Recently, the Delhi High Court ruled that there needs to be a code of conduct regulating the activities of patent and trademark agents in India. The verdict comes in view of a concern raised before the court over the unethical practices of some patent agents and calls for stricter guidelines to ensure professional integrity in this branch of practice. The High Court noted that considering the duties and functions of patent agents, any carelessness, professional negligence, or misconduct, unless accidental or inadvertent, needs to be dealt with strictly. It should be made explicitly clear in the guidelines what shall constitute professional misconduct and negligence relevant to the activities of patent and trademark agents. Guidelines need to create a system in which individuals would be in a position to lodge complaints against any agent who engages in such unethical practices. This kind of framework shall ensure accountability and maintain the integrity of the profession, as clear standards and a transparent process for addressing grievances are set out. Within a period of 6 months, a framework shall be notified, and a structured process shall be established for redressing complaints against Trademark and Patent Agents. Till this framework is fully operationalized, the complaints, if any, received by the CGPDTM shall be addressed through an ad-hoc committee. This committee shall be composed of at least two officers from the trademark or patent office and one senior intellectual property practitioner with a minimum of 15 years of experience who is registered as a Patent or Trademark Agent. The ad-hoc committee shall be constituted in principle within a period of two months . Seeing this, let's delve into the international regulations that state the professional code of conduct for patent agents and trademark agents.

International Regulations

EPI Code of Conduct- European Union

The Institute of Professional Representatives, before the European Patent Office Code of Conduct, set detailed general principles for professional and ethical conduct. One shall keep in mind that members are inter alia obliged to apply the Disciplinary Regulation, to exercise their profession independently, to carry out duties for clients independently, and to ensure the best protection of client`s interests whenever such a member could not act personally. This means that good relations among its members are also indispensable for the reputation of the profession. On the part of the members, they also have to be well conversant with the Code, and a lack of knowledge cannot be incurred in their defence in case of a breach.

It also allows advertisement but it has to be honest and consistent with professional secrecy. The members cannot without authorization mention names of clients, cite other entities without an agreement, advertise industrial property transactions in the absence of an express instruction from a client.

Members shall not do anything to bring the Institute into disrepute and shall not mislead the public. They shall not pay any commission for the introduction of business and shall have a general responsibility for any professional work done in their name. They are responsible for the actions of their assistants.

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In matters related to client relations, members are required to render competent and attentive service, keep clients informed, and may require advance payments. A member should decline or withdraw from representation and avoid a conflicting matter if: members have a legal, business, financial, or professional interest in the subject matter of representation; a member or their firm has an interest adverse to a client; a member has a family or other close relationship that may give rise to a conflict of interest, and so on. The secrecy obligations on the member are removed if the information becomes known to the public.

Members shall extend courtesy to each other, shall not discriminate against any fellow member, and attempt to adjust their disputes amongst themselves without referring them for adjudication. They shall not make any comment on the cases handled by others before the clients unless asked for by the client and shall arrange for the transfer of documents expeditiously when they take up a case from other members.

The provisions also include the duty of giving notice to the Institute in case of any change of address, the duty to pay subscriptions, and the prohibition on communications on behalf of the Institute in the absence of an express mandate. Without prejudice to any other steps that it may consider appropriate, a Member may seek the opinion of the Secretary-General regarding the application of the Code, but it is obligatory to report the infringement to the Disciplinary Committee in writing. The Code was adopted by the Council of the Institute on 14 November 1979 .

Code of Professional Conduct- Canada

The Code of Professional Conduct of Patent and Trademark Agents outlines extensive principles and rules governing their duties and interactions. At the core of thee regulations is the principle of Withdrawal of Services, which ensure no agent withdraws from representing a principal unless this occurs in conditions provided for within the regulations and upon reasonable notice .

Withdrawal of Services is founded on the fundamental rule that an agent may not withdraw from acting for a client unless there is good cause, and, in any event, it must be with reasonable notice. Rules in this section identify several situations where withdrawal is mandatory. These include instances where: the client insists that the agent pursues a course of action that the agent knows is illegal or immoral; he engages in criminal or fraudulent activities; the agent reasonably believes that he would not be able to act competently; or that continuing would result in a conflict of interest. In addition, the attorney may withdraw in justified circumstances such as non-payment of fees, dishonourable behaviour on the part of the client, failure to cooperate, or when unable to find the client. Withdrawal should also be conducted with the consent of the client and shall not result in any foreseen injury to the client. He shall assist any subsequent representative and handle all business and property transactions candidly.

The principles of Duties to the College, Members, and Other Persons underscore the maintenance of professional standards and conduct. As such, agents have a duty to act professionally not to discredit the profession and to respond promptly to communications from the College. They have a duty to supervise their staff and agents in training effectively. There must be no discrimination or harassment and in transferring between firms an agent and the former firms avoid undue influence respecting client decisions regarding representation.

The principles for Communication with the College, CIPO, and Other Persons underscore that courtesy, accuracy and fairness should be part of professional dealings. The following is a non-exhaustive list pertaining to communications: agents are not to use abusive or offensive communication; agents must respond promptly to professional correspondence; consent must be obtained prior to any direct communication with a represented person; upon a document being inadvertently received, an agent shall give notice to senders; all professional communications shall be appropriate both in tone and respect.

Advertising regulations are there to ensure that the ads of the agent are not deceptive or false. An agent is not allowed to create the perception of having qualifications when actually none, and neither must he mislead clients into thinking there is a professional office where it does not exist. Advertising fees are only allowed if the fees are specified clearly and all supplementary fees are clearly stipulated and strictly kept.

Finally, the rules on Unauthorized Practice highlight that such practice is to be prevented. An agent shall not associate himself with or aid individuals whose license has been under suspension or revocation. An agent whose practice is suspended shall not practice and he shall not represent himself as entitled to practice.

In other words, the rules preserve the integrity of the profession by setting clear expectations with respect to withdrawal, conduct with clients and other agents, communication, advertising, and prevention of unauthorized practice. Every section is constructed to ensure that the agent maintains a high level of ethics and professionalism in their practice and upholds the trust and expectations placed upon them by their clients and the public at large .

Irish Patents Act, 1992- Ireland

The statutory framework provided by the Irish Patents Act, 1992 , reflects that the role of the patent agent is an involved and important one in the process of a patent application and that strong standards of conduct are called for. Section 105 states that a patent agent includes a person duly authorized to act for another person in relation to such acts as may be performed under this Act. It ensures that such acts are conducted by duly authorized agents, and it enables an agent to cease acting on behalf of a client by notice given to the Controller and the client.

Eligibility to be registered as a patent attorney is provided for in Section 107 . A person is eligible if he is a resident of the state, viz. Ireland, or a prescribed jurisdiction; maintains a place of business in the states; has such educational and professional qualifications as are prescribed; and satisfies any other prescribed conditions. A partnership is also eligible for registration if all the partners are so eligible.

Under Section 108 , the Controller may remove or suspend any patent agent from the register if he does not satisfy the qualifications, has committed any offense specified in the rules, or has been guilty of any conduct which the Controller considers disgraceful to the profession of a patent agent. No action shall be taken against an agent until he has had an opportunity of being heard. Decisions can, therefore, be appealed to the Court, which may annul the decision or confirm it, and on its part, the Controller can apply for confirmation of the decision if no appeal is brought within the time limit by the agent.

It is the Register of Patent Agents, concerning which rules may be made by the Minister under Section 109 , in particular, relating to the educational and professional qualification necessary for entry on the register and the conditions subject to which a person may be registered therein; and for prescribing maximum fees or charges which may be made for patent agency work. The rules may, in particular, also provide for the conferring on the Controller of the powers to refuse recognition to agents or firms having no sufficient knowledge of the requirements of this Act or whose directors or managers are not, or are no longer, qualified or are otherwise unsuitable to be registered as patent agents.

Taken together, these provisions guarantee that patent attorneys work with the required competence and good faith. This would instill confidence in the system and ensure proper safeguarding of the interest of applicants seeking patents before the Patent Office, hence establishing efficiency and credibility in the working of the patent system.

Copyright, Designs and Patents Act, 1988- United Kingdom

Under the UK Copyright, Designs and Patents Act 1988 , it is particularly Part V, Section 276 and 281 that define the profession and liability of Patent Agents and Trade Mark Agents. Section 276 defines who may describe themselves as a Patent Agent and lays down that a person describing himself as a Patent Agent has to adhere to specified standards and qualifications. Although the Act itself does not define any acts as misconduct, it sets out a procedure for dealing with such conduct. Section 281 specifically empowers the Controller to refuse to deal with agents who have been found guilty of misconduct. The process is further elaborated in the Register of Patent Agents Rules, 1990. According to Rule 14 , where the Secretary of State is satisfied, after an inquiry held in the manner prescribed by Rule 15 , that a person has been guilty of professional misconduct, the agent`s name shall be removed from the register, either permanently or for such period as he thinks fit according to the nature and gravity of the misconduct. Rule 15 details how notification of the person concerned has to be carried out, allowing him to make representations, and how hearings are conducted. Rule 16 deals with the hearing of such representations; it provides for adjournments and also provides for the right of the Institute to be represented. A decision of the Secretary of State under Rule 17 shall be given with reasons in a case where a direction has been given but otherwise without detailed reasons.

Provided under, where the decision of the Secretary of State is disputed by the affected party, that party may appeal to the Comptroller as provided in Rule 19 . The right to appeal includes a period for noticing, a right to representation, and a written, well-reasoned decision by the Comptroller. Also, the Rules of Conduct for Patent Attorneys and Trade Mark Attorneys, made a virtue of Section 275 A of the Copyright, Designs and Patents Act 1988 and Section 83A of the Trade Mark Act 1994, provides detailed guidance in the area of professional conduct. These are with regard to the maintenance of integrity: Rule 5 ; Care for and service of clients: Rule 6 ; dealing with conflict of interest situations: Rule 7 ; Confidentiality and disclosure: Rule 8 . The provisions taken together, therefore, provide a fully complete regulatory framework to ensure the maintenance of high professional standards of service and high ethical practices on behalf of patent agents and trademark attorneys.

United States Patent and Trademark Office- United States

Under the USPTO Rules of Professional Conduct , a “Practitioner” is broadly defined to mean any attorney or agent who is active and registered to practice before the United States Patent and Trademark Office in patent matters under Section 11.6 . Section 11.804 of the USPTO Rules specifically defines what constitutes “Misconduct”. These include, but are not limited to; breaching the USPTO Rules; committing crimes which malign the honesty or fitness of the practitioner; conduct involving dishonesty or fraud; prejudicing or damaging administration of justice; improper influencing of government officials; and assisting in the breach of rules by judges or USPTO employees. Moreover, practitioners are subject to public discipline when a disciplinary authority established in a U.S. state, the federal government, or a foreign country determines that a practitioner has engaged in ethical or professional misconduct. The Client-practitioner relationship is discussed more fully below under Subpart D of the USPTO Rules, which addresses the duties of practitioners to clients.

Section 11.101 requires that there be competent representation by practitioners, meaning that at least some reasonable legal, scientific and technical knowledge must be exercised and prepared adequately. Section 11.102 sets forth the general rule with respect to the scope of representation, if reasonable and with the client`s informed consent, but shall not assist a client in criminal or fraudulent conduct. Section 11.103 mandates that practitioners represent clients with reasonable diligence and promptness, which includes maintaining efficiency in the handling of client matters. Finally, Section 11.104 focuses on communication; practitioners shall keep clients reasonably informed about the status of their matters, consult with the client as to the means by which objectives are to be accomplished, promptly comply with reasonable requests for information, and explain a matter to the extent reasonable necessary to permit the client to make informed decisions. The combination of these rules ensures that practitioners will follow the highest ethics for representation on behalf of their clients.

Future Aspects

In the developing landscape of IP law, there are several key future aspects that should be listed to shape the development of the Code of Conduct for patent and trademark agents. One of the most prevalent is the call for stricter and more confident regulation. The recent judgement of the Delhi High Court has laid a lot of emphasis on the need for having well-defined, clear standards with respect to what are misconduct and negligence on the part of IP professionals. Tightening of ethics by agents to protect their client`s interests and the profession.

Another very important development relates to the institution of an effective grievance redressal mechanism. There will be efforts made to devise open and accessible systems by which clients will report unethical behaviour since demands for accountability in professional services will continue to escalate. This possibly includes the establishment of free and autonomous governing bodies that receive complaints, conduct investigations, and apply sanctions. It would protect the clients, but also, the mechanisms of holding the agents liable would contribute to public trust in the profession.

The international aspect of the IP law indicates that there is also a tendency for standards for the jurisdictions to be harmonized. Where one has different regions with their codes, from the European Union with its EPI Code of Conduct to Canda`s Code of Professional conduct, the United States with its USPTO Rules, among others, there will be some pressure to harmonize these into some standard. Harmonization may ease the way to closer collaboration between agents working in different countries, reduce inconsistencies in professional conduct, and contribute toward an increasingly uniform approach towards IP law globally.

At the same time, continuous learning and training will also become ever more important in maintaining high professional standards. As the legal landscape continues to evolve, agents will need to keep pace with changes in laws, regulations, and ethical practices. There might be mandatory professional development programs set up that will oblige the agent to update knowledge and skills frequently. Continuous education would maintain an agent`s capability in practice and arm him with the ability to tackle problems posed by the current modern IP law.

Last but not least, technology is going to find its place in the Code of Conduct in times to come for easy submission and tracking of complaints, promoting communication between agents and clients, and improving overall transparency in professional dealings from online solutions. Technology may also facilitate better record-keeping and monitoring of the conduct of agents, which may further make enforcement of standards and early resolution of issues easier. In the future, as the practice of the IP profession continues to evolve into these aspects, it becomes part of the assurance to be provided by the Code of Conduct for continued ethical, competent, and responsive performance of the agent in the best interests of his or her clients, who find themselves more and more embroiled with a plethora of legal issues in an increasingly globalizing and complex environment.

Suggestions for Ensuring Smoothness and Regulation

Several steps should be designed with a view to establishing and effectively regulating a Code of Conduct for patent and trademark agents. First of all, detailed elaboration of clear guidelines is critically important. Guidelines should be designed in a way that clearly sets forth exemplary behaviour and responsibilities, specifying the consequences of the respective infringements, thus making sure that no confusion exists on the part of the agents about their professional obligations and standards to be maintained. Such clarity not only tends to promote compliance but also strengthens the integrity of the profession.

It provides for the creation of independent oversight bodies empowered to monitor adherence, investigate complaints, and enforce disciplinary actions against agents violating established norms. Independence in this context will foster impartiality and fairness in the proceedings if the trust of the public and the professional community is to be gained.

Another integral part of this is the promotion of transparency in the operations of the patent and trademark agents. This can be brought about by compulsory disclosures, such as the revelation of possible conflicts of interest and very clear, up-front communication with regard to fees and services. This openness tends to secure the trust of the agents with their clients by enabling them to make informed decisions based on the full picture of the operations of the agent and possible biases.

This leads, again equably, to the development of a culture where peer accountability is fostered. Agents should feel responsible not only for what they do but also for the actions of their peers. Development of systems that will encourage reporting on unethical behaviour by colleagues, backed by robust whistleblower protection, could therefore deter instances of misconduct and help sustain high professional standards.

Finally, it is very important to put in place the setting up of a periodic review and updating system for the Code of Conduct. As legal environments are subject to constant evolution, so are those of clients and industries. In this regard, the dynamic nature of a periodically reviewed and updated Code of Conduct will help to ensure its continuing relevance and effectiveness, guaranteeing coverage over new challenges and embodying best practices as it evolves. This also helps the Code stay relevant and effective in its purpose of guiding ethical behavior and offering protection to clients and the public.

Author : Kaushik Das, in case of any query, contact us at Global Patent Filing or write back us via email at support@globalpatentfiling.com.