Step 7: Office action- Response to objections
A response to objections in an office action 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 based on the examination report. The objections raised on your patent application would be communicated with you, by official letter from the JPO, known as an Office Action. You would get the opportunity to make amendments or contest the objections raised within a given time.
The best thing to do is analyze the examination report with the patent agent/attorney and create a response to the objections raised in the examination report.
Office action refers to the written document issued by the JPO to highlight the examiner’s review of a patent application. in general, the information in office action communicates the acceptance or rejection of claims and residing reasons, prior arts, or any other specific reasons for its rejection.
When finding reasons for refusal, the examiner shall notify reasons for refusal by designating a predetermined time limit. When receiving a notice of reasons for refusal from the examiner, the applicant may submit a written opinion (Article 50).
Further, the applicant may make amendment to the description, etc. within the predetermined time limit. When the applicant submits a written opinion, a written amendment, etc., the examiner conducts an examination after sufficiently reviewing details of them.
Writing a response to an Office action is a chance for invetor (with the help of patent agent/attorney) to argue about the patentability of the application and comparative analysis (differentiation) of cited prior arts or some times comply to objections received by amending the patent application and making required changes so that the patent application would be granted.
The inventor and patent professional create a response to the objections that tries to prove that his invention is indeed patentable and satisfies all patentability criteria. Or optionally accepts the objections and amends the patent application as pointed out in the examination report.
If JPO is satisfied with the response to the objections or the amended patent application. Upon finding the patent application in order of grant, The patent is granted to you (inventor) / applicant as early as possible !!!
| Office action | Responsibilities | |
| Inventor |  | help the patent agent/attorne 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 the 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 attorney charges anything from 14000 (JPY) for response to office action or optionally 20000 ~ 30000/h (hourly charge) depending upon complexity, subject matter, and the number of objections.
Next article : Step 8: Grant of patent / Notice of Allowance
- 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.