How to respond to a FER in a patent application

This guide breaks down everything you need to know about responding to a First Examination Report (FER) during the Indian trademark registration process. It walks you through what an FER is, why you might receive one, and most importantly, how to respond to it effectively. 

Introduction

Riya was a school friend, and she was one of a kind. She used to constantly try and invent new things. Once she made an automatic sensor in books which would turn pages in a set time. A few years back, she made something called “My Cup.” 

This one could maintain your drink at the perfect drinking temperature, remind you if you left it behind, and even notify your favourite tea/coffee vendor when you were running low. Her prototype, cobbled together with heat sensors and a modified IoT chip from an old home automation kit, actually worked.

Thrilled, Riya applied for a patent. She was already planning her crowdfunding campaign and dreaming of vending machines that could charge the cups. But a few months later, she received a bulky, somewhat intimidating document from the Indian Patent Office. The First Examination Report (FER).

It said her invention lacked novelty, that it was “obvious” in light of prior art, and even included an objection under section 3(k). Riya was confused, even a little deflated. Was her dream over? What did these objections even mean?

If you or your client has received a FER and is unsure about your next steps, do not worry. You are not alone. This guide is here to walk you through the process, how to understand a FER, how to respond to it, and how to turn it into an opportunity to strengthen your patent application. Because in the world of inventions, a FER is not the end; it is just a bump in the road.

What is a First Examination Report (FER)?

When my client received the first FER, I was going to deal with it for the first time. I will be honest, I did not even know where to start. It looked like a mix of legalese, technical jargon, and what felt like a polite but firm rejection letter. But over time, I have come to see the FER for what it really is. It acts like a checkpoint. A pushback, yes, but also an invitation. They just want us to convince them. 

So what exactly is a First Examination Report, and why does it land in your inbox?

Let us break it down.

The basics

The First Examination Report (FER) is the first official communication from the Indian Patent Office (IPO) after you have filed your patent application and requested examination. It is not sent automatically, you must file a Request for Examination (RFE) within 48 months from your priority date or the filing date of the application, whichever is earlier, for standard applications. For applications filed under the expedited examination route (e.g., for startups or eligible applicants under Rule 24C), the timeline is different and typically shorter.

Only then will a Patent Examiner take up your application for review.

Once it has been examined, the IPO issues the FER outlining all the objections that stand in the way of granting you a patent. It is essentially a document that states what it does not agree with and asks us to change our minds.

Who sends it and when?

The FER is issued by the Controller of Patents via the designated examiner who reviewed your application. You will typically receive it within 6 to 12 months after you file your Request for Examination, though this timeline can vary depending on the backlog at the IPO and the technical field of the invention. 

Once issued, you have 6 months to respond from the date of issuance. This deadline can be extended once by an additional 3 months, upon request. If you miss this window, your application is deemed abandoned. That is a harsh end, so it is crucial to treat the FER with urgency and care.

What does it contain?

So yes, the FER is not a random checklist. It is a well-structured set of objections based on the Patents Act, 1970 and the Patents Rules, 2003. You will typically see:

• Substantive objections: These relate to the patentability of your invention. Common grounds include things like lack of novelty, lack of inventive step or being obvious in light of prior art,non-patentable subject matter. There can also be claims that fall under excluded categories, like algorithms, business methods, or traditional knowledge.
• Formal objections: These are issues with the format, language, or structure of your application, such as unclear claims, missing reference numerals, or lack of proper support in the specification.
• Prior art citations: The examiner may cite patents or publications from around the world that allegedly disclose or suggest features similar to your invention. These are critical to address thoughtfully.

Sometimes, the FER may even suggest that your invention is not useful, lacks industrial applicability, or is unclear in scope. Each objection requires a tailored and well-thought-out reply.

Legal framework: What governs the FER?

Before we jump into dissecting a FER, it helps to understand the legal skeleton behind it. Every objection raised by the examiner traces back to a specific provision in Indian patent law. The two key instruments are:

The Patents Act, 1970

This is the principal legislation that defines what can and cannot be patented in India. Important sections related to examination and FER include:

• Section 12 – Examination of application
• Section 13 – Filing statement and undertaking in response to FER
• Section 15 – Power of Controller to refuse the application
• Section 3 and Section 4 – List of non-patentable inventions
• Section 10 – Deals with the contents of the complete specification

And of course, section 2(1)(j) and 2(1)(ja) are your go-to definitions for invention and inventive step, two of the most frequently challenged elements.

The Patents Rules, 2003

These rules outline procedural aspects, like how to file a response, timelines, extensions, and formats. Notably:

• Rule 24B – Timelines for issuing FER and responding
• Rule 20, 22, 24 – Formal requirements
• Rules 28 to 30 – Hearings and communications post-response

Together, these provisions empower the Controller and the Examiner to scrutinise your application and demand clarification, amendment, or even refusal if the application does not meet the legal and technical bar.

Now that we have the law on our backs, let us get to the real-world part: how do you actually read a FER?

Reading and understanding a FER

When a FER lands in your inbox, it usually comes as a PDF file through the IPO portal. You open it, scroll past the formal header, and then come face to face with a numbered list of objections. Some will sound straightforward; others, cryptic.

Here is how I recommend approaching it.

1. Start with the claims.

Your claims are the heart of your patent application. Every objection in the FER will, in some way, relate back to them. Read your original claims side-by-side with the FER.

Ask yourself questions such as which claims are being challenged, and is the objection about the subject matter? Or is it about clarity or format?

2. Identify the type of objections.

Like I mentioned before, there can be substantive objections, such as a lack of novelty and a lack of inventive step. But there can also be formal objections. And these are often easier to fix. It can issue such as claims that are too broad or too vague, or lack support in the specification. It can even be issues about incorrect numbering or missing reference numerals, or missing drawings, or unclear figures.

Then there are miscellaneous objections. Sometimes the FER will mention that the abstract needs to be redrafted. If you have not submitted Form 3 (statement and undertaking), then it could be about that as well. You also need to file a Power of Attorney, and if that is not done, then objections can be raised. 

Do not underestimate these. Even small compliance gaps can lead to abandonment if not addressed.

3. Use a highlighter, yes, literally.

Print it out or annotate digitally. Use colour codes such as red for major objections (novelty, inventive step), yellow for formal objections, and green for compliance/documentary issues.

It helps you build a roadmap of what needs to be tackled and how much effort each point may demand.

4. Do not panic

Some FERs look brutal. Multiple prior art citations, rejections under every section imaginable, it can feel overwhelming. But remember, this is normal. It is rare for a patent to be granted without any objection. Most applications go through at least one round of FER and response. It is part of the process.

Strategising your response

Once you have read through the FER, highlighted your battlefield, and taken a deep breath, it is time to map out your plan. Because how you respond to a FER is just as important as what is in your application. This is not just about rebutting objections, it is about building a persuasive, legally sound case for why your invention deserves protection.

Here is how you can approach it strategically.

Categorise and prioritise objections

Start by dividing the objections into three categories:

1.  Substantive objections: These are your heavy hitters, lack of novelty, inventive step, or section 3 objections. These will form the core of your response.
2.  Formal objections: These are procedural or formatting issues, easier to resolve with clean drafting or minor amendments.
3. Documentary/compliance issues: Power of attorney, Form 3, English translation of priority documents, etc. These are quick wins. Fix them first.

Prioritisation helps you allocate time and effort wisely. Not every objection needs a full-blown argument, some just need a missing page or a corrected label.

Decide whether to amend the claims.

This is a crucial call. You do not always have to amend your claims, but sometimes, it is the most effective way to overcome an objection.

When should you amend?

When the examiner has cited prior art that clearly overlaps with your claims, or when the language of your claims is too broad, vague, or unsupported.

Also, for section 3(k) objections, argue that the invention provides a technical contribution or advancement, as per the Guidelines for Examination of Computer-Related Inventions (CRIs), 2017, by demonstrating a specific technical effect, practical application, or integration with hardware that results in a novel and inventive system.

What kind of amendments work?

• Add technical features that distinguish your invention from the prior art.
• Clarify ambiguous terms.
• Break one broad claim into dependent sub-claims for better clarity.

Do not amend the claims so drastically that the scope of the invention changes. That may violate section 59 of the Patents Act, which prohibits claim amendments that go beyond the original disclosure. Be within the scope of the original specification and claims. Amendments to claims must comply with section 59, which allows changes only by way of disclaimer, correction, or explanation, provided they do not introduce new matter or broaden the scope of the originally filed claims.

Section 59(1) of the Patents Act, 1970, specifies that amendments to the specification or claims are allowed only by way of disclaimer, correction, or explanation and must not result in claiming matter not disclosed in the original specification or broaden the scope of the originally filed claims. Additionally, amendments must be filed using Form 13 along with a marked-up copy showing changes, which is a procedural requirement under Rule 55 of the Patents Rules, 2003.

Tackle the substantive objections head-on.

Now, let us get into the argumentative side of things. Here is how to handle the big ones:

a. Novelty

Start by comparing your invention to each cited prior art (D1, D2, etc.). Show how your invention is different in structure, function, or effect.

Example: “The cited document D1 discloses a beverage temperature control mechanism. However, it lacks any notification feature linked to a third-party vendor as claimed in Claim 2 of the present application.”

Use specific claim numbers, drawings, and paragraph references to make your point.

b. Inventive step

This is trickier. The examiner might argue that your invention is an obvious combination of existing technologies.

To counter this, apply the Problem-Solution Approach:

• Problem addressed by prior art: Describe what the old invention does.
• Problem addressed by your invention: Show the technical challenge your invention solves.
• Solution you offer: Highlight why your solution would not be obvious to a skilled person.

Also cite relevant Indian or global case law where courts have supported similar inventions.

c. Section 3 objections

Each clause under section 3 requires a different tack.

• 3(d): Show significant enhancement in efficacy (especially in pharmaceuticals).
• 3(k): If your claims are software-based, argue technical effect, practical application, and system-level implementation.
• 3(i): For methods of treatment, stress diagnostic tools or devices, if involved.
• 3(m)/(n): Clarify if your invention has any moral, aesthetic, or traditional implications, and why it still qualifies.

Consider expert input

This is not always a solo job, especially for high-stakes or technically complex inventions. A registered Patent Agent or IP attorney can help:

• Draft technically strong, legally sound responses.
• Identify subtle but significant distinctions between your invention and prior art.
• Avoid risky claim amendments.

If you are representing a client, loop in their R&D team. You would be surprised how often inventors themselves can point out differences you might miss.

Do not forget the small stuff.

It is easy to get caught up in arguing novelty and forget to attach a required form or corrected figure. Before submitting, double-check if all forms are signed and uploaded and if drawings are labelled correctly. Make sure translations (if any) are provided. And also include the Power of Attorney and Form 3. 

Think of it as cleaning up your room before a guest arrives; neatness counts.

How to draft a response to a FER

If reading the FER is like deciphering a mystery, then drafting your response is your chance to become the detective. This is where you pull together legal reasoning, technical clarity, and a bit of strategy to persuade the Controller that your invention deserves to be granted.

Think of it as a mini-legal brief, one that makes your invention shine without sounding defensive or over-technical.

Here is how you can approach it step by step:

Tone and language

You are writing to a technically trained legal authority, so your tone should be professional and objective. Make sure you are firm but not confrontational. Be precise, especially when citing claim numbers or prior art documents. Avoid vague phrases like “we believe” or “we feel.” Use assertive but respectful language instead, like:

“It is respectfully submitted that the invention as claimed in Claim 1 is novel over D1 due to the following distinguishing features…”

Use bullet points, subheadings, and numbered lists to organise long arguments. Patent examiners often skim before they dive.

Structure of the response

Here is a simple and effective structure you can follow:

Heading and Reference

Start with a formal heading that identifies:

• Application number
• Title of invention
• Applicant’s name
• FER issue date

Example:

Response to First Examination Report
Application No: 3456789
Title: Smart Beverage Temperature Monitoring Cup
Applicant: Riya Iyer
Date of FER: 12 September 2024

Preliminary statement

Here, write a short paragraph stating that you are submitting a response within the prescribed time and are complying with all requirements.

This response is being submitted in accordance with Rule 24B(5) of the Patents Rules, 2003, within the prescribed period of six months from the date of issuance of the First Examination Report. The applicant has addressed all objections raised and has made suitable amendments, where necessary, in good faith.

Response to individual objections

So you need to address each objection one by one, as numbered in the FER. Use the same numbering as the examiner; it shows attention to detail and helps them follow your reply.

E.g. Objection 1: The subject matter of claims 1–5 lacks novelty in light of document D1.

It is respectfully submitted that the claimed invention is novel over D1 due to the following differences:

1. D1 discloses a temperature sensor embedded in a standard cup. However, the present invention includes an integrated alert mechanism that connects via Bluetooth to a vendor’s mobile device, this feature is not disclosed or suggested in D1.
2. Claim 3 explicitly mentions a notification system that operates on geofencing, which is absent in D1.
   Therefore, the invention as claimed is not anticipated by D1 and is novel under section 2(1)(j).

E.g. Objection 2: The claimed invention lacks inventive step in light of D1 + D2.

It is submitted that the combination of D1 and D2 does not render the invention obvious due to the following reasons:

• The technical advancement lies in the real-time inventory management feature embedded within a temperature-control system.
• Neither D1 nor D2 teaches or motivates a person skilled in the art to combine these specific features.
  The invention solves a long-standing problem of synchronising beverage consumption with external supply chains, thereby fulfilling the requirement under section 2(1).

E.g. Objection 3: Claims are vague and lack a proper antecedent basis:

The claims have been revised to provide better clarity and proper antecedent basis. Claim 1 now reads: “A beverage temperature monitoring cup comprising a heating coil, a sensor module, and a Bluetooth transmitter…”
The updated claim set has been filed as part of this response.

Amendments and attachments

Here, mention if you have amended the claims, and list supporting documents:

• Revised claim set (marked and clean)
• Revised abstract or drawings
• Any additional documents requested (e.g., Form 3, POA, translations)

Request for hearing (if needed)

If you believe a hearing is necessary to argue your case further, you can formally request one under Rule 28, but the Controller will decide whether a hearing is necessary based on the response and outstanding objections.

In the event that the Controller requires further clarification, the applicant is willing to attend a hearing under Rule 28 for oral submissions.

File the response

You will need to upload the response and all attachments via the Comprehensive E-Filing portal of the Indian Patent Office. 

Ensure that your file names are clearly labelled and that you generate the acknowledgement receipt after submission. Also, make sure that if amendments are filed, upload Form 13 (for claim amendments).

What happens after you file the FER response?

So you have reviewed the objections, crafted your counterarguments, polished your claim amendments, and uploaded your FER response on the IPO portal. You breathe a little easier, but you are not at the finish line yet. What happens next can feel like a black box, especially if you are navigating the patent process for the first time.

Let us unpack what usually follows, so you are prepared for all possible outcomes.

The controller reviews your response.

After submission, your application is routed back to the Controller of Patents, the officer who originally signed off on your FER. The Controller will evaluate your response along with any claim amendments, technical explanations, and legal arguments you have provided.

There is no fixed timeline for this review. It may take a few weeks or a few months, depending on the workload of the patent office and the complexity of your case.

At this stage, one of three things typically happens:

Outcome 1: Patent is accepted and published for grant.

This is the best outcome you can hope for. If the Controller is satisfied that:

• Your invention meets the criteria under sections 2(1 )(j) and 2(1)(ja) (novelty and inventive step),
• It does not fall under the section 3 or 4 exclusions,
• And all formal and documentary issues have been resolved,

Then, congratulations, your application is marked as “Ready for Grant.”

You will receive an official communication under section 15 indicating that the application is in order for a grant. After internal approval, your patent is granted and published in the Patent Journal. You will also receive the patent certificate shortly afterwards.

It is a quiet win but a very real one.

Outcome 2: Hearing is scheduled (optional but common).

If your response partly satisfies the Controller but still leaves some key objections unresolved, you may be called in for a hearing under Rule 28.

Do not panic because hearings are often done in cases where unresolved issues require further discussion.

You will receive a notice with a date and a list of issues that the Controller still finds problematic. You may be asked to clarify prior art distinctions in person, justify why a certain amendment does not violate section 59, or explain why your invention is not excluded under section 3.

What happens in the hearing? It is usually a virtual meeting where you or your patent agent presents arguments orally. You can also submit a written hearing submission, a follow-up summary of the points you made.

If the Controller is satisfied after the hearing, your application proceeds to grant. If not, you may receive a final rejection under section 15. More on that below.

Outcome 3: Second examination report (SER).

This does not happen in every case, but in some complex applications, the Controller may issue a Second Examination Report instead of moving directly to grant or scheduling a hearing.

This happens when your amendments introduce new ambiguities or inconsistencies, or the Controller identifies new prior art or legal grounds not mentioned in the original FER. You will be expected to respond again, within 1-3 months, although it may vary depending on the communication.

The goal is still the same: clarify, justify, and amend if needed.

Outcome 4: Application is rejected

Yes, we come to the worst bit. This happens if: your FER response fails to address key objections, your claim amendments go beyond the scope of the original application (in violation of section 59), or the Controller finds that your invention is simply not patentable under Indian law.

Rejection is communicated under section 15, often after a hearing. It does not mean the end of the road, but it does mean you will need to consider your options:

• Filing a Review Petition before the IPO,
• Appealing to the High Court, depending on jurisdiction,
• Or refiling the application with substantial changes, if allowable.

Status tracking and transparency

You can track the progress of your response and application through the Indian Patent Advanced Search System (InPASS) or the IPO e-filing portal. Key stages will show up:

• “FER Issued”
• “Reply to FER Filed”
• “Under Examination”
• “Hearing Scheduled”
• “Ready for Grant” / “Granted” / “Refused”

Checking in every couple of weeks is a good practice; it keeps you informed in case any deadlines arise.

A note on timelines

From FER issuance to grant, the process typically takes 6–12 months, assuming no major delays or complications. If you are in a fast-track category (like startups or female applicants who have requested expedited examination), timelines may be shorter. But patience is key. The Indian patent system is evolving, but it is not instantaneous.

The FER response checklist

Responding to a First Examination Report (FER) requires both technical accuracy and legal precision. A well-structured response can significantly improve the chances of a patent grant. This checklist is intended to serve as a practical tool for applicants, patent agents, and attorneys who are preparing to respond to a FER under the Indian Patents Act.

Each step ensures that no critical aspect is missed and that the response meets both procedural and substantive requirements under Indian patent law.

Before drafting the response

1. Carefully review the FER. Understand each objection raised, whether related to novelty, inventive step, clarity, or statutory exclusions under sections 3 and 4.
2. Retrieve and analyse the cited prior art. Examine all prior art documents cited in the FER. Identify the differences between your claimed invention and the disclosures in those documents.
3. Classify the objections. Categorise objections into:

• Substantive: Novelty, inventive step, patentable subject matter
• Formal: Claim clarity, antecedent basis, drafting issues
• Procedural: Filing of forms, fee discrepancies, and missing documents

4. Consult with the inventor or technical team. Technical insights from the inventor can help in formulating strong arguments, particularly when distinguishing the invention from cited prior art.
5. Review relevant legal provisions. Ensure familiarity with sections 2(1)(j), 2(1)(ja), 3, 4, 59, and Rules 24B and 28 of the Patents Rules, 2003.

While drafting the response

1. Use professional and respectful language. Avoid emotional or defensive expressions. Present arguments objectively and with clarity.
2. Follow a consistent structure:

• Heading (Application Number, Title of Invention, Date of FER)
• Preliminary Statement
• Response to Each Objection (using Controller’s numbering)
• Statement of Amendments (if applicable)
• List of Enclosures

3. Respond to each objection clearly and separately. Maintain the same numbering as in the FER. Provide a detailed rebuttal supported by claim language, technical explanations, and legal reasoning.
4. Support all arguments with evidence. Quote specific elements of prior art and explain how the invention is distinguished. Refer to figures or claim elements where relevant.
5. Ensure compliance with section 59 for amendments. Any amendment to the claims or specification must be within the scope of the originally filed application and should not broaden the scope.
6. Prepare clean and marked-up versions of amended claims. This facilitates quick review by the Controller and improves transparency.
7. Include a hearing request, if applicable. If a hearing would assist in clarifying any unresolved issues, include a formal request under Rule 28.

Before filing

1. Verify all required forms are ready for submission:

• Form 3 (Statement and Undertaking)
• Form 13 (for claim amendments)
• Power of Attorney (if not already filed)
• English translations of any non-English documents

2. Label all documents clearly. Follow IPO guidelines for document format and naming. Ensure drawings and diagrams are legible and comply with requirements.
3. Use the official E-filing portal. Submit the response and save the acknowledgement receipt as proof of submission.

After filing

1. Track the application status regularly. Monitor progress through the InPASS system or the IPO e-filing dashboard. Updates may include status changes, hearing notices, or a second examination report.
2. Prepare for a hearing, if scheduled. Draft a written hearing submission outlining your arguments, and be prepared to present them concisely during the oral hearing.
3. Check the Patent Journal for publication of the grant. Once granted, the patent will be published in the Patent Office Journal. The certificate of grant will follow.

Another optional practice that you can follow is to maintain a standard response format that can be adapted based on the nature of objections in each case. This improves consistency and efficiency in handling multiple applications.

Conclusion

So, through this, we have understood that responding to a First Examination Report is not merely a procedural requirement; it is a strategic opportunity. It allows you to refine your patent application, clarify the scope of your claims, and demonstrate to the Controller why your invention deserves protection under the Indian Patents Act.

Whether you are addressing objections related to prior art, dealing with exclusions under section 3, or navigating formal compliance issues, your response must be precise, well-reasoned, and legally sound. A thoughtfully prepared reply can significantly increase the chances of securing a grant and may even prevent prolonged examination or rejection.

Above all, the process demands a balance of legal acumen and technical understanding. With careful analysis, proper documentation, and a clear communication strategy, you can transform the FER stage from a hurdle into a critical milestone on the path to patent protection.

In a system where each word and claim counts, your response to the FER is your voice before the Patent Office. So, do make it count.

FAQs

1. What should I do if the prior art cited in the FER is in a foreign language?

If the Indian Patent Office (IPO) cites prior art in a foreign language, you are not required to provide a translation unless explicitly requested by the Controller. However, it is prudent to obtain an English translation of the relevant portions of the prior art to accurately distinguish your invention. You can engage a professional translator or patent agent familiar with technical terminology.

In your FER response, clearly explain how your invention differs from the cited prior art, referencing specific sections of the translated document if necessary. Ensure the translation is accurate, as misinterpretations could weaken your arguments. If the Controller requests a certified translation, submit it promptly via the IPO e-filing portal to avoid procedural objections.

2. Can I request a divisional application in response to an FER objection regarding unity of invention?

Yes, if the FER raises an objection under section 10(5) of the Patents Act, 1970, for lack of unity of invention (i.e., the application contains multiple distinct inventions), you can file a divisional application under section 16 to pursue the additional inventions separately.

The divisional application must be filed before the grant or refusal of the parent application and must not include claims beyond the scope of the original disclosure. You should address the unity objection in your FER response by either amending the claims to focus on a single invention or confirming your intent to file a divisional application for the other inventions. File Form 1 and Form 2 for the divisional application via the IPO e-filing portal, ensuring compliance with Rule 13.

3. How can I handle an FER objection that incorrectly interprets my invention’s technical field?

If the examiner misinterprets the technical field of your invention, leading to irrelevant prior art citations or objections, address this in your response by clearly defining the technical field and context of your invention. Provide a detailed explanation, supported by the specification and drawings, to clarify the invention’s purpose and technical domain. For example, if your invention is a hardware-integrated IoT device but the examiner treats it as a pure software solution under section 3(k), argue the hardware integration and technical effect, citing relevant case law for computer-related inventions. If the misinterpretation persists, consider requesting a hearing to present your case directly to the Controller.

4. What happens if the FER cites prior art that was not disclosed in my Form 3 (Statement and Undertaking)?

Form 3 requires applicants to disclose details of corresponding foreign applications and their prosecution status. If the FER cites prior art not disclosed in your Form 3, it does not automatically invalidate your application, as prior art searches are conducted independently by the examiner. However, ensure your Form 3 is updated to include all relevant foreign applications, as non-compliance could lead to procedural objections under section 8. In your response, analyse the cited prior art thoroughly and distinguish your invention without referencing the Form 3 omission unless raised by the examiner. If an objection under section 8 is raised, promptly file an updated Form 3 with an explanation for the oversight.

5. Can I challenge the examiner’s reliance on unpublished prior art in the FER?

If the FER cites unpublished prior art (e.g., a patent application filed before your priority date but published after), it may still be valid under section 13 of the Patents Act, 1970, as prior art includes documents available to the public before the priority date. However, if you believe the prior art was not publicly accessible (e.g., it was confidential or improperly cited), you can challenge its relevance in your response. Provide evidence or arguments questioning the prior art’s publication status or accessibility, and request clarification from the Controller. If unresolved, this can be a point to raise during a hearing under Rule 28.

6. How should I respond to an FER objection based on insufficient disclosure in the specification?

An objection under section 10(4) for insufficient disclosure means the examiner believes the specification does not fully describe the invention or enable a skilled person to perform it. In your response, argue that the specification provides adequate details by referencing specific paragraphs, figures, or examples in the original filing that support the claims. If necessary, propose amendments to clarify the description without introducing new matter, ensuring compliance with section 59. For complex inventions, consider including a technical affidavit from the inventor or an expert to demonstrate enablement. Avoid adding new technical details not present in the original specification, as this could lead to rejection.

7. What are the risks of not addressing minor procedural objections in the FER?

Minor procedural objections, such as incorrect claim formatting or missing signatures, may seem trivial but can lead to significant consequences if ignored. The Controller may refuse the application under section 15 for non-compliance with procedural requirements, even if substantive objections are resolved. To mitigate this risk, meticulously address all procedural issues in your response, such as correcting claim numbering, submitting missing forms, or updating drawings. Use the IPO’s Manual of Patent Office Practice and Procedure as a guide to ensure compliance with formatting and submission standards.

8. Can I use experimental data or post-filing evidence to support my FER response?

Indian patent law generally does not allow post-filing data or experimental evidence to support claims unless it clarifies or elaborates on the original disclosure without introducing new matter. If the FER questions the invention’s utility or efficacy, you can submit data that was included or implied in the original specification. In your response, clearly link the data to the original disclosure, citing specific sections. If the examiner objects to the data’s admissibility, request a hearing to argue its relevance, referencing relevant cases for guidance on the efficacy of evidence.

9. How can I leverage international patent prosecution outcomes in my FER response?

If your invention has been granted a patent or received favourable examination outcomes in jurisdictions like the USPTO or EPO, you can reference these in your FER response to strengthen your case, especially for novelty or inventive step objections. While Indian examiners are not bound by foreign decisions, highlighting consistencies (e.g., how your claims were distinguished from similar prior art abroad) can be persuasive. Submit copies of foreign office actions or granted claims as supporting documents, ensuring they are translated into English if necessary. However, tailor your arguments to Indian law, as patentability criteria differ across jurisdictions.