In this article, Deepshikha Sarkar discusses Replying to Patent First Examination Report (Patent).

How to get your Patent Application Examined?

It is a common notion that a patent application is queued for examination after it is filed at the Indian Patent Office (IPO). Like in the case of Trademarks in, a period of six months to one year from the date of filing the Application is analyzed and if required an Examination Report is generated without any action from the Applicant, but that is not the case in Patents.

Patents have a deferred examination system in India. Filing a patent application does not essentially mean that an Applicant for the patent is requesting the IPO to examine his patent application. The Applicant can refrain from filing a request for examining his application up to 48 months from the date of priority (priority date here is the date of first filing of the invention), of the Indian patent application. Hence Indian Patent Act, 1970 makes it mandatory to file a request for examination.

It is to be noted that a request for examination may be filed by the applicant of the application or by any other interested person in such application providing proper evidence of interest in the particular application to the Patent Office.

After the request for examination, if the report is adverse to the grant of Patent then a communication is made to the Applicant. The Applicant then has to take steps so as to bring his invention into compliance with the Patent Act, 1970 within one year from the date on which the objection is forwarded to him. If the Applicant fails to do so, it will be deemed by the Patent Office that the Application has been abandoned.

How is the examination report prepared?

Examination Report writing methodology is as per GUIDELINES FOR SEARCH AND EXAMINATION OF PATENT APPLICATIONS, 2015 issued by OFFICE OF THE CONTROLLER GENERAL OF PATENTS, DESIGNS AND TRADEMARKS.

Report of examiner

The examiner prepares a report of examination after conducting the examination in electronic module and sends it to the controller. After due for consideration of the report of the examiner by the controller as per the provisions of section 14 of the Act, the examination report along with its covering letter is generated through the module and subsequently sent to the address of service as mentioned on Form-1 in Patents Act 1970.

Approval/Decision of Controller: On approval of the controller, the first examination report (FER) is sent to the address of service of the applicant and intimation to this effect is sent through e-mail.

What are the factors that the Controller considers in the Examination Report?

The Controller considers the report of the examiner ordinarily within one month from the date of the receipt of such report and a gist of objections, if any, is sent to the applicant in the form of a report – First Examination Report (FER) – along with the application and specification, if required.

The FER is sent to the applicant, even when the request for examination has been filed by an interested third party. An intimation regarding the issue of FER is given to such person interested too.

What Are Some Common Objections?

First Examination Report may contain objections relating to:

1. The invention lacks novelty, inventive step and/or industrial applicability.
2. The subject matter of the invention is relating to a category, which is “Not an invention” as per Section 3 or Section 4 Patents Act, 1970.
3. The claims are not written correctly and do not describe the elements of the invention.
4. The claims are inconsistent with what is described in the specification.
5. The claims are written poorly and are unclear.
6. The claims describe more than one invention.
7. There is Non-fulfillment of any other requirement under the Act.

Why Is The Examination Report Reply Important?

An application may be very well drafted but if the arguments to the office action are weak it could ruin a potential innovation’s protective rights. Our practitioners are technically strong and trained to craft technical arguments based on the laws guided by patent laws around the globe.

Types Of Replies

A template is followed to begin drafting a response that keeps things accurate, fast and efficiently punctual. Things that need to be considered and focused on during an Examination Report Reply drafting can become very technical or just plain simple legal procedure compliance issue.

PROCEDURAL

If the objection is related to a procedure that the Patent Act, 1970 demands then the Applicant has no choice but to comply with taking necessary steps.

For example, when there are several novel subjects matters the unity of invention needs to be identified and because an application may have only one novel subject matter, another application may be filed for each new subject matter.

TECHNICAL

Technical objections can be countered by arguments. A few steps can be followed in case of technical arguments.

1. It has to be identified whether the arguments in the reply will be based on the original claim set or amendment is required. Further, Amending claims if required keeping in mind cited arts whether it predates the patent application filing date or not.
2. In case of objections relating to Novelty and obviousness, the technical differentiation with respect to prior art needs to be brought out.
3. 1. Novelty is a subject of facts and arguments are based on eye to eye analysis and is subjective, so the only thing that can be done is explain own invention in a better manner.
   2. Obviousness arguments are generally based on point of law which involves determining difference between the prior art and present claims. It has to be explained that the prior arts and the differences in combination do not reach to the invention, and the documents cited by the examiner cannot be combined by “a person skilled in art”. Doing a technical study and exploration to a point of scrutiny helps in drafting an appropriate legal response to the examination report.