Step 6 : Response to objections or First Examination Report
A response to objections in an examination report is a formal reply submitted by the applicant to address the objections raised by the patent office during the examination process. It typically includes arguments, amendments, and supporting evidence to overcome objections and persuade the examiner to grant the patent.
After the examination of a patent application, the patent examiner may issue an office action containing objections to the claims or other aspects of the application. Objections are raised when the examiner believes that the claims do not meet the requirements of patentability or when there are formalities or procedural issues with the application.
The objections typically point out deficiencies or inconsistencies in the claims, prior art references, or the description of the invention.
You may respond to objections raised in office action in the following ways:
- Arguments for objections, explanations, or clarifications,
- Doing required amendments,
- Or try to convince the examiner with additional proof and information
Based on the type of objection and its validity:
You may propose amendments to the claims to overcome the objections. In general, the claims are amended to reduce the scope by adding some limitations or clarifying the language to make them compliant with the patentability requirements.
In other instances, you may need to do formalities or procedural corrections to overcome the objections. And some times you may need to provide additional information like experimental data, a working model to demonstrate the functionality of the invention or an expert opinion.
Based on the response to objections received by the patent examiner, the examiner may:
- withdraw the objections, and proceed to grant or
- request further amendments or clarifications, or
- issue a final rejection
The majority of patent applicants (inventors) will receive some type of objections to the patent application which are mentioned in the examination report. The best thing to do it analyze the examination report with patent agent/attorney and create a response to the objections raised in the examination report. This is a chance for an inventor to communicate his novelty and non-obviousness of the invention based on the kind of objections received.
You (as inventor) / applicant supposed to answer the objection raised within 12 months from the date on which the First examination report is forwarded to you.
The inventor and patent agent create and send a response to the objections that tries to prove to controller that his invention is indeed patentable and satisfies all patentability criteria’s.
Or optionally accepts the objections and amends the patent application as pointed out in First examination report.
If the controller is satisfied with the response to the objections or the amended patent application. Up on finding the patent application in order of grant, The patent is granted to you (inventor) / applicant as early as possible !!! with a seal of patent office and the date of grant is registered in register of patents.
| Responsibilities | ||
| Inventor |  | help patent agent in technical matters of invention (If required) with drafting response for objections. |
| Patent agent or attorney |  | draft the response to objections raised with the help of inventor. Or amend the patent application accordingly. Request for hearing if desired. |
| Patent office |  | receive response of objections and decide whether a hearing is needed and whether to grant patent or not |
Professional Fees:
The patent agent /attorney may charge professional fees from Rs. 15,000 or ( USD 180 ) to respond to objections based on the complexity of the objections and the number of objections received.
Guidelines for Reviewing the First Examination Report (FER)
Reviewing a First Examination Report (FER) is a critical step in the patent application process. Here’s a guide for inventors on how to review an FER and assess the cited prior arts (D1, D2, D3, etc.) in comparison with their invention:
- Read the FER Carefully:
- Start by reading the FER thoroughly to understand the examiner’s objections and observations. Pay attention to any specific points raised about the novelty, inventive step, and clarity of your claims.
- Identify Prior Arts:
- Note the prior arts cited by the examiner, typically labeled as D1, D2, D3, etc. These documents are considered by the examiner as relevant to your invention.
- Objections and Rejections:
- List down all the objections and rejections mentioned in the FER. Common objections include lack of novelty, lack of inventive step, and lack of clarity.
Reviewing Prior Arts (D1, D2, D3, etc.)
- Access the Documents:
- Obtain copies of the cited prior arts (D1, D2, D3, etc.). These are usually available through patent office databases or provided by your patent attorney.
- Understand the Prior Arts:
- Read and understand each prior art document. Focus on the claims, detailed descriptions, and drawings to grasp the essence of the prior inventions.
- Comparison with Your Invention:
- Identify Similarities: Compare each prior art with your invention to identify similarities. Pay attention to the features and elements that are common.
- Highlight Differences: Note the differences between your invention and the prior arts. These differences can include new features, improved performance, unique combinations, or novel methods.
- Focus on Improvements: Emphasize any improvements your invention offers over the prior arts. This could be in terms of efficiency, cost-effectiveness, usability, or technical advancements.
Finding Differences and Improvements
- Element-by-Element Comparison:
- Create a table or a list to compare each element of your claims with the corresponding elements in the prior arts. This helps in a structured comparison and highlights distinct features of your invention.
- Technical Advantages:
- Document any technical advantages of your invention over the prior arts. Explain how these advantages solve existing problems or improve upon existing solutions.
- Non-Obviousness:
- Argue the non-obviousness of your invention. Explain why the combination of features in your invention would not have been obvious to someone skilled in the art at the time of your invention.
- Inventive Step:
- Describe the inventive step in your invention that differentiates it from the prior arts. This could be a novel combination of known elements or a new application of a known technology.
Example Comparison Structure
| Feature/Element | Your Invention | D1 | D2 | D3 | Improvement/Advantage |
|---|---|---|---|---|---|
| Feature A | Yes | No | Yes | No | Novel integration |
| Feature B | Enhanced | Yes | Yes | No | Improved efficiency |
| Feature C | Unique Method | No | No | No | New method |
Based on your comparison, clearly articulated differences and improvements of your invention over the prior arts are condidered while writing response by patent attorney.
Hearing with the patent office :
A hearing at the Indian Patent Office is typically held to resolve issues related to the examination of a patent application. It may involve addressing objections or rejections raised by the patent examiner, presenting arguments in favor of the patent application, or discussing any other matters related to the patent application’s prosecution.
Attorney fees: The attorney fee for attending the Hearing with the patent office is ₹ 15,000 or ( USD 180 )
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- Indian Patent Office, Govt. of India
- Patent Facilitator for Start-ups, Startup India Govt. of India
- Bachelor’s degree in Electronics and Telecommunication engineering.
- Author of multiple books on Patents and IPR including a best-selling book on “How to patent an idea in India” which has been selected as the “Memorable Business Book of 2018” by Amazon
- Books are included in the syllabus of Educational Institutions as textbook and reference book on subject of IPR and Patents
- For over 15 years, Prasad has helped protect the intellectual property rights (IPR) of more than 1800 clients, including individuals, entrepreneurs, and educational institutes. This includes patents, trademarks, designs, and copyrights.