Introduction:
Receiving the First Examination Report (FER) from the Patent Office is significant as it provides clarity on what issues, if any, have been detected, and what needs to be done to address them prior to the grant of the patent. This is important for inventors, start-ups, researchers, businesses and other stakeholders.
Understanding one’s application status and framing the next steps appropriately becomes imperative at this stage. Our knowledgeable team can assist patent applicants in understanding and interpreting issues raised by patent examiners; respond adequately to examiner’s concerns and track the progress of one’s patent application; and engage patent office staff at different stages of the prosecution process including during hearing.
It is important to manage this stage in IP rights to avoid delays and improve the overall quality of decisions concerning one’s intellectual property. Our team of patent experts in Bangalore with more than 21 years of experience prosecute patents, and reply to objections raised by the patent office and request for hearing.(s).
What Happens to Your Patent Application After an FER?
The Indian Patent Office, after reviewing an application, issues an FER to communicate the objections (if any) as well as requirements, if any, that need to be addressed.
Depending on the nature of objections and requirements noted by the Patent Office, the following steps may become necessary for the applicant:
– Reviewing the FER to identify the outstanding issues
– Preparing and filing a response within the stipulated time
– Filing amendments, where permissible and required
– Attending hearing, if scheduled by the Patent Office.
– Raising additional comments or concerns.
– Closer to a grant if conditions are met.
The process varies by application. Often, a response by the applicant does not mean all objections have been resolved, thus applicants need to continue monitoring.
How to Check Patent Application Status After FER
Regular monitoring of the status of an application can give the applicant an idea about whether a response has been recorded, further action is required and the status of the application.
Step 1: Know Your Application Number
Know your Indian patent application number. You will require this to locate your application.
Step 2: Check the Official Patent Office Portal
Use the portal of the Indian Patent Office and search your application. Check the status of your application.
Look for any recent documents, notices and communications.
Step 3: Understand Recent Status and Communications
Review recent communications from the Indian Patent Office and determine whether additional action is required.
Step 4: Ascertain Action Required
Determine if the Indian Patent Office has given any additional directions.
If a status report is unclear, an applicant should verify by checking the official record or by consulting a patent professional.
Common Patent Application Statuses After FER
Variation exists in the type of language used to describe the status of a patent application.
The following descriptions generally explain common stages, but do not necessarily guarantee the sequence in which they occur.
FER Issued or Examination Report Available
A report from the patent office on an application. Applicants must review the report and decide on a response.
Response Filed
A response has been submitted to an office action to address the examiner’s objections.
Under Examination or Further Examination
An application may be under further review. Applicants should be alert to additional communications and unresolved objections.
Hearing Scheduled
A hearing has been scheduled to resolve unresolved matters, e.g., whether to grant a patent. Applicants should review the notices and prepare arguments pertaining to the matters to be decided.
Accepted for Grant or Granted
The application has progressed to the next stage towards a grant. Applicants should verify the record.
Step-by-Step Guide to Handling Patent Office Objections after FER
A patent office objection response strategy for India includes understanding the issues and following up on them.
Step 1 : Understand the Objections
Read the FER, specifications and claims, and prior art cited.
Classify objections as novelty, inventive step, claim clarity, sufficiency of disclosure, subject matter, and/or formal issues.
Different objections require different responses.
Step 2 : Prepare a FER Response
Respond to each objection separately.
For technical objections, compare the claimed invention to the cited references and respond to the objections.
For procedural objections, identify the requirement and provide the necessary correction or documentation.
Objections should be specific and based on the application as filed.
Step 3: Evaluate Claim Amendments
Permissible claim amendments may assist in clarifying the claims.
Such amendments must comply with Indian patent law. Impermissible new subject matter from the original disclosure must not be included. Consider what effect amendments may have on the scope of protection.
Step 4: Track Deadlines and Communications
Record the FER date, the date a response was submitted or acknowledged, hearing notices, and other communications.
Section 21 of the Patents Act, 1970 states that an application may be deemed to be abandoned if the applicant does not comply with the requirements for putting it in order for grant within the prescribed period. Confirm the relevant deadline, and/or legally available extension or exception for the specific application.
Do not assume that filing a response buys more time to respond to other requirements.
Step 5: Prepare for a Hearing if Required
The Patent Office may, under the applicable procedure, schedule a hearing if objections remain unresolved.
Prepare a concise version of the invention, the key arguments, relevant prior art, and proposed amendments. Written submissions and oral arguments should be consistent with the application record.
Step 6: Review the Outcome and Plan Further Action
Determine what the next step may be, based on the outcome of the response or hearing.
If objections are resolved, the application is considered to proceed towards grant, based on other requirements.
If there are still concerns, have the relevant documentation reviewed by an attorney or other qualified person as quickly as possible.
Who Should Monitor Patent Status After FER?
Regular monitoring is important for:
– Startups and Founders: Protecting valuable IP for fundraising, partnerships, and product launches
– Individual Inventors: Understanding what is required to move an application forward
– Researchers and Universities: Managing patent issues in relation to research and technology transfer
– MSMEs and other Enterprises: Managing deadlines for a number of patent applications
– International Applicants: Managing Indian prosecution as part of a broader patent strategy
Patent office objections are common in India. Active monitoring can give other businesses in Bangalore and India an edge in managing their IP and giving them added peace of mind that important communications are not missed.
Common Mistakes
When dealing with Patent office objections in India, some of the common mistakes made are:
– Thinking that filing an FER response means that the application has been approved;
– Checking the application status without going through the case documents;
– Failing to respond to a notice or request within the stipulated time;
– Not addressing objections in the response loaded with arguments;
– Making amendments to the claims without checking the legal support;
– Failing to retain submission acknowledgments or correspondence;
– Relying on the online case status to check the case details
A professional review of the case periodically and the use of a centralized deadline tracking tool should help address the above challenges.
Prosecuting patents requires a understanding of law, procedures, legal arguments and other aspects. Through professional support, applicants should be able to better understand patent office objections and respond to them. This is especially important for businesses in Bangalore as it can help align patent decisions with the companies’ IP, investment and licensing decisions.
Using AI-assisted search and document workflows, MakeMyPatent can help you with drafting and searching procedures, while expert judgment is still necessary for case-by-case decisions.
What makes MakeMyPatent Unique?
With 21+ years of experience, our team provides patent services for individuals, small and medium enterprises (MSMEs) and large enterprises. Our patent services include: patent drafting and filing, patentability searches, post-grant proceedings, trademark and copyright, IP legal services, and global patent strategy.
We ensure confidentiality and data security through the use of secure and encrypted connections, carefully implement workflows to take a strategic approach to the IP needs of our clients, provide expert-led advice at every step of the way, and utilize AI to ease and expedite processes where possible.
We can assist you with determining next steps. This may include helping you interpret FERs, define your position on an office action, draft office action responses, and prepare for patent hearings or examinations.
Frequently Asked Questions
1. What happens after an FER is issued in India?
The applicant reviews the examination report and responds to the objections within the applicable deadline. The Patent Office may then review the response, raise further issues, schedule a hearing, or progress the application towards grant if the requirements are satisfied.
2. Does filing an FER response mean my patent is approved?
No. Filing a response means that the applicant has submitted arguments or documents addressing the objections. The Patent Office must still consider whether the outstanding requirements have been satisfied.
3. How can I check my patent application status after FER?
Use the official Indian Patent Office online resources at https://ipindia.gov.in/. Search using your application details and review the available status information, examination reports, hearing notices, and subsequent communications.
4. What happens if I miss the FER response deadline?
Failure to meet the applicable requirements within the prescribed period can have serious consequences, including abandonment under the relevant provisions of Indian patent law. Seek prompt advice from a registered patent professional to confirm the deadline and determine whether any lawful remedy is available.
5. Can a patent professional help after an FER?
Yes. A patent professional can help interpret objections, review prior art, prepare a reasoned response, assess claim amendments, monitor procedural requirements, and prepare for a hearing if needed.
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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.