Response to FER/Office Action

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Patent prosecution can be defined as an interaction between an applicant, which can either be an inventor, or an inventor’s assignee, on one hand, and the patent office regarding grant of a patent, on the other hand. Patent prosecution is done with the objective of obtaining a patent for a product or a technology. In the process of patent prosecution, the applicants plead before the patent office and request the office for granting them the patent. Patent prosecution includes various steps such as, at the outset, replying back to the patent office with respect to the examination report(s) that are issued by them along with attending any hearing that they might schedule. In furtherance of this patent prosecution also includes the preparation of the hearing and filing the responses to the hearing notice set by the Patent office.

Although filing is per se an administrative process; however, this process should be meticulously followed and sone with utmost diligence in order to protect the interests of the applicants. We, at IP and Legal Filings (IPLF) along with the support of Khurana & Khurana, has a fully functional docketing team, which is also supported by the latest software and machinery so that all filing related activities are diligently completed and all the prescribed timelines therein are strictly adhered to. The resources and the software that IPLF possess ensures that track is kept of all timelines, including the imperative timelines of prosecution and litigation. Through the maintenance of such a robust and technically advanced system, IPLF ensures that no deadline is missed.

The process of examination of a patent is initiated when the applicant files a Request for Examination (RFE). The Controller of Patents can only thereafter transfer the patent application in contention to the Patent Controller/Examiner. It is imperative for the applicant to file the RFE within 48 months from the date of priority or filing whichever is earlier. The patent examiner would thereafter prepare an examination report. While preparing such an examination report, the patent examiner shall consider the various criterion of patentability which majorly includes the novelty of the product/technology, innovative/ an inventive step that distinguishes the product/technology from others, subject matter patentability, industrial application, and specification enablement. This report made by the patent examiner is usually termed as the First Examination Report (FER). The FER, when prepared is then sent to the applicant or their attorney to seek certain clarifications, rebuttals, objections, etc. The applicant(s) or their attorney have the obligation to reply with conviction to each examination report. A persuasive reply to the examination report helps the applicant(s) to avoid rejection of their patent application. These replies are generally comprised of the proposed modifications and fine-tuning of the claims. However, at the same time, it is very imperative to ensure that these suggested modifications in the claims are backed adequately by specifications. In-depth knowledge of various laws relating to the process of patenting in the concerned jurisdiction is warranted for addressing or replying to an Examination Report.

We at IPLF is fully geared up to handle various examination related matters via our well qualified and experienced Patent Attorneys. Our Services include providing drafting responses to Examination Reports/Office Actions, Strategizing, and suggesting prospective amendments and arguments that can be made pertaining to the patent application for ensuring an enhanced impact and efficacy. Technical Analysis of Examination Report. Technical Analysis of Cited Prior Arts.

What Is The Process?

1. Publication

Pursuant to the drafting and filing of a complete patent application, the patent application is kept confidential by the Patent Office for at least 18 months from the date of priority or the date of filing, whichever is earlier. This period of 18 months can be reduced if a request for early publication is filed.

2. Examination

After receiving the ‘Request for Examination’ filed by the Patent Applicant or by any other interested person, the Patent Office would issue an Examination Report to the Patent Applicant, to which the Patent Applicant has to satisfactorily reply and put the application in the condition of allowance (of the patent) within Six (6) months from the date of the examination report.

3. Hearing

After considering the replies given pertaining to the Examination Reports and replies to the hearing notice (if a hearing is held), the Patent Office disposes of/decides on the patent application. Patent Attorneys at IPLF, through the support of Khurana & Khurana, regularly appear before the Patent Office for such hearings to put forward our client’s submissions most effectively.

4. Opposition

A patent application may be opposed before and after the grant. Pre-grant opposition can be filed by any person, whereas post-grant opposition and revocation proceedings can be filed only by the interested person. Similar competencies as an attending to Examination report and Hearing as elaborated above are required and our Patent Attorneys are very well-experienced in all Opposition related matters as well.

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    Frequently Asked Questions

    1. Why is an applicant required to file Request for Examination in India?

    The process of examination unlike the process of publication is not automatic. In the process of examination, the Applicant is essentially required to file a request for initiating the process of examination. After receiving the Request for Examination (RFE), the patent application is thereafter transferred by the Controller to the patent examiner. Pursuant to this process, the Applicant is required to file an RFE within a time period of 48 months from either the date of priority or the date of filing whichever is earlier.

    2. Who can file a Request for Examination in India?

    The process of the Request for Examination is at the outset, fulfilled by filing Form 18. In case a third-party files a request, he/she has to then also submit appropriate evidence of his/her interest in the concerned patent application along with the Form. In addition to filing Form 18, and paying the prescribed fees, the following details are required to be submitted:

    • Details of the patent applicant or other interested persons.
    • Application Number of the patent application.
    • Title, Date of filing, and publication date of the patent application.

    3. What is the Process for filing the Request for Examination?

    The Request for Examination is filed by filing Form 18. If the person who is filing a request for examination is a third party, he has to submit appropriate evidence of his interest in the concerned patent application along with the Form. In addition to filing Form 18, and paying the prescribed fees, the following details are required to be submitted:

    • Details of the patent applicant or other interested persons.
    • Application Number of the patent application.
    • Title, Date of filing and publication date of the patent application.

    4. When can a Request for Express Examination of patent application be filed in India?

    The Request for Express Examination of the patent application is only possible in respect of the PCT national phase application filed in India. An applicant is thereby, required to make a request for express examination before the expiry of 31 months from the earliest priority application Date.

    5. Is there any provision for Expedited Examination of patent application in India?

    Yes, indeed an applicant may file a Request for Expedited Examination of the patent application to the Indian Patent Office. Along with this, the applicant should also append a request for publication except in cases where the patent application has already been published or the request for publication of the patent application has already been filed. The applications with respect to which a request for expedited examination has been filed will be allotted to an examiner sooner than the application of normal examination requests. The Request for Expedited Examination is filed in order to facilitate the acceleration in the process of examination.

    6. Is it possible to convert an ordinary Request for Examination into a Request for Expedited Examination?

    Yes, the same can be done by paying additional fees.

    7. Is the Request for Publication mandatory?

    No, it is an automatic process i.e. the inventor/applicant does not have to request the patent office to publish the patent application. In any case, the patent office, by default, pursuant to the passage of a period of eighteen months from the date of filing of the application or the date of priority of the application, whichever is earlier, would have to publish the patent application.

    8. What is prosecution history?

    The review process of a patent application primarily is initiated at the patent office where the application is initially filed. The patent examiners would thereafter review the merits of the case by reviewing relevant prior art and send examination reports, which is also referred to as office actions. The most widespread and commonly known office action is a rejection where the examiner cites close prior art in rejecting the patentability of the invention covered by the patent application. The patent attorney or patent agent representing the inventors should review the office action and prepare a detailed response including certain amendments to the application, and any other necessary arguments to rebut the claims of the Examiner.

    9. What is an invention disclosure form?

    An invention disclosure form is usually in a questionnaire format. This form allows a patent practitioner to collect necessary and requisite information about and from the inventors and/or applicants to be able to conduct certain processes such as a patent search, drafting a patent application and filing that patent application.


    Invention disclosure form typically includes questions relating to technical details of the invention. Moreover, it also includes details like the nuanced information about inventors and the applicants, the government’s involvement and role in developing the invention, previous disclosures or any planned disclosure of the invention, countries of interest for protecting the invention, etc. The questions in such forms are structured for obtaining the data in a format that will be useful for the practitioners to evaluate and be able to give better advice for the strategy of the patent application. It also certainly helps in preparing a strong patent application.

    10. When can I file the pre-grant opposition?

    A pre-grant opposition may be filed any time after the publication of a patent application until the grant of the application.

    11. When can I file for post-grant opposition?

    A Notice of Opposition against the grant of Patent can be filed anytime within twelve (12) months from the date of publication of the grant of the patent at the appropriate Office.

    12. What do you mean by patent opposition?

    Patent opposition is referred to the process whereby certain supporting material is providing in order to prove the claim(s) of rejecting a patent application. Indian patent law provides for two types of patent oppositions. These types include the pre-grant patent opposition and the post-grant patent opposition. Under the pre-grant patent opposition, any person has the right to represent the opposition to the Indian Patent Office, against the grant of a patent. This process can be initiated pursuant to the process of application for a patent being published, but when a patent has not been granted. A post-grant patent opposition, on the other hand, may only be filed by any interested person within 12 months from the date of publication of the patent grant.

    13. Who can file for patent opposition?

    Patent opposition refers to the act of providing supporting material to reject a patent application. Indian patent law allows two kinds of patent oppositions which include pre-grant patent opposition and post-grant patent opposition. Under pre-grant opposition, any person can represent for opposition to the Indian Patent Office, against the grant of a patent after the application for a patent has been published, but a patent has not been granted. A post-grant opposition may be filed by any interested person within 12 months from the date of publication of the patent grant.

    14. Is there any provision for Early Publication?

    Yes, a request for early publication can be filed. Once requested, patent application gets published within one month of such request if application was accompanied by complete specification.

    15. Is provision for Expedited Examination available?

    Yes. Request for expedited examination can be made by the applicant if the applicant is a Start-up, or if the applicant is a female, or if the applicant is a Govt. supported Institution, or if it has chosen India as International Searching Authority (ISA) or International Preliminary Examining Authority (IPEA) in its corresponding international patent application.

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