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.
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.