Introduction:
Once a patent application is filed, patent offices around the world initiate an examination process to determine patentability of the claimed invention. Typically, the most challenging objections to respond to during patent prosecution, relate to novelty and inventive step. These objections are often raised in combination, and seek to determine if an invention is new and sufficiently creative as to warrant patent protection.
Drafting an effective response to patent office objections is a strategic way for patent applicants to understand the examiner’s concerns, analyze the cited prior art, and develop reasoned technical and legal responses. These responses often require an analysis of the claims and evidence raising the objections and go beyond general statements of novelty.
In the absence of deep understanding of these aspects of patent prosecution, the process can be unstructured and uncertain for applicants in India, especially those in Bangalore. MakeMyPatent is a 21-year old company, with a team of patent professionals, that provides patent drafting, FER response, and hearing support services for applicants in India.
Novelty and Inventive Step
Both novelty and inventive step are requirements of Indian patent law, and an invention generally must fulfill both, in addition to other requirements, to be deserving of patent protection.
An objection of lack of novelty is raised when, in the view of the patent office, the invention is not new. The considered prior art may include publications of earlier patents, scientific papers or other documents, publicly accessible information, etc.
For example, in case the subject matter of a claim is completely disclosed in a prior art document, and the examiner is of the opinion that the claimed invention is therefore not novel, he/she may raise a novelty objection.
The main question should be whether the claimed invention is already mentioned in the prior art. It is not sufficient to show that the applicant has independently invented the claimed invention.
Understanding Inventive Step
To meet the requirement of the Indian patent law regarding inventive step, the invention should provide a technical advance and be economic, or both, and not be obvious to a person skilled in the art.
An objection to inventive step can be raised even when the invention has new features, if the examiner believes that new features are an obvious extension of known features or an obvious development to the art.
A typical situation is that it is not sufficient to combine two known elements, if the combination is obvious. Other things like the technical relationship of the elements, and the effect and problem solved, may be relevant.
Why Do Patent Examiners Raise These Objections?
Examiners assess patent applications against available and applicable prior art, and against legal requirements.
Common reasons for raising objections for lack of novelty and for inventive step include:
– Features disclosed in the prior art and/or in earlier patent documents.
– Claims which cover known and/or obvious combinations and permutations of known features.
– Insufficiency of the disclosure in explaining the technical advantages, and/or supporting a distinction from the prior art, if any.
A patent office objection response India submission should address the objections based on prior art, or legal requirements, rather than relying on a generic assertion of the commercial value and/or originality of the invention.
Who Needs Support With Novelty and Inventive Step Objections?
Professional assistance can be needed to overcome objections relating to novelty and inventive step, including to prepare a substantive response, and prosecute the case before the patent office.
– Startups and founders: Protecting intellectual property as a strategic advantage
– Individual inventors: Highlighting distinction to known solutions
– Researchers and universities: Synthesizing technical information in a format that meets the requirements of the Patent Office
– MSMEs and Enterprises: Handling patent office challenges and managing patent portfolios
– International applicants: Integrating Indian patent prosecution into the larger strategy for international patent protection
For companies in Bangalore and other parts of India, overcoming these objections can help achieve patent protection for investments, license and research agreements, and other business expansion activities.
Step-by-Step Overcoming Novelty and Inventive-Step Objections
1.Examine the First Examination Report
Review the FER. Take a close look at the claims and specification of the application. Also review the prior art documents cited in the FER.
Identify which claims have been objected. Determine whether the examiner objected to both novelty and inventive step or just one of them.
This step will give a better understanding of each objection and help frame the response appropriately.
2. Interpret Prior Art
Thoroughly examine the prior art cited in the FER. Identify which of the cited art discloses the features of the claim.
In case of a novelty objection, determine whether the prior art discloses the feature of the claim in the same way the invention is claimed.
For an inventive step objection, review what the prior art cites and whether it solves the problem addressed by the invention and whether the prior art teaches a person skilled in the art to arrive at the claimed invention.
A patentability search or a thorough technical review can help clarify issues that require advanced level of understanding.
Step 3: Identify the Invention’s Technical Contribution
What is the contribution of the invention beyond existing technology?
Relevant considerations include a new arrangement, an improved operating mechanism, a non-obvious relationship between components, a technical effect, etc.
Do not depend on statements like the invention is faster, cheaper, better, or commercially valuable. The response should identify the relevant technical distinction and claim it.
Step 4: Prepare a Claim-by-Claim Response
A better FER response to India addresses objections individually.
For every contested claim, identify the concern of the examiner, cite the relevant passage from the prior art, explain the technical distinction, and offer supporting reasoning.
If multiple references are cited, the response should explain how they relate to the claimed invention.
Step 5: Consider Permissible Claim Amendments
It may be possible to amend the claims to incorporate changes that distinguish the invention from prior art and narrow the scope of protection sought.
Claim amendments are governed by the laws of India, and it is not permissible to introduce new subject matter that is not disclosed in the application.
Claim amendments should be considered carefully, as they may unnecessarily narrow the claims, thereby affecting the protection afforded to the applicant in the marketplace.
Step 6: Submit the Response and Track Further Action
The written response and supporting statements should be prepared in accordance with the guidelines and procedures of the Patent Office of India.
After the response has been submitted, pay attention to further communication from the Patent Office of India.
Objections may be resolved; however some may remain and require further arguments or a hearing.
Prosecution of patents is a process. The end of this process depends on the patent application and the law.
Common Mistakes to Avoid
There are some common errors to avoid in a patent office objection response India
-Claiming an invention is unique without discussing the prior art
-Confusing novelty and inventive step
-Ignoring the reasons behind an examiner’s objection
-Making unsubstantiated claims regarding technical advantages
-Amending claims beyond what the disclosure supports
-Narrowing claims without considering the overall IP strategy
-Not meeting the response deadline
There are many ways to effectively address objections; a structured procedure can improve this.
Patent Prosecution Benefits
Objections raised due to lack of novelty and/or lack of an inventive step require a deep understanding of both technology and law.
Professional support can aid applicants in evaluating cited documents, identifying meaningful distinctions, constructing structured arguments, and deciding on claim amendments.
For startups and businesses in Bangalore, professional support can help align the decisions made in patent prosecution with the strategic decisions made regarding the development and commercialization of the product including licensing.
There are some AI-based patentability search solutions available in the market. They can help in prior art searches and document analysis. However, expert review is essential to interpret the results of such searches and develop responsive arguments.
Why Choose MakeMyPatent?
MakeMyPatent’s focus is on inventors, entrepreneurs, researchers, startups, MSMEs and other enterprises. 21+ years of experience in the patent domain helps in patent drafting, patent prosecution, and in providing support in responding to Patent Office Objections. It helps in trademark and copyright protection and in IP litigation. Also, it assists in devising international patent filing strategies. Combining confidentiality and strategic focus, with expertise in IP law, and expertise in AI-based technologies, it helps clients understand the examination issues before them and evaluate options available to them.
Whether you have recently received your first FER or are managing an extensive patent portfolio, MakeMyPatent can help you decide the next steps in your patent prosecution strategy.
Frequently Asked Questions
1. What is a novelty objection in Indian patent examination?
A novelty objection arises when the examiner considers that relevant prior art already discloses the subject matter of a claim. The applicant must assess the cited disclosure and respond based on the claim language and applicable legal requirements.
2. What is an inventive-step objection?
An inventive-step objection arises when the examiner considers that the claimed invention is obvious to a person skilled in the relevant field. The response may need to explain the technical differences, the problem addressed, and why the claimed solution is not obvious.
3. How do I respond to novelty and inventive-step objections?
Review the FER, analyze the cited documents, identify the relevant technical contribution, and prepare a reasoned response to each objection. Consider claim amendments only where legally permissible and supported by the original disclosure.
4. Can I amend my claims after receiving an FER?
Claim amendments may be possible, subject to applicable legal and procedural requirements. Amendments must not introduce impermissible new matter, and their effect on the scope of protection should be carefully assessed.
5. Should I seek professional help for a patent objection response in India?
Professional support can help applicants analyze prior art, interpret examination objections, prepare technical arguments, and assess claim amendments. It can be particularly useful for complex inventions or applications involving multiple objections.
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Disclaimer: This blog provides general educational information only and does not serve as formal legal counsel. Please address your specific invention or IP requirements directly with a registered patent professional.