marks) has recently filed a writ petition before the Bombay High Court challenging the correctness of the answer.
The petition (numbered WPL/915/2017) which is to be admitted seeks a declaration from the court. It further seeks a direction to Patent office to accordingly correct the answer key, award marks to candidate who marked option (b) as the answer and publish the reevaluated result within one week from date of order.
Q 27. As per the Indian Patent Act, a resident in India;
1. Is free to file an application for patent in a foreign country without first filling an application for patent for same invention in india.
2. Can file an application for patent in a foreign country without first filling an patent application for same in india, under only special circumstances.
3. Can file an application for patent in foreign country only after filling a PCT application on same subject matter.
4. None of these
The answer to Q. 27 should be option ‘b’ in light of the words “except under the authority of a written permit sought in the manner prescribed and granted by or on behalf of the Controller” in Section 39(1). The question seeks to ask if and when an Indian resident can file a foreign application without first filing an application for the same invention in India and Section 39(1) makes it clear that such application can be filed in cases where written permit has been granted by or on behalf of the Controller. This, in my opinion, qualifies as a special circumstance and thus the correct answer to Q. 27 is option ‘b’ and not option ‘d’ as stated in IPO’s official answer key.
Further, Q. 27 was asked in Patent Agent Exam 2010 as Q. 8 in Part A of Paper 1. Answer to the said question has been provided by two books: Patent Agent Examination by Sheetal Chopra – Registered Patent Agent, M.Sc, MBA and Dr. Akash Taneja – M.Sc, MBA, PG Diploma in IPR Law, Master Diploma in IP, Ph.D. and other one by Nitin Sharma – BE, MBA and LLB. Both of these books are very popular and known among IP professionals. In both books, the answer to Q. 8 is mentioned as option ‘B’ ,Nitin Sharma has also provided explanation why the correct answer must be option ‘B’.
So, how can option ‘b’ be considered as incorrect answer to Q. 27? Option ‘b’ must be considered as correct and marks must be awarded to the candidates who marked ‘b’ as the correct answer to Q. 27.”
One hopes that the High Court admits the writ petition filed by Dinesh soon and directs the Patent Office to award 2 marks to candidates who have marked option (b) as the answer to Q. 27. This would enable the candidates who have failed the exam by only 2 marks on account of Patent Office’s incorrect answer, to qualify the exam and register as Patent Agents.