Writing Patent Examination Report Response

The steps involved in writing patent examination report response include understanding various sections of the patent office action document. While writing patent office action response document, the process requires replying to each and every objection raised by the patent examiner. From the perspective of patent office, a patent office action response consists of a detailed analysis of the patent’s claims. The first examination report typically includes rejections based on obviousness, prior art, and patent eligibility. The response may also require claim amendments or arguments. Further, claim amendments may be necessary if the cited prior art contains additional features.  

Patent Prosecution in India

An examination report is issued by the Indian patent office after conducting a patent examination of the patent claims that accompany a patent specification filed with the patent office. The examination report is also called as first examination report (FER). The examination report contains a list of objections raised by an examiner of the Indian patent office. The objections are both technical and formal in nature.

Patent Office Action in India

1. Heading – Every examination report starts with a reference number which is the application number and the date of dispatch. The date of dispatch is very important because it is mandatory to send a response to the FER within a period of 6 months and that period starts from the date of dispatch. For example, if a FER’s date of dispatch is 26/04/2018, then the last date for filing response to that examination report will be 26/10/2018.

2. Subject – When a request for examination is made with regard to grant of patent, the controller refers the application along with the specification whether provisional or complete and the supported documents to the examiner, to the examiner. The examination of the application is done by examiner under Section 12 read with section 13 of the Patents Act, 1970. The application will be considered abandoned if all the requisite documents are not submitted within a prescribed period under Section 21(1) of the Patents Act, 1970.

3. Body of the Examination Report – The body of the examination report starts with a table consisting of all the basic information. For example:

Application No.: When the applicant files for grant of patent, an application number is generated and is assigned to the applicant’s patent application.

Date of Filing: The date on which the applicant filed for grant of patent.

Date of Priority: When a priority is validly claimed, the date of filing of the first application, called the priority date, is considered to be the effective date of filing for the examination of novelty and inventive step or non-obviousness for the subsequent application claiming the priority of the first application.

Date of PCT International Application: By filing one international patent application under the PCT, applicants can simultaneously seek protection for an invention in a very large number of countries.

Applicant: Name of the Applicant

Agent: Name of the Patent Agent

Request for Examination no. & date: When a request for examination is made a request no. is generated along with the date on which the request is made.

Date of Publication: The date on which the patent application was published for the purpose of prior art.

The examination report consists of four parts, namely summary of the report, detailed technical report, formal requirements and documents on record, explained as follows:

PART- I: SUMMARY OF THE REPORT

There are certain requirements of the Patent Act, 1970 which the application shall fulfil.

(a) Invention u/s 2(1)(j): The criteria for patentability of an invention are novelty, inventive step and industrial applicability.

Novelty – Novelty is an extremely essential requirement and an undisputed state of patentability. An invention will be patentable if it is novel or new in the light of prior art, or is not anticipated by prior art.

Inventive Step3 – An invention will have inventive step only if it satisfies two conditions. First, the invention should be technically advanced in light of prior art or should have economic advance. Second, the invention should not be obvious to a person who has ordinary skills in the art in the light of

Industrial Applicability4 – Industrial application must relate to commercialization of patented product for the public and society purpose.

If the claims of the applicant fulfil the requirement of all the three, the remarks for each of the claims would be YES. If not, and the controller is dissatisfied with either all or few of the claims, he/she would remark that claim(s) as NO.

(b) Non-patentability u/s 3: There are certain invention which the Patent Law says are non-patentable. Such inventions are listed under Section 3 (a-p).

(c) Non-patentability u/s 4: Any invention relating to atomic energy is not patentable.

(d) Unity of invention u/s 10 (5): A patent application can only claim one invention or a group of closely related inventions. Patent offices will raise a unity of invention objection during examination of a patent application if they believe more than one invention is being claimed

(e) Sufficiency of disclosure u/s 10 (4): A patent application shall enclose a complete specification which discloses everything relating to the invention proposed to be patented.

(f) Reference to co-pending/foreign application(s) required: If there are any co-pending/foreign application(s) are in existence for the same invention.

(g) Claims [u/s 10(5) & 10(4) (c)]: If the claims u/s 10(5) & 10(4) on the grounds of Clarity/Conciseness, Definitiveness, supported by description & Scope approved or disapproved.

(h) Any other requirements.

PART – II: DETAILED TECHNICAL REPORT

The second part of the examination report is divided into two parts, List of documents cited & Detailed observations on the requirements under the Act.

(1) List of Documents cited

Patent Literature (the most easily searched form of prior art)

If the applicant’s patent is in infringement of another application for grant of a similar patent with a priority date or an already published patent, the detail of documents will enlist the latter patents along with their priority and publication date respectively.

The relevant description of the cited document(s) along with the relevant claims of the said document with claims that are in objection will also be mentioned here.

Non-Patent Literature (documents and publications that are not patents or published patent applications but are cited as references for being relevant in a patent prosecution)

If there is any literature, which is not available as a previously granted patent or any published application, which is in objection of the application for grant of patent it will be cited here. For example, a magazine article or doctoral thesis relevant to a claimed invention might be cited as non-patent literature.

(2) Detailed observations on the requirements under the Act

The detailed observations state the reasons and explanation as to why the applicant’s claims have been objected by the Patent Office on the basis of rejections as mentioned in the report above.

The inventive step comprises of the details about the cited documents which are mentioned in Part II of the report and are tagged as D1, D2, D3…so on and so forth.

Part III explains as to why the respective requirements under the law mentioned in Part I of the report were not satisfactory.

PART – III: FORMAL REQUIREMENTS

If the application fee, anything with the forms or any document is found to be of objection, Part III states those objections and the remarks stating as to why that objection has been raised.

Part IV: DOCUMENTS ON RECORD

This section contains the list of documents filed for grant of the patent along with the last date of filing for response of such report.

Patent Time line under the Indian Patents Act, 1970 and Patents Rules, 2003 | Responding to Office Actions Issued by Patent Examiner

Recently in India there has been some important changes in patent practice before the Indian Patent Office. One of the most notable and important change is the timeline to respond to the patent Examination Report issued under sections 12 & 13 of the Patents Act, 1970 and the Patents Rules, 2003. The patent Examination Report is only issued if the patent applicant has filed request for examination form before the patent office. The patent applicant has to file for Form 18 and this is commonly known as RFE request form. Under the new patent amendments in India the patent applicant or inventor has to comply with all the requirements imposed in the patent examination report. The important deadline date to put the patent application in order for grant is within 6 months from the issuance of the first statement of objections, as prescribed under Rule 24B (ii)(5) of the Patent Rule, 2003. Earlier the time to file response to office action was 12 months.

The patent applicant is provided with a period of 6 months from the date of first office action for having the patent application in order of grant.