Replying to Patent First Examination Report

Replying to Patent First Examination Report

3020
0
Print Friendly, PDF & Email
Replying to Patent First Examination Report
Replying to Patent First Examination Report

What is Patent First Examination Report?

A Patent is a set of exclusive rights granted by a government to an inventor or assignee for a limited period of time in exchange for detailed public disclosure of an invention. It gives the sole right to exclude others from making, selling or using such invention.

Replying to Patent First Examination Report

It is common notion that a patent application is queued for examination after it is filed at Indian Patent office (IPO). This application for Patent examination can be filed by the applicant or anyother person having interest in the examination of the Patent, but he will have to show evidences to prove his interest in the Patent Examination.

So, Patent First Examination Report is the report accompanying objections and requirements are sent to the applicant to the controller within six months of the application for the patentexamination or date of publication whichever is later. This report of examination is referred to as First examination report in India. The response to the FER should be made within twelve months

What objections can be raised in Patent examination Report?

The patent examiner examines the patent application, and prepares the examination report on the basis of various patentability criteria’s like:

  • Patentable subject matter;
  • Novelty;
  • Inventive step;
  • Industrial application; and
  • Specification Enablement

Other responsibilities of the patent examiner for examination of a patent application include:

  • To conduct comprehensive investigation of an application and prepare a report under section 12;
  • To conduct an inter-office search covering all four patent offices;
  • To raise objections rather than comment on missing forms.
  • The Examiner’s report will: Be a permanent part of a file’s note sheet and non-editable at the Controller’s end; Include a draft summary/gist of objections-this gist editable at Controller’s end; Include any amendments to the complete specification;

Patent Prosecution in India: First Examination Report

Replying to Patent First Examination Report

Replies to the First Examination Report

The Reply to the First Examination Report must be accurate, fast and efficiently punctual. The reply to the Examination report must be in compliance with the procedures of law and technical by nature.

  • 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.
  • Technical- There objections can be countered by arguments.
  • It has to be identified whether the arguments in the reply will be based on the original claim set or amendment is required.
  • In case of objections relating to Novelty and obviousness, the technical differentiation with respect to prior art needs to be brought out.

Therefore, the response to First Examination Report (FER) should be timely filed to overcome the objections by technically justifying the facts and the concepts by replying. The process of responding to FER includes analysing the objections, identifying the technical solution, arguments and amendments etc. Hence, it is very important to understand the basic concepts to analyse FER and file the substantial response, which would finally grant the patent.

For registration of your Patent please contact our experts by clicking here

OUR SERVICES

Company Registration I Trademark I Copyright I Patent I GST I MSME

 ISO Certification I Website/App Policy I Legal Documentation

Annual Compliance I Connect Consultant

Visit: Aapka Consultant to get Online Services of CA CS & Lawyers

Print Friendly, PDF & Email

NO COMMENTS