As already discussed in a previous blogpost, that In India it is mandatory to respond to the Patent Examination report (FER) within 6 months of its issue date. This timeline is extendable to 3 months on request, failing which the application may be ABANDONED.
It is always recommended to file the response to First Examination Report (FER) as soon as possible, so that the response can be reviewed by the Patent Office and another examination report if required may be issued.
The importance of accurate and timely response filing cannot be undermined since it is crucial for the Patent Grant.
If the FER is responded accurately with respect to all the objections mentioned therein, the Patent Grant is possible without hearing. The patent would only be granted when after the filing of the Examination Response; the Patent Office is satisfied that the Patent Application satisfies all the requirements of the Indian Patent Act, 1970.
It should already be clear by now, that how crucial and critical it is to respond to the FER accurately, for the quick Patent grant.
It was discussed in a previous blogpost, that the FER of a Patent Application may contain objections related to technical aspects of the invention and/or procedural /formal requirements of the act. These may be:
1. Lack of Novelty, Inventive step and Industrial Applicability.
2. Subject matter of the Application relating to a category which falls within the purview of Sections 3 and 4.
3. Non-fulfillment of any other requirements under the Act and Rules.
Response to objections in FER
The technical objections are addressed by arguing about the technical differences between the application and the prior arts cited in the FER. The differences between the claims of the prior arts and the existing application are determined. These differences play a crucial role for decision making related to the requirement of claim amendment of the application. It is imperative to note here that the claim amendment if required should be consistent with what is mentioned in the specification.
The technical arguments in the response should completely be based on the differences between the claims of the application and the cited prior arts and should aim at proving the inventive step, Novelty and non-obviousness of the application over the cited prior arts.
The objections related to the Procedural/formal requirements need to be addressed and complied completely. There is no scope of any argument here.
The FER may also contain some objections under Sec 9, 10, 57 and 59 of the Patents Act, 1970 which lists the format related requirements of the specification, drawings and other enclosures of the Patent Application. These need to be addressed as well.
Incorrect, delayed or improper response to the FER can prove detrimental for your patent application. Therefore, it is imperative to address all the objections accurately to ensure quick patent Grant.
How can Intepat help you?
Responding to the First Examination report is a complex techno-legal process. It requires technical expertise along with thorough experience to address the objections for quick and hassle free Patent Grant. Taking assistance of an experienced Patent professional to take your through the complexities of the process can prove to be a fairly good decision. At Intepat, we have 95% success rate of patent grant. For assistance and more information please contact us.
