Manual of Patent Practice

Section 281: Power of comptroller to refuse to deal with certain agents

Section last updated (281.01 - 281.04) July 2015.

281.01

This enables the making of rules governing the circumstances in which the comptroller may refuse to recognise persons acting as agent in patent or registered design proceedings. It also forbids the recognition of agents who neither reside nor practice in the UK or another state in the European Economic Area. The references to “patent agents” have been amended to “patent attorneys” by section 208(1) and Schedule 21, paragraph 78 of the Legal Services Act 2007.

 
Section 28(1)
This section applies to business under the Patents Act 1949, the Registered Designs Act 1949 or the Patents Act 1977.
 
Section 28(2)
The Secretary of State may make rules authorising the comptroller to refuse to recognise as agent in respect of any business to which this section applies -

(a) a person who has been convicted of an offence under section 88 of the Patents Act 1949, section 114 of the Patents Act 1977 or section 276 of this Act;

(b) a person whose name has been erased from and not restored to, or who is suspended from, the register of patent attorneys on the ground of misconduct;

(c) a person who is found by the Secretary of State to have been guilty of such conduct as would, in the case of a person registered in the register of patent attorneys, render the person liable to have the person’s name erased from the register on the ground of misconduct;

(d) a partnership or body corporate of which one of the partners or directors is a person whom the comptroller could refuse to recognise under paragraph (a), (b) or (c) above.

281.02

The Secretary of State is empowered to make rules authorising the comptroller to refuse to recognise persons acting as agent in respect of any of the business listed in subsection (1). Such rules (The Patent Agents (Non-recognition of Certain Agents by Comptroller) Rules 1990) came into force on 13 August 1990 and were amended by the Legal Services Act 2007 (Consequential Amendments) Order 2009 (SI 2009 No.3348). The types of person whom the rules may specify are listed in subsection (2)(a) to (d); rule 3(a) to (d) of the above-mentioned rules specifies those same types of person. (Similar provisions apply to the right of audience in proceedings before the comptroller, see 102.03.) Paragraphs (b) and (c) of subsection (2), and subsection (3) below, effectively place registered and unregistered agents on the same footing as regards the consequences of “misconduct” in relation to recognition by the comptroller.

 
Section 281(3)
The rules may contain such incidental and supplementary provisions as appear to the Secretary of State to be appropriate and may, in particular, prescribe circumstances in which a person is or is not to be taken to have been guilty of misconduct.

281.03

Subsection (3) provides that the rules may contain additional provisions, in particular in relation to what may or may not be regarded as misconduct. Such provisions might facilitate the treatment of unregistered persons in the same way as registered patent attorneys in this respect. In fact, the above-mentioned rules do not contain any such provisions.
 
Section 28(4)
Rules made under this section shall be made by statutory instrument which shall be subject to annulment in pursuance of a resolution of either House of Parliament.
 
Section 28(5)
The comptroller shall refuse to recognise as agent in respect of any business to which this section applies a person who neither resides nor has a place of business in the United Kingdom, the Isle of Man or another member State of the European Union.

281.04

Subsection (5) concerns the need for a residence or place of business in the UK or European Economic Area in order to be recognised as agent. The Patents and Registered Designs Acts extend to the Isle of Man but not the Channel Islands, hence the latter are not included.